Tuesday, February 19, 2019

8 Mistakes Inventors Make With Patent Attorneys


Coleman & Horowitt is a proud sponsor of Valley Innovators, a company dedicated to the advancement of knowledge, mentorship and development of capital for startups.  As part of our sponsorship, attorneys from Coleman & Horowitt participate in podcasts, to provide useful information to entrepreneurs and start-up companies.  Gary Shuster, an inventor and Coleman & Horowitt attorney who offers consulting services to entrepreneurs and start-up companies, was recently featured on a Valley Innovators Podcast where he discussed common mistakes inventors make with their patent attorneys. 

The podcast may be found at:
https://soundcloud.com/valleyinnovators/8-mistakes-inventors-make-with-patent-attorneys-podcast-episode-4 

Thursday, February 14, 2019

Practical Tips on Protecting Your Business from a Copyright Lawsuit

Have you ever uploaded an image from the internet and used it in your promotional brochure or found a perfect blog post and incorporated it into your own blog theme?  If the answer is yes, you may have inadvertently violated copyright law.

Copyright law, in a nutshell, protects any original creation, such as pictures, writings, creative efforts (dramatic, musical or choreographic works), computer software, architecture, etc., as well as any derivative work based on the original creation, by allowing the holder of the copyright exclusive control over who can reproduce, sell, disseminate or perform the protected work.  Names, phrases or slogans, facts, ideas, procedures and processes, etc., cannot receive copyright protection.

A copyright can be registered with the U.S. Copyright Office (which allows the holder certain advantages under the U.S. Copyright Act) but it is not required, as copyright automatically attaches once the work is created and fixed in a tangible form. In addition, copyright owners are not required to use the “©” symbol, even if there work is registered.  For these reasons, when you see an image or view a written work that has no distinguishing copyright marks, do not be fooled into thinking it is in the public domain and thus, free for any use.

Below are some tips that can help protect your start-up or existing business from the hassle and expense of a copyright infringement lawsuit:

1.  Do not take pictures or videos directly from the internet and use them for any purpose.  Just because a colorful, geometric design found through an internet search that would be perfect for your website lacks distinguishing copyright marks, does not mean it is in the public domain.  In fact, most images, pictures and/or videos on the internet are copyright protected.

2.  If you find a photo, art or video that you want to use on your website or printed materials, consider contacting the author and inquire whether you can use the work.  Many authors will permit you to post their picture or work with the stipulation that you reference the work’s origination.

3.  If you find something written on the internet that would be of good use in your promotional material, make sure to only take the general idea of the post and make sure you put the writing into your own words.

4.  Using someone’s work and providing a link back to the originator without express permission is still copyright infringement.  Implied permission is not sufficient so never assume permission has been given.

5.  Unless the work or image is expressly dedicated to the public domain, do not use it unless you obtain the owner’s permission.

Some electronic images may contain electronic “tags” that allow owners to track use of their copyright images. The owners of the images (or their attorneys) may then send a “cease and desist” letter to unauthorized users, demanding past and future licensing fees, and threatening litigation if the fees are not paid.  Unsuspecting small business owners who have downloaded images, believing them to be for public use, are often caught off-guard and incur expenses for which they have not budgeted and which may significantly impact their businesses.  Therefore, the guiding principal is, when in doubt, do not download.

If you receive a cease and desist letter for using an image or work that is purported to be copyright protected, contact an IP attorney to help you understand how best to proceed.  This will help you avoid costly litigation fees in defending the lawsuit from an overzealous plaintiff.

Authored by:
Jennifer T. Poochigian

Wednesday, February 6, 2019

Coleman & Horowitt LLP World Ag Expo Reception

We are having a reception at the World Ag Expo, if you wish to attend the reception, please contact us to reserve your spot.


