Washington Redskins Trademark Follow Up

All eyes have been on the Trademark Trial and Appeals Board (TTAB), following the recent order to cancel six trademark registrations owned by National Football League’s Washington Redskins, each containing the word REDSKINS. Although a divided TTAB granted the Native American’s petition to cancel federal registration of the team’s mark, the decision will not prevent the Washington Redskins from using the trademark in its name, uniforms, and the like.

The TTAB decision comes after twenty years of efforts by Native American petitioners who allege that the ‘REDSKINS’ marks disparage Native Americans. The TTAB first reviewed Native American petitions to cancel the trademarks in 1992, although that case, Pro Football, Inc. v. Harjo, 90 USPQ2d 1993 (D.C. Cir. 2009), was ultimately dismissed by the D.C. Circuit, not on the merits, but for procedural reasons.

In the recent matter, because all of the challenged registrations had been registered for more than five (5) years, the TTAB had a very narrow legal question to answer, namely, whether the evidence made of record, established “that the term ‘redskins’ was disparaging to a substantial composite of Native Americans at the time each of the challenged registrations issued.”  (emphasis added)  That is, during the time period from 1967-1990 (registrations issued in 1967, 1974, 1978, and 1990).  To answer this question, the TTAB applied a two-part test, which (1) looked at the meaning of REDSKINS as it appears in the trademarks, including how those marks were used in connection with the goods and services identified in the registration; and (2) whether that meaning may disparage Native Americans.

In considering the first part of the test, the TTAB found that the Washington Redskins and the NFL “made continuous efforts to associate its football services with Native American imagery.”  Because of the maintained association with Native Americans, the TTAB found that the marks retained their connotation and meaning with respect to Native Americans.

With regard to the second part of the test, the TTAB stated that the determination of disparagement must be made within the context of the goods or services, wherein the context could: (a) make an innocuous term offensive; (b) remove the disparaging meaning from an otherwise disparaging term; or (c) have a no effect on a term’s disparaging meaning.

Although the NFL argued that its use of the mark removed the disparaging meaning of the term and that it had honorable intent in its use of the marks, the TTAB ultimately agreed with the petitioners that the NFL’s use had no effect on the disparaging meaning of the term.  The finding that the term was disparaging during the relevant period was based, in part, on a determination that a substantial composite of Native Americans, approximately 30%, found the meaning of the term REDSKINS to be disparaging during the relevant time periods.  Although the NFL produced contradictory evidence from Native Americans, the evidence did not negate the negative opinion of the substantial composite.  In making its finding, the TTAB stated “[t]he ultimate decision is based on whether the evidence shows that a substantial composite of the Native American population found the term “Redskins” to be disparaging when the respective registrations issued.  Heeb Media LLC, 89 USPQ2d at 1077.  Therefore, once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”  In addressing the NFL’s contentions regarding its honorable intent in the use of the marks, the TTAB stated the “alleged honorable intent and manner of use of the term do not contribute to the determination of whether a substantial composite of the referenced group found REDSKINS to be a disparaging term in the context of respondent’s services during the time period 1967-1990, because the services have not removed the Native American meaning from the term and intent does not affect the second prong.” Because the term was determined to be disparaging during the relevant time period, the TTAB concluded that that the marks should be cancelled.

The Washington Redskins have announced plans to appeal the TTAB decision.  The trademark registrations remain in effect while the appeal is pending, and as stated above, this decision has no legal effect on the team’s ability to use the term REDSKINS or the marks.

Beyond potential financial losses to the NFL, the implications of this TTAB decision are unclear at this time.  However, there are many trademarks that could be affected by this ruling.

While other companies have successfully defended their marks before the TTAB against petitions to cancel from Native American groups, notably SQUAW VALLEY marks in connection with ski goods and services, 80 USPQ2d 1264, 1267 (TTAB 2006), the Redskins matter may represent a new reality for owners of Native American themed marks.

If you have questions about the implications of the TTAB Redskins ruling or your company owns a Native American themed trademark, you need an experienced trademark attorney.  Anna Vradenburgh is a well-respected, business-mind expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks.  In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board.  Anna can also assist your company in licensing maters, including drafting and negotiation of trademark licensing agreements.  For more information visit the Eclipse Law Group website, or contact Anna at (818) 488-8146.

