Lex Indicium

  • When Paying for It Doesn’t Mean You Own ItJuly 07, 2020

    The Conundrum of Works for Hire.

    You are a small business.  You’ve hired a web developer to create your website, a marketing expert to author critical passages about your products and services, and you’ve hired a graphics person to design your business cards and signage.  You paid everyone, took delivery of and launched your beautiful new website.  The problem is, you don’t have any paper that confirms your developer, marketing guru, and graphic designer transferred the rights to the work to you.  “But wait,” you protest, “they cashed my checks and I have possession of the files.  Doesn’t that mean I own it?”

    It’s natural to assume that if you engaged a service provider to create something for you, and you paid for it, it’s yours.  But that’s not what the law says, at least with respect to works that are eligible for copyright protection.  In fact, even if you have a writing that says the work shall be considered a “work made for hire,” that might not be sufficient to ensure that the work belongs to you.

    What Does Copyright Protect?

    Copyright protects original, creative works that are set out in a “tangible medium,” meaning they are written … Keep reading

  • Trademark Audits: What Registrants Should ExpectJune 23, 2020

    In 2017, the USPTO initiated an aggressive auditing program of U.S. trademark registrations at the time of maintenance filings. The goal of the program is to ensure the accuracy and integrity of the U.S. register by removing or narrowing registrations that include claims beyond the scope of the registrant’s actual use of its mark in U.S. commerce. The Office is on pace to audit 5000 registrations in 2020 so registrants who have not been tagged as yet should be prepared for an audit in the future.

    By way of background, the U.S. system of protection for trademarks, unlike many non-U.S. systems, requires the trademark owner to actually use its mark in U.S. commerce with all the goods or services specified in the registration. Accordingly, to maintain an issued registration the registrant must declare, under oath, that all of the specified goods or services claimed in registration are being provided under the mark to U.S. customers at the time of filing registrant’s Section 8 Declaration of Continued Use (due between the 5th and 6th and years after registration) and Renewal (due every 10 years after registration) filings are due. This “actual use” requirement applies regardless of the original … Keep reading

  • Supreme Court Helps Trademark Owners: Proof of “Willfulness” Is Not Required To Recover Infringer’s ProfitsJune 10, 2020

    In April 2020, the U.S. Supreme Court ruled that trademark infringers can be required to hand over their profits to a brand owner even if their conduct was not “willful.” The case was Romag Fasteners v. Fossil Group, Inc., 590 U.S. (2020). It is an important case for trademark owners because it lowers the plaintiff’s burden to recover a defendant’s ill-gotten profits.  In fact, after Romag, the defendant’s deliberate and intentional state of mind is no longer the critical factor that courts must consider in order to award profits in a trademark infringement case. Romag can be an important weapon for trademark owners against, for example, infringers that use their mark on goods or services that do not directly compete with the trademark owner, where the trademark owner did not necessarily lose a sale and may have no actual damages in that regard. Profit disgorgement by the infringer allows for monetary compensation even if the trademark owner has not been directly damaged in that way.

    Fossil is a large and well-known distributor of fashion accessories.  Romag sells magnetic snap fasteners for leather goods. For years, Romag and Fossil had an agreement whereby Fossil used Romag fasteners in … Keep reading

  • The Communications Decency Act Suddenly Is Center Stage AgainJune 03, 2020

    Today’s internet users who might not be familiar with the Wild West that was the early internet might wonder how social media and other online service providers (and their users) “get away with” saying or publishing all manner of content on the web, including incendiary, defamatory, or just plain false information. The administration’s recent suggestion that it might assert executive power over social platforms has brought this issue back to the fire in an interesting way. This post is not meant to be a deep dive into the evolution of the law around expression on the web – but is intended to provide some guideposts for those who are watching this space.

    Constitutional Freedom of Expression

    Under the first amendment to the U.S. Constitution, everyone gets to say whatever they want, right? That’s more or less correct, but over the years courts have also limited your rights of expression with what are called “time,” “place,” and “manner” restrictions.  So you can’t go into a movie theatre and yell “fire,” because doing so might endanger the lives of others.  Analogously, when you express yourself in a public forum, including on the web, your freedom of speech doesn’t mean you are … Keep reading

  • Consumer Rights and an Organization’s Responsibilities Under the CCPAJune 03, 2020

    As we’ve previously blogged about, the California Consumer Privacy Act (“CCPA”) is an exhaustive piece of legislation requiring organizations to heed and defend consumer rights relating to access to, sharing of, and deletion of personal information that is collected by businesses. In particular, the CCPA requires organizations to notify California consumers of the rights newly afforded to them under the CCPA. These rights are summarized in the graphic below.

    Summary of Consumer Rights and Organization’s Related Responsibilities:

    In addition to notifying California residents of their consumer rights, organizations need to provide at least two methods– including a toll-free phone number—for consumers to submit requests to exercise their rights.  If the organization maintains a website, one of those methods needs to be a website address.  If an organization operates exclusively online and has a direct relationship with the consumer, it does not need to provide a toll-free number and only needs to provide an email address as a designated method for submitting requests.

    Response Requirements When Consumer Exercises a CCPA Right

    Once an organization obligated to comply with the CCPA receives a California consumer request to exercise a CCPA right, it must disclose and deliver the information free of charge … Keep reading

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