Many years ago, as a young lawyer, I experienced the utter joy of helping a client dismiss a copyright infringement lawsuit against it, because the plaintiff’s claimed copyright hadn’t yet been registered with the Library of Congress.

Seemed like an obvious error for the plaintiff to file when it did, since the federal copyright statute, according to my reading, required that registration be made (or denied) before a lawsuit could be brought, mere application was not enough.

Over the last twenty-five years, I’ve observed creative lawyers convince some courts that the language isn’t that clear, leading to a split in the various federal courts, some courts allowing suit based on the mere filing of an application.

So, imagine my surprise this morning, to read that the U.S. Supreme Court has decided the issue once and for all: It is actually pretty clear from the language of the statute, mere applications to register are not enough to allow filing a lawsuit.

That’s right, earlier today, the U.S. Supreme Court issued its decision in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, Justice Ginsburg delivering the unanimous decision of the Court:

“Impelling prompt registration of copyright claims, 17 U.S.C. §411(a) states that ‘no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.’ The question this case presents: Has ‘registration . . . been made in accordance with [Title 17]’ as soon as the claimant delivers the required application, copies of the work, and fee to the Copyright Office; or has ‘registration . . . been made’ only after the Copyright Office reviews and registers the copyright?”

“For the reasons stated, we conclude that ‘registration . . . has been made’ within the meaning of 17 U. S. C. §411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.”

So, with that, at least two takeaways emerge.

First, those who create copyrightable expression have yet another incentive to promptly register the copyrights in their creative works.

Second, issues that seem obvious on their face can nevertheless, through creative lawyering, tie the courts up in knots for decades.

– Jake Sherlock, Law Student, William Mitchell College of Law

Move over NSA, there’s a new Big Brother in town! As you are almost certainly not aware, the Copyright Alert System was implemented on February 25, 2013. The CAS is the result of an agreement between the Copyright Industry (particularly the MPAA and the RIAA) and many of the country’s largest Internet Service Providers (such as Comcast, Time-Warner, Cablevision, AT&T, and Verizon). What it means for you, the average internet user, is that the Copyright Industry is always going to be looking over your shoulder, diligently monitoring your usage of file sharing services in an effort to catch you in the act of sharing the latest episode of Real Housewives of Beverly Hills. Reactions to the CAS have been mixed, with some commentators calling it “groundbreaking,” while others think that it is “not going to go well.”

The CAS is a form of a “graduated response” system. The hallmark of graduated response is the use of an escalating series of “strikes” to discourage internet users from illegally sharing copyrighted material online. The ISPs implementing the CAS are required to give internet users five or six strikes. For instance, on the first strike an internet user might be met with a pop-up notice that merely gives a warning. A second strike could get the user a same or similar notice. The third and fourth strikes would generally require the user to give acknowledgement of the notice to the ISP. The fifth and sixth strikes would have a “mitigation measure” attached that could include a temporary suspension of the user’s internet access. Each ISP will have its own version of the CAS that may vary slightly. An example of Comcast’s version can be found here.

Systems similar to the CAS have been implemented successfully in Europe. France had a government backed system known as HADOPI, though in July of this year it switched to an automated fine model. Meanwhile, the Irish Supreme Court recently ruled that the ISP Eircom can continue to operate its system. Despite these successes abroad, significant flaws with the CAS may prevent it from being the magic bullet the Copyright Industry hopes it to be.

One of the major issues is the sheer lack of oversight regarding the implementation of the system. For instance, the CAS has been implemented for almost a year. Has it been effective in curbing online copyright infringement? Who knows! The Center for Copyright Information (the body that oversees the CAS) is not at all required to release statistics that show whether or not the system is working. Did you receive a notice that you feel was unwarranted? Do you want to challenge it? Good luck! You have to pay $35 for the privilege to arbitrate your claim in front of Arbitrators chosen by the CCI, have a limited amount of time to prepare your case (15 days if you are a Comcast subscriber), and you do not even have the benefit of the full array of rights allowed by the Copyright Act. Do you want to know how or why your internet account was chosen for a notice? Too bad, that’s been redacted. Oh, and not to mention it may be in violation of antitrust laws.

With a system weighted so heavily in the Copyright Industry’s favor, surely there should be an Independent Examiner, someone without a stake in the game that can objectively review the methods and practices of the system to ensure that it is operating fairly. It just so happens that the CCI had such a figure, choosing global digital risk management and investigations firm Stroz Friedberg for this task. However, based on the above consumer rights abuses, it should come as a surprise to no-one when it was discovered that Stroz Friedberg was a former lobbyist for the RIAA during its heaviest years of litigation against suspected file sharers. Only after this information was leaked did the CCI remove Stroz from the position, eventually selecting Harbor Labs to take its place.

