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Developments in Intellectual Property Law

Copyright Office Changes to Group Registration of Newsletters and Serials

By Patrick B. Monahan
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On November 30, 2018, the U.S. Copyright Office announced changes to the procedures governing registration of groups of issues of serials and newsletters. These changes, which went into effect on December 31, 2018, eliminate paper filing and also formalize existing Copyright Office policy regarding the meaning of a “work,” which can affect the statutory damages available for a registered serial or newsletter.

General Changes to Group Registration Applying to Both Serials and Newsletters

First, the rule change states that a group registration of works “covers each issue in the group and each issue is registered as a separate work or a separate collective work (as the case may be).” This change makes clear that the relevant “work” eligible for statutory damages in infringement litigation under the Copyright Act is each issue of a given newsletter or serial, not each group registration of issues. This change codifies what had long been the position of the Copyright Office.

Second, the Copyright Act provides that, unless exempted by the Copyright Office, copyright holders must submit two copies of each work they publish for the use of the Library of Congress. In the rule change, the Copyright Office has provided clearer guidance on how publishers can comply with this requirement. If a serial or newsletter is published in the United States in hard-copy format, the publisher is expected to provide the Library of Congress with two complimentary hard-copy subscriptions unless the publisher is notified otherwise. Conversely, if a serial or newsletter is only published in the United States in electronic format, the publisher is not expected to provide the Library of Congress with any subscriptions unless a formal demand is issued.

Procedural Changes to Group Registration of Serials

Serials are works, such as a weekly magazine, published in successive issues bearing numerical or chronological designations and intended to be continued indefinitely. Effective December 31, 2018, the Copyright Office generally requires all applicants, unless they can demonstrate hardship necessitating paper application, to register groups of serial issues using the eCO online application system found at https://eco.copyright.gov, uploading each issue in searchable PDF format. Form SE/Group, the paper application form currently accepted by the Copyright Office, will eventually be discontinued, and applicants are required to upload each issue of a given newsletter in searchable PDF format. The Copyright Office will continue to accept paper applications for group registration of serials for a twelve-month grace period.

The rule change also codifies several existing Copyright Office requirements regarding group registration of serials:

  • Each application must include at least two serial issues,
  • Each issue in an application must be a work made for hire,
  • The author and copyright claimant of each issue in a given application must be the same person or organization,
  • Each issue in an application must be an all-new collective work that has not previously been published, and
  • Each issue in an application must be distributed as a self-contained collective work.

Finally, the rule change eliminates the requirement that a group of serial issues on a given application must have been published within a three-month period in the same calendar year. However, please note that pursuant to the Copyright Act, in order to be eligible for statutory damages awards in copyright infringement litigation, applications for group registration of serials still must be submitted within three months of the date of publication of the final issue in the group.

Procedural Changes to Group Registration of Newsletters

Newsletters are a type of serial, namely, a specialty, non-general interest periodical published at least twice weekly and unavailable at retail outlets. Effective December 31, 2018, the Copyright Office generally requires all applicants, unless they can demonstrate hardship, to register groups of newsletters using the eCO online application system. Form G/DN, the paper application form currently accepted by the Copyright Office, will be discontinued, and applicants will be required to upload each issue of a given newsletter in searchable PDF format. Please note that there is no grace period for group registration of newsletters – as of December 31, 2018, paper applications will no longer be accepted.

The updated rule removes several existing requirements of newsletters:

  • Newsletters need not be collective works,
  • Newsletters need not be works made for hire, and
  • Groups of newsletters no longer need to be submitted within three months of publication of the last published issue for registration purposes. However, as is the case with serials, please note that pursuant to the Copyright Act, in order to be eligible for statutory damages awards in copyright infringement litigation, applications for group registration of newsletters still must be submitted within three months of the date of publication of the final issue in the group.

A Note on File-Naming Conventions

For both serials and newsletters, the Copyright Office requires that applicants use a particular file-naming convention for issues to be uploaded as part of the online application process.

For serials, the following convention should be used:

  • If an International Standard Serial Number (“ISSN”) has not been assigned to the serial, each issue file should be named:
  • “GRSE_[title_of_serial]_[date_of_publication YYYYMMDD].pdf” (for instance, the file name for the August 1, 2018 issue of Fashion Weekly would be “GRSE_fashion_weekly_20180801.pdf”.
  • If an ISSN has been assigned to the serial, each issue should be named:
  • Similarly, for newsletters, the following convention should be used:
  • “GRSE_[ISSN number]_[date of publication YYYYMMDD].pdf” (for instance, the file name for the August 1, 2018 issue of a serial with ISSN 1234-5678 would be “GRSE_12345678_20180801.pdf”.
  • If an ISSN has not been assigned:
  • “GRNL_[title_of_newsletter]_[date of publication YYYYMMDD].pdf”.
  • If an ISSN has been assigned:
  • “GRNL_[ISSN_number]_[date of publication YYYYMMDD].pdf”.