Successful Trademark Cancellation Based on Defective Claim of Ownership

The Lanham Act is a federal law that governs the registration and enforcement of trademarks and service marks in the United States, including the registration of trademarks in the United States based on foreign registrations.  In particular, Section 44 of the Lanham Act governs the manner in which a foreign registration can be used to obtain a valid registration in the United States for the same mark.  One of the critical aspects of Section 44, more specifically Section 44(e), is the requirement that an applicant for registration of a foreign mark in the United States must prove that it is, at the time of filing the U.S. application or at the time that the Section 44(e) basis for filing is added to the application or at the time of the issuance of a U.S. registration, the owner of a valid registration from the applicant’s country of origin. This requirement recently proved to be fatal to a British company’s U.S. registration for BEARWW for Internet based social networking and introduction services, based on a Canadian trademark registration and registered under Section 44(e).  The U.S. application was originally filed by, and a registration issued to, Canadian citizen, Marie Laure Leclerq.  The registration was assigned to Webid Consulting Ltd. on June 1, 2012.

In that matter (SARL Corexco v. Webid Consulting Ltd., Cancellation No. 92056456 (TTAB 2014)), French company, SARL Corexco (“Corexco”), filed an action for cancellation before the U.S. Trademark Trial and Appeal Board (“Board”) against U.S. Registration No. 4,148,217 for the mark BEARWW .  At the time of the cancellation proceeding, the registration was owned by Webid Consulting Ltd. (“Webid”), a United Kingdom corporation. Corexco based the cancellation on two arguments: (1) that the trademark “BEARWW” is likely to cause confusion with Corexco’s prior use of the mark BEARWWW in association with online social networking services and (2) that the registration, which was based on the Canadian registration for the mark BEARWW and registered pursuant to Section 44(e), was void ab initio as having a defective basis for registration.

After some discovery in the proceeding, Corexco filed a motion for summary judgment.  Although the Board refused to grant summary judgment on the issue of likelihood of confusion, it did order cancellation of Webid’s registration of the trademark on the basis of Corexco’s other stated ground.  In particular, the Board noted that, at the time the BEARWW trademark was registered, the original registrant, Canadian citizen, Marie Laure Leclerq, did not concurrently own the Canadian registration upon which the U.S. application was based and upon which it registered.  During the course of formal discovery in the case, Webid admitted Ms. Leclerq never owned the Canadian registration.  Indeed, on the date that the Section 44(e) basis for filing was added to the application, namely, August 11, 2011, Webid, and not Ms. Leclerq, was the registered owner of the Canadian registration.  And while Ms. Leclerq did eventually assign the American trademark registration to Webid on June 1, 2012, the Board held the assignment to be of no consequence.   Ms. Leclerq neither owned the Canadian mark at the time of registration of the U.S. application, nor any time before.  Thus, the application was defective under the Lanham Act because Ms. Leclerq did not own the Canadian registration, at any of the critical dates, the filing date, the date that the Section 44(e) was added as a basis for registration, or the registration date of the U.S. application.  Since there were no other facts to prove ownership of the foreign registration at any of the crucial times, the Board granted Corexco’s motion for summary judgment and ordered the cancellation of the registration.

This case demonstrates the imperative that individuals and other entities seeking a U.S. registration based on a foreign registration must strictly comply with the rules governing domestic federal registration of foreign marks. It also underscores the importance of relying on experienced and knowledgeable counsel, suitably familiar with trademark law, to obtain registration of such marks.

This article is not intended to be, nor should it be considered to be, legal advice.

Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.