Given the flaws of the CAS, it appears that some changes should be made to make it more palatable to internet users. To this point, Gigi Sohn, president and CEO of the non-profit Public Knowledge (and CCI advisory board member) acknowledges that there is a “trust deficit” that threatens to undermine the public’s acceptance of the CAS, and that unless this deficit can be eliminated the general internet public will be prevented from accepting the system. Ms. Sohn proposes several solutions to attempt to rectify this issue, including a greater commitment to transparency, a suggestion that the Copyright Industry scale back efforts to push new copyright enforcement legislation, and most importantly, that the content industry should focus their efforts on making their content legally available on consumer friendly platforms at a fair price.

Will the Copyright Industry and the ISPs take heed of these suggestions? Possibly. Given the Copyright Industry’s track record, it is also entirely possible that they stick their heads in the sand and refuse to admit that the world has changed and that pre-internet business models are no longer feasible. For now, all we can do is hope that eventually this Big Brother can leave 1984 and join the rest of us in 2014.

Jeffrey Stone, Patent Attorney, Winthrop & Weinstine, P.A.

IP protection for product designs is typically found in a combination of one or more of the following protective mechanisms:

1. Contracts which are typically used with employees and 3rd parties to prevent loss of novelty as well as provide notice of ownership. Contractual protections such as Non-Disclosure Agreements are well-known and heavily used.

2. Utility patents cover the novel and non-obvious functional elements of a conception. This is likely the patent you are most familiar with, including an exhaustive written narrative accompanied by drawings and a series of written claims defining the scope of protection.

3. Design patents cover novel and non-obvious non-functional or ornamental features of a conception. Design patents are receiving much publicity at present as a result of the recent, and ongoing, Apple v. Samsung case.

4. Copyright protection for original works of authorship. In general, copyright law does not grant protection to utilitarian objects. Section 101 of the Copyright Act provides that the design of a useful article will be protected “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article”. . . including “two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.”

5. Trade Secret protection for those conceptions, or parts of the conception, that cannot be ascertained or reverse engineered by the general public. Typically, trade secret protections are most appropriate for method of manufacture or software where the operational details are hidden.

6. Trade Dress protections for non-functional features that have acquired distinctiveness through extensive marketing and commercial use and acceptance.

We strongly advocate leveraging two of these protective mechanisms to achieve IP protection of novel, non-obvious and non-functional features of designs: Design Patent protection followed by Trade Dress protection. (Of course, contracts will also be employed, functional features will be covered by utility patents and, where appropriate copyright protection utilized to provide the fullest and broadest IP coverage possible.) The resulting coverage scheme allows non-functional feature IP protection to begin virtually immediately after conception, with continued and unbroken protection theoretically forever, to the point the underlying product is no longer “in commerce.” In short, a beautifully elegant result when properly executed.

Design Patents Coverage and Purpose

Design patents are provided to promote progress in the decorative arts and to reward inventors. Thus, design patents protect features that are primarily non-functional, ornamental elements of an article of manufacture such as a specific product shape or a particular surface ornamentation. Note that color cannot be protected with a design patent.

For example, an oval-shaped element on the handle of a surgical instrument may be protected under a design patent if the oval shaping is primarily non-functional and is also both novel and non-obvious in view of the prior art. User interfaces on electronic devices are also heavily protected by design patents, e.g., Google’s home page or the tiling arrangement on Apple’s iPhone.

Design patents require no use of the underlying product in commerce in order to meet the protection threshold, just novelty and non-obviousness, both of which are determined according to the now well-known “Ordinary Observer” test.

Speaking generally, design patents are relatively inexpensive to prepare, file and bring to issuance, as compared with utility patents. In our practice, design patents regularly issue within 6 to 8 months of filing, usually without any pushback from the USPTO. With a little advanced planning and placement, a design patent application may be accelerated on the so-called “Rocket Docket” within the USPTO, resulting in likely issuance of the design patent application within 3 to 6 months of filing, barring any significant issues during prosecution.

Design patents are granted for a period of 14 years. During this 14-year term, the owner of the design patent enjoys a full monopoly of the patented elements, including the exclusive right to make, use, sell and/or offer for sale the patented device, and may stop infringers on any of those rights. Continue Reading Protecting Non-Functional Product Design Features Through The Entire Life Cycle: From Conception to Grave