Monday, December 10, 2018

Not Even the President Can Avoid Copyright Infringement Claims


Singer-songwriter Pharrell Williams has threatened to sue President Trump over the use of the song “Happy” at political rally, held just hours after a white nationalist killed 11 people at a Pittsburgh synagogue. The cease-and-desist letter sent by Pharrell’s lawyer to the President read in part:

On the day of the mass murder of 11 human beings at the hands of a deranged ‘nationalist,’ you played his song ‘Happy’ to a crowd at a political event in Indiana. There was nothing ‘happy’ about the tragedy inflicted upon our country on Saturday and no permission was granted for your use of this song for this purpose.
Pharrell Williams is the owner of the copyright in “Happy,” with the exclusive right to exploit same. Pharrell has not, and will not, grant you permission to publicly perform or otherwise broadcast or disseminate any of his music. The use of “Happy” without permission constitutes copyright infringement in violation of 17 U.S.C. 501.
            Pharrell is not the first singer-songwriter to take issue with a political figure’s use of a song at a rally. What makes his particular case different though is that he most likely has a valid claim for copyright infringement.

In most cases, the artist has no valid claim because political campaigns are often able to procure blanket licenses from performing rights organizations (“PROs”) such as American Society of Composers, Authors, and Publishers (ASCAP) and Broadcast Music Inc. (BMI), when rallies are held in public venues. These licenses allow politicians to play music at events and rallies even over the protest of an artist.

As it turns out, Pharrell is not represented by either ASCAP or BMI. He is instead represented by Global Music Rights (GMR), and it is known that neither the venue where rally was held nor the Trump campaign have a license from GMR. The President’s use of the song was therefore unauthorized.

If Pharrell sued for infringement, Trump may try to claim “fair use” of the song but would most likely be unsuccessful in that attempt. “Fair use” is a copyright principle that excuses unauthorized uses of a copyrighted work when used for a transformative purpose such as research, scholarship, parody, criticism, or journalism.

Perhaps the biggest reason a fair use defense would fail in this case is because the President used the song at the rally for the purpose of entertainment, which was Pharrell’s exact purpose for creating the song. There is no evidence of a transformative use at all; no new meaning or expression was added to the song, nor was any value added to the original recording. The song was also not used in parody, nor for the purposes of scholarship, research, or education.

While Pharrell has not filed suit yet, the cease-and-desist letter may be as far as this case goes. In any event, politicians perhaps should reach out to artists to ask for permission to use their music, regardless of whether a license has obtained. This practice would prevent politicians from being publicly lambasted by angry artists who do not agree with their views, but let’s not digress.

Authored by:
Brandon Hamparzoomian

Thursday, November 29, 2018

Mythbusting Patents for Aspiring Entrepreneurs and Inventors Podcast


Coleman & Horowitt is a proud sponsor of Valley Innovators, a company dedicated to the advancement of knowledge, mentorship and development of capital for startups.  As part of our sponsorship, attorneys from Coleman & Horowitt participate in podcasts, in an effort to provide useful information to entrepreneurs and start up companies.  Recently, Sherrie Flynn, a patent attorney specializing in all aspects of intellectual property including patents, trademarks, copyrights and trade secrets was featured on a Valley Innovators Podcast where she discussed common misperceptions about patents.  She also provided insight into why entrepreneurs and/or inventors may need a patent, the process for obtaining a patent and who should file for a patent.

The podcast may be found at:  

Authored by:
Sherrie Flynn

Monday, November 12, 2018

Ninth Circuit Holds Laches Defense Applies to Trademark Cancellation Actions


Pinkette Clothing v. Cosmetic Warriors

                In Pinkette Clothing, Inc. v. Cosmetic Warriors Limited, dba Lush Handmade Cosmetics (“CWL”), CWL filed a trademark infringement suit against Pinkette, seeking cancellation of its trademark registration because of the likelihood of confusion as to the use of the label “LUSH” on clothing.  The U.S. Ninth Circuit Court of Appeal affirmed the district court’s judgment in favor of Pinkette, and found that CWL waited too long to bring its case and that the unreasonable delay prejudiced its opponent.