Ms. Vradenburgh can be contacted as follows:

The Eclipse Group

6345 Balboa Blvd, Suite 325,

Encino, California 91316

(818) 488-8146

www.EclipseGrp.com

Copyright Implications of 3D Printing

In the United States, the late nineteenth century brought a massive surge in industrial activity as companies developed novel ways to manufacture all kinds of products in massive factories employing large numbers of employees. As time passed, the development of technology focused on decreasing costs and man power. In the 1980s, one such innovative technology was born and developed. This technology, commonly known as 3D printing, was, and still is, protected by numerous patents. Generally, 3D printing is the creation of a three-dimensional object by successively adding layers of material (e.g., resin, powder), wherein the addition of material and formation of the object is controlled through a computer. As a result of the broad patent protection accorded early developers of 3D technology, entry into this new area of more cost efficient design and manufacturing was cost prohibitive for most small businesses and non-business consumers. However, a number of early patents in the field have begun to expire. For example in January of this year, one of the core patents protecting 3D technology, U.S. Patent No. 5,597,589, entitled “Apparatus for producing parts by selective sintering,” expired. The expiration of this patent, and others in the field, is credited, in part, for the emergence and growing popularity of 3D printers which can now be purchased for as little as three thousand dollars. As a result, 3D printing technology has now become more readily available to small businesses, and even the general consumer. Indeed, because of the proliferation of home 3D printers general consumers are now afforded the opportunity to manufacture an endless array of items on their own using a technology, that until recently, was only available to relatively large commercial enterprises. But with the broadening use of 3D printing has come a number of new legal issues, including the issue of copyright protection regarding the design of 3D printed items and the software that directs a 3D printer to manufacture of such materials.

 

3D printers “follow” instructions set forth in computer-aided design (CAD) files to make objects composed of plastic, metal or other materials. With the proliferation of the 3D printer and the desire to ‘make things’, consumers have begun to share CAD files, and indeed, numerous sites have already arisen wherein consumers can upload their files for others to use or enhance. However, much like music sharing, some of the CAD file sharing sites not only offer original user created CAD files, but offer other third party files that may be protected by copyright or that offer the blueprint for a design that is protected by copyright. Indeed, the CAD file itself may be proprietary software, and/or result in the creation of an object whose design is protected.

 

Akin to the era of rampant copyright infringement of music, most notably resulting from the music file sharing service “Napster” and similar concerns, the swift and vast availability of this technology is ushering in a similar era of CAD file sharing sites and correspondingly creating similar conflicts with intellectual property rights, most notably, copyrights. One such CAD file sharing site is Thingiverse.com. And it, not surprisingly, is already fielding numerous ‘take-down’ notices pursuant to the Digital Millennium Copyright Act (DMCA) asserting unauthorized exploitation of owners’ copyrights in the CAD files. Similarly, cease and desist letters, such as one issued by HBO demanding the cessation of attempted sales of an Iron Throne iPhone dock, which was based on still images of the throne in Game of Thrones, have already begun. As use of the home 3D printers increases by private consumers, as with the initial problems in the music file sharing era, enforcement of copyrights will prove difficult. Although use of the DMCA will assist in the removal of CAD files or objects created by 3D printing from a website via the issuance of a “takedown notice”, this only addresses the specific website and only addresses the identified copyright-protected material on that site. Further, as the DMCA offers insulation for many of these websites, the removal of the offending file or object is all that will be accomplished. Monetary damages will have to be sought from the party uploading the file or object. Thus, copyright owners may again be faced with having to sue individual consumers.

 

As website providers have no obligation to review their sites for potential infringement, the onus is on the copyright owner to enforce their copyright. Thus, the question remains. How can a copyright owner effectively enforce their copyrights? Perhaps sites akin to iTunes, which instead of music offer CAD files that one can purchase for a small fee, will be one solution to this potential problem for copyright owners. At the present, a solution is not readily apparent.

 

Regardless of the solution to resolve the tension between the desire to use the newly released technology and the protection of copyrights, one thing is clear, as 3D printers become more commonly used over the next few years, owners of valid copyrighted material will need to be vigilant in identifying illegal use of their copyrighted property. Similarly, users of 3D printers will need to exercise great care to ensure they are not replicating copyrighted objects if they hope to avoid exposure to liability for infringement. This emerging technology offers individuals or startups the ability to create, at a relatively low cost, a product of great value. But this opportunity also allows a party to unwittingly incur liability if they produce something, intentionally or otherwise, which infringes the copyright belonging to another.

Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.