For more detailed instructions, consult the respective help texts for serials (https://www.copyright.gov/eco/help-serial.html) and newsletters (https://www.copyright.gov/eco/help-newsletters.html).

If you have any questions about the foregoing, or about the eCO online filing system, please do not hesitate to contact us.

The changes are set forth in 37 CFR Part 201 and 37 CFR Part 202 of the Code of Federal Registrations. For more information, the Federal Register entry announcing the rule changes is available at https://www.federalregister.gov/documents/2018/11/30/2018-26091/group-registration-of-newsletters-and-serials.

Trademark Considerations: Hashtags

By Jason H. Kasner
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Popularized by Twitter, hashtags are so ubiquitous that they are now a part of our cultural lexicon. The term “hashtag” in its modern iteration was even added to the Oxford English Dictionary in June of 2014 (“hashtag n. (on social media web sites and applications) a word or phrase preceded by a hash and used to identify messages relating to a specific topic; (also) the hash symbol itself, when used in this way.”[1]).  Hashtags provide a quick and easy reference point and act as a searchable element for social media users to locate content regarding a certain subject.  Essentially, the hashtag is a keyword(s) that draws traffic to certain posts based on their content, not necessarily their source.

The question enterprising social media moguls want answered is – how can we protect a hashtag? More appropriately – how can we own, and exclude others from using our hashtag?  Individual words and phrases are not protectible under copyright law or patent law.  That leaves trademark law, which can offer protection for terms and short phrases. Even so, hashtags seem to be that proverbial square peg that doesn’t quite fit under the penumbra of trademark protection.  In a trademark sense, hashtags are very similar to website addresses (www.xyz.com) and Twitter handles (@xyz) where, historically, little to no trademark significance has been attributed to the symbols associated with these uses (i.e. “www” “.com” and “@”).

Hashtags typically indicate the subject matter of social media content and thus, are descriptive in nature. Trademarks, on the other hand, are designations of source, and the general rule is the more distinctive (and less descriptive) the mark is, the stronger the trademark rights in that mark will be.  So, although hashtags might be clever and original, hashtags as we typically encounter them in social media do not function as trademarks.

Adding a hash symbol (#) does not transform the term into a trademark and does not impart any ownership rights in the term, per se. In fact, the U.S. Patent and Trademark Office does not consider the # symbol to be a distinguishing feature of a mark, and the # sign is treated the same as any other punctuation mark or common symbol.[2]

In a recent decision, See, In re i.am symbolic, llc, 127 USPQ2d 1627 (TTAB 2018), the Trademark Trial and Appeal Board (“T.T.A.B.”) confirmed this view.  Well known singer/songwriter and pop culture personality will.i.am (notably from the musical group Black Eyed Peas) attempted to register the mark #WILLPOWER for various clothing items.  On examination, the USPTO refused to register the mark, citing likelihood of confusion with a prior registration for the following design trademark also for clothing:

On appeal, the TTAB affirmed the refusal to register holding that the # hash symbol was not a distinguishing feature of will.i.am’s mark.  The TTAB stated in no uncertain terms, “[w]e find, in this case, the hash symbol does not have source-indicating distinctiveness and at most simply appears as the social media tool to create a metadata tag.” Id.

In sum, a successful hashtag is generally one that garners attention and generates popularity through re-use by the social media masses. They are not typically used for long periods of time and are a tool of today’s “hot news” culture, used to generate buzz around a certain subject.  When used properly, trademark rights can last a long, long time and the strongest marks carry a strong association in the mind of consumers as the source of a particular product or service.  So, while the two concepts seem similar, when you look at the underlying purpose and use of each, you will find they are quite different.

A good intellectual property attorney can help you protect your rights and guide you towards the best available option for you.

[1] http://www.oed.com/view/Entry/389023#eid301493073

[2]“. . .[T]he addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable. Cf. TMEP §807.14(c) (“Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.”); TMEP §1209.03(m) (addition of generic top-level domain name to otherwise unregistrable matter typically cannot render it registrable). Accordingly, if a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.” Trademark Manual of Examining Procedure. October, 2017. § 1202.18 “Hashtag Marks.”

