Intellectual Property Blog
Canada Extends Term of Copyright Protection by Twenty Years
The term of copyright protection in Canada was recently extended from fifty (50) years after the life of the author to seventy (70) years after the life of the author. This significant change went into effect on December 30, 2022, as part of Canada’s Budget Implementation Act of 2022. Now, the term of copyright protection in Canada mirrors that of the United States and many other countries. The new law is not retroactive, however, meaning that works in the public domain as of December 31, 2021, do not receive the benefit of the additional twenty (20) years. On the other hand, works that would have entered the public domain at the end of 2022 are benefitted by the change.
Trademark ID Manual is Updated to Include Green Technology
As part of the effort among federal agencies to reduce the impacts of climate change, the United States Patent and Trademark Office is adding new terms to the Trademark ID Manual. Those new terms will cover goods and services in connection with climate change, including green technology. Trademark applicants offering green technology will be able to file their application using TEAS Plus, which provides for a reduced application fee. Thus far, the updated list includes 75 new terms.
FTC Proposes Ban on Non-Competes
The Federal Trade Commission (“FTC”) has proposed a new rule which would prevent employers from placing employees under non-compete restrictions. Introduced on January 5, 2023, the proposed rule defines a non-compete as “a contractual term between an employer and a worker that prevents the worker from seeking or accepting employment with a person, or operating a business, after the conclusion of the worker’s employment with the employer.” Such provisions, often coupled with confidentiality clauses in standard employment agreements, are considered to be instrumental in protecting intellectual property, particularly an array of trade secrets from customer lists to manufacturing processes, to prevent employees from transferring proprietary knowledge to a competing business. While several states have already banned non-compete restrictions, they remain legal under Florida law if reasonable in accordance with various guidelines from the statute and case law. The FTC rule would supersede state statutes to the contrary.
The FTC has initiated a 60-day period to receive comments before the final version of the rule is published. The proposal can be found here. While the rule may be implemented in the near future, the scope of the FTC’s authority to regulate in this area remains uncertain. Legal challenges are expected that may delay active enforcement.
USPTO Patent Fees Reduced for Small and Micro Entities
On December 29, 2022, the Unleashing American Innovators Act of 2022 (the “Act”) was signed into law by President Biden. The Act provides an additional discount on patent fees for small and micro entities at the United States Patent & Trademark Office (“USPTO”).
A small entity is a business with less than 500 employees (including affiliates), a qualifying non-profit organization, or an individual who has not assigned, licensed, or otherwise conveyed or promised to convey an interest in the invention to a non-small entity. A micro entity is one that qualifies as a small entity while simultaneously meeting micro entity criteria, based on either a gross income basis (with the additional requirement that neither the applicant nor the inventor has been named as an inventor on more than four (4) previously filed patent applications) or on a basis of higher education (for which the majority of the applicant’s income must be obtained from an institution of higher education in the United States).
The small entity discount increased by 10% to a total of 60%, and the same for micro entities went up by 5% for a total discount of 80%. USPTO Director Kathi Vidal stated that the Act will help “support small inventors, start-ups, and those traditionally underrepresented in the innovation ecosystem.”
Supreme Court to Hear: Bad Spaniels v. Jack Daniels
The Supreme Court will decide a trademark infringement case involving a dog toy company’s “Bad Spaniels” whiskey bottles, and Jack Daniel’s Old No. 7 Black Label Tennessee whiskey bottle. The $17 toy at issue depicts a cartoon spaniel, a reference to Jack Daniel’s Old No. 7, and a disclaimer that states: “This product is not affiliated with Jack Daniel Distillery.” After being on the unsuccessful end at the Ninth Circuit Court of Appeals, Jack Daniel’s appealed to the Supreme Court, arguing that the toy company’s product violates the federal Lanham Act. The toy company’s defense has centered around, among other things, the “expressive work” doctrine under the First Amendment.
USPTO Shortens Response Time for Trademark Office Actions
In the wake of the Trademark Modernization Act of 2020 (“TMA”), the United States Patent and Trademark Office (“USPTO”) promulgated a new, shorter period for responding to Office Actions on trademark applications. The change flows directly from the USPTO’s amendment of federal regulations to provide flexibility in setting deadlines, including the option to allow for extensions.
Starting on December 3, 2022, trademark applicants will have only three (3) months to address Office Actions as opposed to the six (6) months presently allotted. A single three (3) month extension may be requested for a fee of $125.00 if filed electronically or $225.00 if the request is filed on paper. Notably, foreign applicants filing under the Madrid Protocol, a major trademark treaty, are excluded from the rule and will continue to enjoy the full six (6) month response period without the need to file an extension.
According to the USPTO, the shortened deadlines are intended to increase efficiency in response to an exponential increase in the number of trademark applications filed recently, described as “unprecedented” and a “huge surge.” The raw data indicates a 172% increase in the number of applications filed between December 2019 and December 2020. According to the USPTO, the inundation of applications has resulted in a “significant increase in unexamined application inventory,” resulting in “longer than normal wait times at various stages of the application process . . . .”