Ms. Vradenburgh can be contacted as follows:

The Eclipse Group

6345 Balboa Blvd, Suite 325,

Encino, California 91316

(818) 488-8146

www.EclipseGrp.com

Patent Protection in the Era of Accelerating Medical Advances

The completion of the Human Genome Project at the beginning of this century, which mapped all the genes in the human body, offered scientists and researchers the opportunity to determine the characteristics of many genes and their relationships to certain diseases. The vast investment of resources necessary to conduct this research prompts those undertaking such painstaking scientific inquiry to secure patent protection for their discoveries.  The Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc., et al., 133 S.CT. 2107 (2013)issued last year further defines the subject matter that is eligible for patent protection and that which is not.

The pharmaceutical company, Myriad Genetics, Inc., through considerable effort, discovered the precise location and sequence of two human genes, BRCA1 and BRCA2, mutations of which can substantially increase the risks of breast and ovarian cancer.   Myriad filed, and received, various patents for its discovery.   The patents were directed, in part, to naturally occurring segments of deoxyribonucleic acid (DNA) obtained merely through the isolation of the DNA segments, wherein the segments contained genetic code identical to genetic code residing in the DNA segments prior to their isolation.

The patents were also directed to the isolation of synthetic DNA, known as complementary DNA (cDNA), which was created by removing certain nucleotides from a segment of DNA.  As the owner of these patents, Myriad could prevent others from conducting diagnostic tests to determine the risk of breast and ovarian cancer in an individual.  Myriad refused to license these patents, and thus, controlled this type of diagnostic testing, that is, until the Supreme Court decision.

Section 101 of the Patent Act provides that “whoever invents or discovers any new and useful….composition of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.”  35 U.S.C. §101.  With respect to Section 101 the Supreme Court noted that “[w]e have ‘long held  this provision contains an important implicit exception[:] Laws of nature, natural phenomena, and abstract ideas are not patentable.'”  Natural phenomena are the tools of
scientific investigation not the products of creative development which patents are intended to protect.

The issue presented was whether Myriad’s discoveries were ‘new and useful …composition of matter’ or simply a naturally occurring phenomena, and thus, simply an attempt to patent life.  The Supreme Court ruled that the discoveries of genes
identified by merely segmenting a tiny portion of the naturally occurring DNA strands does not constitute a patentable invention; however, the creation of complementary DNA is
entitled to patent protection because it is not a “product of nature”, but rather, constitutes a composite containing sequences of nucleotides that are not naturally
occurring, and thus, is subject matter which is eligible for patent protection.   It will be interesting to see how this ruling will be applied in other biotechnology inventions.

Attorney Anna M. Vradenburgh counsels and represents clients regarding trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website or her profile on LinkedIn.

This article is not intended to be, nor should it be considered to be, legal advice.

How to Resolve Domain Name Disputes Outside of Court

During the 1990’s, the Internet emerged as a common platform upon which individuals and businesses, for both commercial and other purposes, could interact and conduct business via websites.  As is commonly understood, websites are identified by a domain name, such as yahoo.com.  As the Internet grew, a need evolved for the administration of domain names and for a method to resolve disputes between parties claiming rights to use a particular domain name.    The Internet Corporation for Assigned Names and Numbers (ICANN) was formed to establish a governing policy by which domain names could be registered and further, established a dispute resolution process, the Uniform Domain Name Dispute Resolution Policy (“UDRP”), by which parties could adjudicate claims over domain names in a stream-lined administrative, non-judicial context.

In simple terms, a domain name identifies the Internet location of a particular website.  The ownership of a domain name is governed, in part, by contract rights.  The mere
registration of a domain name does not establish trademark rights, but the use of a domain name could, in some instances, be challenged by the owner of a trademark that is
similar or identical to the domain name.  During the early days of the Internet, the registration of domain names that were identical to, or substantially similar to, another

party’s trademark became a paramount problem.   Some of these ‘identical’ or ‘similar’ domain names were registered to confuse the public into visiting the domain name owner’s website, and in other instances, the domain names were held hostage to demands of a high purchase price.  The cost to recover these domain names was extremely high as the only recourse was the courts.  It is, in large part, these instances for which the dispute resolution procedure has been developed; specifically, to combat these abuses and provide a cost and time efficient manner for trademark owners to recover domain names that are similar or identical to their trademark.  If a trademark owner believes that the domain name owner (“Registrant”) has, in some manner, infringed upon their legal rights by using a particular domain name or set of names in violation of trademark law, that party (“Complainant”) can elect to present their claim through an administrative proceeding administered by an ICANN-accredited Provider. Providers do not decide these claims; rather, they oversee and manage the dispute process. Instead, the dispute is resolved by a panel consisting either of a single panelist or a group of three panelists.

