Lipton, Weinberger & Husick

Dear Doc: Me want to protect cookie. How can do that? Signed,... A Certain Monster Dear Mr. Monster: A recent case from the Third Circuit Court of Appeals may help you to understand how cookies are protected. More than 50 years ago, Ezaki Glico Kabushiki Kaisha developed Pocky a thin, elongated biscuit partially covered with chocolate. About five years after Pocky entered the United States market, Lotte Confectionery began selling a lookalike biscuit stick called Pepero. After obtaining trade dress registrations for the Pocky design, Glico sent cease and desist letters to Pepero in the 1990s. Nevertheless, Lotte continued to sell Pepero. In 2015 Glico sued Lotte for trade dress infringement and unfair competition under the federal Lanham Act and state law in the US District Court in New Jersey. Glico not only registered its trade dress (the appearance of its cookie) but also was granted a patent on how the cookie is made, and on the cookie itself, made by that method. In the patent, it explained the benefits of its cookie (apart from tasting good): that one could pack many closely together and that the uncoated part of the biscuit forms a handle with which to hold the cookie without getting chocolate on one’s fingers. Unfortunately for Glico, it tried to use trademark law (the Lanham act) to go after Pepero. You see, utility patents protect useful inventions, design patents (which have a term shorter than utility patents) protect ornamental features of an invention that are not useful, but trademark registrations protect only the goodwill associated with a product, and not anything about it that is useful. As the Court said, ironing board covers have no need to be gold, and coffee pot handles have no need to be C shaped, so those features are protectable using trade dress. So, Mr. Monster, to protect a cookie, you may want to hide the cookie jar, apply for utility patent protection on how it’s made, design patent protection on its appearance (as long the features are not useful), trade dress registration on non-functional aspects (such as making the cookie hexagonal, or embossing it with your name), and so-forth. The best way to protect your cookie, after all is said and done, may, however, be just to eat it quickly. As the Glico Court said, That’s how the cookie crumbles. Have a product that needs protecting? Haven’t eaten it yet? Call the attorneys at LW&H. They’d love to help you out, before you’re caught with your hand in the cookie jar. Until next month, The Doc

Dear Doc (hope you’re well and alive): I heard of a case that’s just jive. You can go, but not boldly Said the judge, rather coldly... Far too Seuss, your project, contrived. Signed, ComicMix Dear CM: I suppose that you are asking about a recent court decision in a dispute about the book Oh, the Places You’ll Boldly Go!, a mashup of the last book written by the late Theodore Geisel, who died in 1991, and Star Trek. The new book was created by David Gerrold, who wrote for the original Star Trek television program. It was illustrated by Ty Templeton, and edited by Glenn Hauman. These three launched a crowdfunding program to raise money to publish their book, but almost immediately ran into a lawyer-letter from Dr. Seuss Enterprises, which runs the author’s estate. The claim in court was that Boldly Go infringed the copyright on the original work. Not so fast, claimed the three creators this is a fair use because it is a parody of the original, and besides, it is transformative to use the Seussian style in space, with familiar characters like Captain Kirk and Mr. Spock. A trial court judge agreed, and gave Boldly a pass. Not so fast, claimed the Seuss people, who appealed to a three-judge panel of the Ninth Circuit. In December, the judges ruled that Boldly Go is not protected from a copyright infringement claim. The judges said that Boldly Go copied broad parts of the Seuss original, including details of many of the illustrations. The creators thought their ‘Star Trek’ primer would be ‘pretty well protected by parody,’ but acknowledged that ‘people in black robes’ may disagree, Judge M. Margaret McKeown wrote in the opinion. Indeed, we do. The Boldly Go creators could not argue that their book was a parody, because it wasn’t critiquing the original book, the judge said. Although they argued that the book should be considered transformative since it contained extensive new content, the judge disagreed. "Although ComicMix’s work need not boldly go where no one has gone before, its repackaging, copying, and lack of critique of Seuss, coupled with its commercial use of Go!, do not result in a transformative use." On a crowdfunding page to help with legal fees, Mr. Hauman described the thinking behind the book and the law suit, writing in Seussian rhyming verse. "If you care about mashups and value free speech, If you think free expression’s a value to preach Then reach in your wallets and give what you will And help us pay for a quite large legal bill. The judges’ ruling now allows the lawsuit to proceed on the fair use claim back in the trial court. The Doc will keep an eye on Things (both 1 and 2). Have a question on use that is fair? Need opinions given with care? Then ask right away, before you must pay, since damages may be a bear. Until next month, The Doc