It remains to be seen whether the new response protocols will expedite the examination process or result only generating more USPTO fees.
Banksy is Victorious in a European Union Trademark Case, Keeping Trademark Rights and Maintaining Anonymity
The European Union Board of Appeals recently overturned a 2021 decision by the EU’s Intellectual Property Office (EUIPO) that found Banksy’s trademark of his well-known graffiti ape “invalid in its entirety.” This appeal stemmed from an opposition filed back in 2019 by a greeting card company called Full Colour Black. In the opposition, Full Colour Black alleged that the subject registration was filed in bad faith and that the work was not distinctive. However, as the EU’s Board of Appeals found that Full Colour Black failed to prove the trademark was filed in bad faith, Banksy now keeps the trademark rights and maintains anonymity.
Update on Unicolors, Inc. v. H&M Hennes & Mauritz, LP
As an update to a blog entry on June 18, 2021, the U.S. Supreme Court heard Unicolors, Inc. v. H&M Hennes & Mauritz, LP in February of this year.
By way of background, H&M argued that Unicolors’ copyright registration was invalid because Unicolors improperly filed one copyright application for over thirty (30) fabric designs that were not originally published together. The legal basis for H&M’s argument was that a collection of works does not qualify as a so-called “single unit of publication” unless all individual works in the collection were first published together. Therefore, Unicolors’ registration was susceptible to invalidation.
In its decision, the Court held that the 9th Circuit was incorrect in finding that Unicolors could not benefit from the safe harbor provided by U.S.C.S. § 411(b)(1). The safe harbor states that a certificate of copyright registration is valid even if it contains inaccurate information, so long as the copyright holder lacked knowledge of the inaccuracy. The Court further determined that § 411(b) does not distinguish between a mistake of law and a mistake of fact – either can excuse an inaccuracy in a copyright registration and therefore save the registration from invalidation.
Ultimately, the Court held that Unicolors was eligible to benefit from the safe harbor because its lack of knowledge of the “single unit of publication” requirement was due to its failure to understand the law, rather than the facts.
Earlier this month, the 9th Circuit affirmed the district court’s judgment on remand and held that Unicolors’ registration came within the protection of the safe harbor provision. Further, the 9th Circuit determined that a party must show the following when seeking to invalidate a copyright registration under § 411: (1) the copyright holder submitted an inaccurate application; (2) the copyright holder knew that the application failed to comply with the requisite legal requirements; and (3) the inaccuracy was material to the decision to register the applied-for work(s).
European Unitary Patent Expected Early 2023
For more than a decade, the concept of a European patent with “unitary effect” has been negotiated, legislated, discussed, and anticipated. Regulators are now targeting a start date of April 1, 2023 to implement the rules and regulations governing the Unitary Patent System and its judicial offspring, the Unitary Patent Court. From that date forward, applicants at the European Patent Office (“EPO”) will have the option to request “unitary effect” of patent applications granted by the EPO.
Those familiar with the process will know that not much will change during the application stage. This is because the EPO already offers centralized examination of patent applications. However, under the current regulations, once a patent application is approved by the EPO, it is converted into a “bundle” of national rights that must be validated, maintained, and enforced separately in each state that is a member of the European Patent Convention. This can be a complex and expensive undertaking. The Unitary Patent System and Unitary Patent Court will simplify this process by affording patent owners the ability to centrally maintain and enforce a single patent right that is effective in many countries.
Of course, there are benefits and drawbacks to be considered when requesting unitary effect of an EPO patent application. For example, the geographic reach of the unitary patent may initially only be available in the 25 states in that are in “enhanced cooperation” with the EPO. On the other hand, a regular EPO application can be validated in up to 39 member states, including some non-EU countries such as the UK, Switzerland, and Turkey. The firm works closely with colleagues in Europe to advise its clients on these and other issues affecting their global intellectual property portfolios.
Supreme Court to Hear Oral Arguments Pertaining to Prince and Andy Warhol
Andy Warhol, renowned artist who passed in 1987, created a piece of art depicting Prince, one of the most famous musicians of all time. In creating that artwork, Warhol relied on an image taken in 1981 by photographer Lynn Goldsmith. After suing Warhol’s foundation for copyright infringement, Goldsmith was faced with arguments that the artwork was “transformative.” The Second Circuit Court of Appeals disagreed, however, stating that a work is not transformative if it is “both recognizably deriving from, and retaining the essential elements of, its source material.” Absent that standard, the Second Circuit noted that movie adaptations of books could insert slight modifications to skirt copyright law. On Wednesday (October 12), the Supreme Court of the United States will hear oral arguments surrounding whether an artwork is deemed “transformative” if it conveys a different message or meaning than the original work from which it is based off of.