U.S. Policy on Venezuelan National Cryptocurrency Complicates Venezuelan Patent and Trademark Fee Payments

By Patrick B. Monahan
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In February of 2018 the Venezuelan government launched the “petro,” a state-backed cryptocurrency that was purportedly created to supplement Venezuela’s fiat currency, the bolívar. The government has claimed that the petro is backed by Venezuela’s reserves of oil, gasoline, gold and diamonds. At this writing there remain a number of questions about the petro’s value, its backing, and even about its availability.

On February 1, 2019, the Venezuelan Ministry of National Commerce issued a notice requiring that patent and trademark fees be paid in petro. On that same day, Servicio Autónomo de la Propiedad Intelectual (SAPI), Venezuela’s patent and trademark governing body, lifted its suspension of payment of fees, which dated back to February of 2018, and established a 60-day term in which rights holders must pay any outstanding fees required for the maintenance of their registrations. This fee schedule is retroactive, meaning that any fees that would have come due during the suspension of payments are now due during the 60-day term, which, according to the schedule, can be extended at SAPI’s sole discretion.

Further complicating this matter for United States individuals and companies with intellectual property interests in Venezuela is Executive Order 13827, issued on and effective as of March 19, 2018, which, absent an exemption from U.S. authorities, expressly prohibits transactions by U.S. persons (individuals or companies) relating to any digital currency, digital coin, or digital token issued by, for, or on behalf of the Venezuelan government on or after January 8, 2018. This Executive Order appears to address a concern of the United States government that the Venezuelan government’s creation of the petro is an attempt to skirt ongoing U.S. sanctions affecting Venezuela’s access to international financing.

We strongly recommend that intellectual property rights owners in the United States with interests in Venezuela exercise caution in this time of uncertainty. We will continue to monitor the situation and will provide an update in the event of the issuance of an exemption from U.S. authorities, an extension of the 60-day payment term by SAPI, or a change in the payment policy from the Venezuelan Ministry of National Commerce.

Update: BOOKING.COM Not Generic for Hotel Reservation Services

By Suzanna M. M. Morales
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The Fourth Circuit Court of Appeals recently upheld a district court decision finding that BOOKING.COM can be registered as a trademark because it is not generic for hotel reservation services.

In a prior blog post, we discussed the lower court’s decision. The protection of the mark BOOKING.COM hinged on whether the term was generic or descriptive.

The primary significance of the mark as a whole is descriptive, not generic

In the recent appeals court decision, the Fourth Circuit held that the U.S. Patent and Trademark Office (USPTO), in determining whether a term is entitled to trademark registration, always bears the burden of showing that the proposed mark is generic. The court then held that the USPTO had not met its burden of demonstrating that the mark BOOKING.COM as a whole was generic for hotel reservation services.

Although courts may consider the meanings of each constituent part of the mark – here “booking” and “.com” – the Fourth Circuit held that court also must consider evidence of how the public primarily perceives the mark as a whole.

The Fourth Circuit rejected the lower court’s position that “.com” alone has any source-identifying significance when added to a second-level domain (i.e., booking), instead focusing on the public perception of the mark as a whole – “booking.com.” The court also rejected the converse position of the USPTO that adding two generic terms like booking and .com together always results in a generic term.

The court noted that considering the primary significance of the mark as a whole apart from its components is particularly important for domain names, where “the relevant public may recognize domain names to indicate specific locations on the internet.” However, the unique meaning of a domain name as an internet location may cut against the owner’s ability to protect its mark: “Given that domain names are unique by nature and that the public may understand a domain name as indicating a single site, it may be more difficult for domain name plaintiffs to demonstrate a likelihood of confusion.”

Even a winning applicant to pay USPTO’s attorneys’ fees

In our prior article on this case, we also discussed the implications of a rejected trademark applicant’s choice between two options for challenging the USPTO’s decision: 1) appealing to the Federal Circuit Court of Appeals, where the parties are confined to the evidence of record before the USPTO, or 2) filing a new suit in federal district court, where the parties can present new evidence but the trademark applicant may be required to pay the USPTO’s expenses.

Here, Booking.com chose to file a new suit in district court. While the company benefited from the ability to present new evidence – particularly consumer survey evidence – it also was required to pay the USPTO’s expenses, including attorneys’ fees, regardless of the outcome of the matter.

In the recent decision, the Fourth Circuit upheld the requirement for Booking.com to pay more than $76,000 in expenses of the USPTO, including more than $51,000 in attorneys’ fees. In 2018, the Federal Circuit held that a similar provision of the patent law requiring the applicant to pay “all the expenses” of the USPTO did not include the USPTO’s attorneys’ fees. The Supreme Court is currently deciding whether to grant a petition for certiorari to hear that case. In the trademark context of the BOOKING.COM case, the Fourth Circuit upheld the payment of attorneys’ fees based upon current Fourth Circuit precedent.