                To understand the court’s holding, a brief procedural summary is essential.  Pinkette filed a trademark registration for the use of the “LUSH” mark on clothing (sold in major department stores and smaller fashion boutiques) in 2009.  CWL, who operates over 900 “LUSH Fresh Handmade Cosmetics” retail stores throughout the world, asserted that Pinkette’s use of “LUSH” was confusingly similar to that of CWL’s use of the “LUSH” mark (which has been used since 1995).  CWL claimed it was not aware of Pinkette’s LUSH mark until years after Pinkette’s mark was registered (while it did not oppose Pinkette’s registration of the LUSH mark in 2010, because Pinkette’s LUSH mark was registered, CWL was on constructive notice of Pinkette’s claim to ownership).  CWL claims to have no actual knowledge of Pinkette’s use of the LUSH mark until late 2014 and, shortly thereafter, it filed a petition to cancel Pinkette’s registration with the Trademark Trial and Appeal Board.  Pinkette also filed an action in federal court seeking declaratory judgment (regarding not infringing on CWL’s trademark rights or, alternatively, that laches bars CWL from asserting rights against Pinkette). 

                In affirming the district court’s ruling, the Ninth Circuit Court of Appeal found that the district court did not abuse its discretion in applying laches to bar CWL cancellation and infringement claims against Pinkette because CWL waited too long to bring its case after it “should have known about its claims.”  The Lanham Act contains no statute of limitations, and thus, courts apply a presumption in favor of the defense of laches if the plaintiff’s delay is longer than the most analogous state statute of limitations.   In trademark cases, even if the defense is asserted within the most analogous state limitations period, the laches defense may still apply - this is unlike with patents and copyrights which have a federal statute of limitations.  In this case, California’s analogous four-year statute of limitations for trademark infringement was the most analogous statute of limitations, and the court found that because the delay was beyond four years, a “strong presumption in favor of laches” applied.  The court further concluded that due to the laches defense, CWL can neither enforce its trademark rights against Pinkette’s use of LUSH on clothing nor cancel Pinkette’s registration for use of the mark on clothing.

                 This case sheds light on the often forgotten equitable defense of laches and reminds all that it still applies in trademark cases even though the Supreme Court has eliminated it in the last few years in copyright and patent cases.

Authored by Jennifer T. Poochigian

Monday, October 8, 2018

IS A VALID COPYRIGHT REGISTRATION REQUIRED BEFORE AN INFRINGEMENT SUIT? SCOTUS WILL DECIDE THIS TERM

U.S. Courts of Appeal are split as to whether copyright registration occurs once the copyright holder delivers the required application, deposit and fee to the Copyright Office, or whether registration occurs after the Copyright Office acts on an application by either registering or denying a copyright. As such, the Supreme Court will consider this issue in its current term through Fourth Estate Public Benefit Corp. v. Wall-Street.com, an eleventh Circuit case decided in May, 2017.

In Fourth Estate, the Eleventh Circuit Court affirmed the district court’s ruling which dismissed the lawsuit on grounds that the Copyright Act requires the Register of Copyrights to actually register (or deny) the copyright claim before the infringement suit could proceed. This "registration approach," which is also adopted by the Tenth Circuit, follows the plain language reading of the Copyright Act, which requires a valid copyright registration to be issued before the filing of an infringement suit. On the other hand, the Fifth and Ninth Circuit Courts have adopted the "application approach," which allows for an infringement suit to be maintained after an application is completed and filed. These courts reason that the application process is a mere formality, since every application results in a registration or rejection, and either will allow a plaintiff to proceed with an infringement action. Obtaining a copyright registration can take months unless the applicant pays a nonrefundable $800 fee for expedited handling when there is compelling need, such as prospective litigation. Forgoing the extra fees will make infringement actions more economically feasible, particularly for smaller companies or individual owners.

Once this split is resolved, copyright owners will know what is required prior to bringing an infringement suit. The decision will also end forum shopping and provide clarity and consistency in copyright litigation moving forward.

This post will be updated when the Supreme Court renders its decision.