Dear Doc: I’ve heard you say many times that Americans have a right to sue each other for any reason, so lawyers can’t tell their clients that they won’t get sued, only that in a properly adjudicated case, they have a high probability of prevailing. Aren’t there ANY limits on law suits? Signed,...Continue reading

Ask Dr. Copyright Dear Doc: I have always heard the maxim that the pen is mightier than the sword. But is it mightier than a loaded AR15?...Continue reading

Ask Dr. Copyright Dear Doc: A few years ago, you wrote about a copyright law suit where the judges’ opinion in the case took care to point out that among the purchasers of the art work accused of infringement were some famous people. Does that make a difference in how cases get decided?...Continue reading

Ask Dr. Copyright Dear Doc: I know this is not strictly a copyright question, but it seems to me that I now spend my time Zooming, having Zooms, meeting friends for Zoomtails, Zoomshipping, and so forth. I even Zoom when I am on some other system, like FaceTime. Is Zoom in legal trouble here?... Signed, Generically Worried Dear GW: Before the pandemic (if you can remember such a time), we used to use Skype for video conferences. Now, Zoom is how we work, learn, and socialize. It is a noun (I have a 10 am Zoom), an adjective (We’re having a Zoom wedding), and a verb (Let’s Zoom). Having such an important service in this crisis is a great business model. The market value of Zoom, which went public in April 2019, is now about $135 billion and was briefly higher than IBM’s! Danger, Will Robinson!! Zoom, however, may soon become a victim of its own success. The term for this is genericide. It happens when a trademark owner fails to defend the use of its mark by reminding the public that a trademark is always an adjective used to describe only one kind of the generic product or service offered. A famous instance of genericide was the 1921 Bayer Co. v United Drug Co. case, in which Bayer lost its trademark for Aspirin. (Judge Learned Hand ruled that aspirin had become generic for acetylsalicylic acid, and could be used by any manufacturer of the drug.) Other victims of genericide include escalator (once the trademark of the Otis Elevator Co. for a moving staircase), and dumpster (a portmanteau of dump and Dempster, the surname of the brothers who patented their waste-handling container in 1935). For more, click here. Other trademark owners have been able to prevent their trademarks from becoming generic, however. Xerox, Jeep, Band-Aid, and Kleenex all invest in marketing messages to remind us, the consuming public that their products are but one type of each good. That is why, You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox copier, and why you can apply a Band-Aid brand sterile strip to a boo-boo that you have wiped with a Kleenex brand facial tissue. Will Zoom become generic for video conferencing? It depends on how the company markets itself. After all, we seem to uber, google, and venmo,even when we’re not actually using Uber, Google, or Venmo, but those remain valid trademarks (for now). Have a popular product or service? You should consider registering your trademark. Zoom the attorneys at LW&H. They’re really wearing pants! Until next month, The Doc

Mainline Today recognizes LW&H in its August ’20 issue...