Determining Statutory Damages Per “Violation” Under the DMCA

Preston Woods & Associates LLC v. RZ Enterprises USA Inc. (4:16-cv-01427)

By Matthew F. Abbott
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A recent verdict in the Southern District of Texas may put a novel issue before the Fifth Circuit concerning the scope of statutory damages available under the Digital Millennium Copyright Act (“DMCA”). Under 17 U.S.C. § 1203(b), statutory damages are multiplied by “each violation” of the DMCA, and the interpretation of what constitutes a “violation” could result in a significant increase or decrease in the amount of statutory damages awarded to DMCA plaintiffs.

Background

Plaintiff Preston Wood & Associates, LLC (“Preston Wood”) is an architectural design firm that owns copyrights in various architectural works and technical drawings. Preston Wood licensed some of its works to Defendant Urban Living, a real estate developer.  The lawsuit alleges, inter alia, that Urban Living engaged in unauthorized distribution of Preston Wood’s copyrighted works as part of its marketing materials.  Preston Wood further alleged that Urban Living knowingly distributed these works after removing Preston Wood’s “copyright management information” (“CMI”), in violation of the DMCA.

$28.8 million DMCA award

Following a trial in August 2018, the jury found that Urban Living had directly and contributorily infringed Preston Wood’s copyrights, and awarded Preston Wood $7,539.60 in actual damages for copyright infringement. In regard to the DMCA claims, the jury found further that Urban Living had committed 11,516 violations, based on evidence of the number of recipients to whom Preston Wood’s copyrighted works had been distributed. The jury awarded $28,790,000 in statutory damages, which represented the statutory minimum of $2,500 per violation for each of the 11,516 violations.

Judge David Hittner upheld the jury’s finding and entered judgment for the plaintiff in the amount of $28,797,539.60 which included the statutory damages under the DMCA, as well as actual damages and a permanent injunction. Defendant has stated its intent to appeal this ruling pending the disposition of currently pending post-trial motions.

Damages “for each violation” under the DMCA

Under the DMCA, 17 U.S.C. § 1203(c)(3)(B), a plaintiff electing statutory damages may recover an award “for each violation” of the statute. A significant dispute arose following trial as to what constitutes a “violation” of the DMCA.  Urban Living moved for entry of judgment awarding Preston Wood $5,000 in statutory damages.  Urban Living argued that, as matter of law and based on the evidence at trial, it had only committed two violations of the DMCA: first, when uploading the image of the copyrighted work to its website, and second, when sending an “email blast” containing the copyrighted work to many thousands of recipients.  Urban Living asserted that the number of recipients is irrelevant in determining the number of violations, citing McClatchey v. Associated Press, 2017 WL 1630261 (W.D. Pa. 2017), in which the court found that defendant had committed a single violation of the DMCA by publishing a copyrighted photograph via its wire service.  Urban Living further argued that awarding even minimum statutory damages for the 11,516 violations found by the jury would result in a windfall recovery for Preston Wood when compared to the amount of actual damages, and such award should be remitted by the district court.

In response, Preston Wood argued that the DMCA should be construed according to its unambiguous plain meaning – i.e., since the DMCA expressly prohibits “distributions” of copyrighted materials with their CMI removed, each such distribution to an individual recipient is a violation of the statute.  Preston Wood further argued that McClatchey and other cases cited by Urban Living were distinguishable, were not decided on a full evidentiary record as to the nature of the distributions and did not establish a rule under the DMCA that the number of recipients of materials was irrelevant.

In its November 8, 2018 Order, the Court declined to remit the jury award, and entered Final Judgment against Urban Living for statutory damages under § 1203(b) in the amount of $28,790,000. Urban Living has subsequently moved for approval of a supersedeas bond in order to appeal, and has taken the position that the bond need only account for $23,381.85 of the $28,797,539.60 judgment.   Additionally, Urban Living has moved for a new trial arguing that the jury’s finding that Urban Living violated the DMCA is supported by insufficient evidence.  Both motions have been briefed and are pending before the Court.

Potential implications

If the case is appealed and the Fifth Circuit rules in favor of Urban Living, it will greatly limit statutory damages where a defendant has performed a limited number of distributive acts, regardless of how many individuals actually received the DMCA-violative materials as a result of those acts. Alternatively, a ruling in favor of Preston Wood could subject DMCA defendants to potentially tens of millions of dollars in statutory damages for a single distributive act, such as sending a single email to their mailing list.  Either result will have a substantial impact on the scope of recovery of statutory damages for violations of Section 1202 of the DMCA in the Fifth Circuit.

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