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Ask Dr. Copyright Dear Doc: Last month, you explained how to avoid legal issues concerning the use of music in podcasts. While that was interesting, many more u...gly "lawyer letters" stem from use of images on websites and newsletters. Do you have any sage advice on how not to be on the receiving end of a nasty-gram from some copyright attorney? Signed, Flattering Imitator Dear Flat: You are right. Many of LW&H's clients have, at one time or another gotten a letter from a lawyer accusing them of "unauthorized copying, distribution or public display" of an image. These images have appeared in websites, blogs, emails, social media posts, and in physical publications like brochures, leaflets and booklets. Generally, the lawyer letter contains an offer to "license" the use for a seemingly outrageous sum, often several thousand dollars. The letters also inform the recipient that just one use of an image may result in the award of up to $150,000 in damages plus attorney's fees if the matter goes to court. Getting one of these letters is enough to bring on serious indigestion (as well as a quick call to the Doc.) There are, however, a few ways to avoid getting one of these legal bluebirds... as they say, "An ounce of prevention is worth a gigantic legal bill." So here goes... The best way to avoid being accused of copyright infringement is, you guessed it, not to infringe a copyright. So if you don't know where an image comes from, treat it just like you'd treat a hot dog lying in the street - stay far away from it. No good can come of such things. Just finding an image by using a Google search is the same thing. Just because the image is somewhere on the Internet is not a good reason for you to pick it up. The owner of the image is using the same search engines, and will find you. So, how do you know which images are ok to use? First, start by assuming that every image is subject to copyright, whether or not it has a copyright notice. Copyright is an automatic right that attaches as soon as an image is created. (The big exception to this rule is that images created by and for the United States federal government are NOT subject to copyright.) The safest way is, of course, to use an image in which YOU own the copyright (like the one here, which is owned by the Doc.) If you wish to use an image that is protected by copyright, you'll need permission (called a "license") from the copyright owner. Companies that provide images are called "stock image houses" and they offer both single images, packages of multiple images, and various formats and time periods (single publication, perpetual rights, etc.) Take a look at ShutterStock. There are also photograph archives that provide the same kinds of services. The largest and best known of these is Getty Images. If you see an image on the Internet and you're not sure where it originates, you can use Google image search to identify the source. The Doc loves UnSplash because they have a large library of great images, and EVERY ONE IS FREE AND LEGAL! Other similar sites include: freeimages.com, stocksnap.io, pexels.com and Pixabay.com. You may also try to find images that are licensed under the Creative Commons (CC) system. The WikiMedia Commons site is a great source of many such images. Now that you know about images and copyrights, you may want to search for free images online. A Google image search can help to ensure that image results that are displayed are those which are marked as free to use. To do this, start with Google's advanced search option. The search filter is called "usage rights" and you may select images are free to share, modify or to use commercially. (N.B., this is not a guaranty of finding free images because even giant Google can make mistakes, so it pays to dig a little deeper.) The Doc hopes that this advice will keep you out of copyright hot water. If you should receive one of those dreaded letters, however, or if you'd rather have good advice and assistance before you publish, give the attorneys at LW&H a call. They absolutely love this stuff, and use only the finest licensed images on their firm website and in this newsletter. Until next month, The "Doc"

Ask Dr. Copyright Dear Doc: I know that self-isolating and social distancing has changed what each of us does every day. What has the Doc been up to, and what's new in intellectual property?...Continue reading

Tickets available at https://www.crowdcast.io/e/innovators

Join us for a Zoom lecture! Lawrence Husick, a technology attorney and terrorism expert, will discuss modern privacy issues from multiple perspectives. We are s...urrounded by surveillance cameras, smart phones, facial recognition systems, and other technologies that seem to know more about us than we know about ourselves. What should we think about the erosion of our privacy? Lawrence will discuss legal, social, technological and economic viewpoints. Is it possible to live privately, "off the grid," in modern American society? April 21, 2020 @ 6:30 PM Registration is required https://tinyurl.com/r6et4a4

Ask Dr. Copyright Dear Doc: Is the song "This Land is Your Land" in the Public Domain?...Continue reading

Ask Dr. Copyright Dear Doc: The most basic feature of the design of the World Wide Web is the hyperlink, which allows a browser to display elements of content stored on a web server. The great power of the Web is that the content need not be stored on the same server that hosts a page. Displaying content on another server is done using an in-line or "embedded" link. I thought that this meant that linking to a photo on someone else's server was OK under copyright law. Am I rig...Continue reading

Tonight in Philadelphia!

Name the product that has a registered trademark for its aroma, a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.

Ask Dr. Copyright Dear Doc: I've heard that politicians who use music at their campaign appearances and in their Internet postings (Tweets, Memes, and other stuff) need to get permission from the music artists, and that sometimes, they don't. What happens then?...Continue reading

Ask Dr. Copyright Dear Doc: I have heard that Congress is considering a new law that would create a small claims court for copyright infringement cases, particularly those that stem from infringement on the Internet. That sure sounds like it would help to stop unauthorized copying! Whaddya think?...Continue reading

Ask Dr. Copyright Dear Doc: I know that in the past you have said (complained, actually) that copyrights last far too long...for the life of the author plus another 75 years (or 95 years for corporate-authored works.) That said, it was not always the case that the term was so extensive. How can I know if a book or other work is still protected by copyright, or if it's fallen into the "public domain"....Continue reading