To initiate the process, the Complainant must file a Complaint.  To prevail in the Complaint, the Complainant must prove the following:

1.    the manner in which the disputed domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2.    why the Registrant or Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the
subject of the complaint; and

3.    why the domain name(s) should be considered as having been registered and being used in bad faith.

The Complainant should include all supporting documentation and other evidence to the Complaint as there is no hearing, or other opportunity to submit evidence, other than the
opportunity to file a reply to Respondent’s answer, assuming the Respondent answers.  Further, the only remedies allowed are the transfer or the cancellation of the domain
name registration.  Typically, a Complainant requests the transfer of the domain name since the cancellation of the domain name only takes it from the Respondent, but leaves
it available for another third party to register.  Once filed in accordance with the rules, the Complaint is transmitted to the Respondent – the holder of the domain name registration.

Once the Respondent receives the Complaint, the Respondent must, within twenty days of receipt of the Complaint, prepare and file a response addressing the statements and
allegations contained in the complaint and further, include any and all bases supporting the contention that the Respondent (domain-name holder) is entitled to retain the
disputed domain name. As with the Complaint, the Response should include supporting evidence or documentation. While the Complainant has the right to submit a reply to the Respondent’s submission, if the Complainant does not do so, the case will be forwarded to the panel which renders a decision in a relatively expeditious manner.   The decision will be rendered based upon the allegations contained in the Complaint, the evidence in support thereof, the rebuttal arguments in the Response and any evidence submitted in support of the arguments in the Response, as well as any additional information submitted in a reply by either party.

It is to be noted that if no Response is filed, the panel will review the Complaint and accept the allegations set forth therein as true.  If the Complaint fails to adequately prove one of the three required legal grounds, the decision will be adverse to the Complainant.  Thus, it is important that the Complaint clearly prove each and every listed legal ground noted above, or the Complainant risks an adverse decision, even without a Response being filed.   If the decision is adverse to the Respondent, the Panel will either order the cancellation of the domain name registration or order it transferred to the Complainant, depending upon the Complainant’s election in the Complaint.  The entire process typically takes less than four or five months from the filing of the Complaint to the rendering of a decision.  If either party is unhappy with the decision, that party has 10 (ten) days to file a federal action contesting the decision.  Assuming a decision against the Respondent, if no federal action is filed, the domain name will transfer to the Complainant or be cancelled.

As can be seen, these tribunals offer an efficient, stream-lined process to resolve these types of disputes.  If the losing party files an action in federal court, well, that process is likely to be much longer.

Attorney Anna M. Vradenburgh counsels and represents clients regarding trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website or her profile on LinkedIn.

This article is not intended to be, nor should it be considered to be, legal advice.

Effects of Lack of Net Neutrality Rules

Net neutrality is the aspirational concept that the Internet should be free and open to all of its users.   Advocates for net neutrality believe networks such as Comcast, AT&T and other Internet service providers which offer online access to millions of Americans should be treated as common carriers, the traditional role held by phone companies and railroad companies, which have to provide their services in a nondiscriminatory fashion to all consumers.  But, as indicated in the article, “Circuit Court Strikes Down Net Neutrality Rules” heading this newsletter, the net neutrality rules in place by the FCC must be revisited.

What this ruling might mean for consumers must be viewed in light of two recent deals pursued by Comcast, the leading cable television company in the nation.   Specifically, the deals involve a proposed merger with its closest competitor, Time Warner Cable and a content use arrangement with Netflix potentially providingComcast with the opportunity to access its voluminous video content directly from its servers.  This ostensibly would allow. Comcast users the ability to receive faster downloads from Netflix than non-Comcast customers.  To the extent that Comcast continues to serve a larger share of the country’s Internet users, it can ultimately elect to increase the cost for consumers to obtain higher quality content more quickly.  Consumers who choose to purchase Internet service from less expensive providers may either be unable to access certain content at all, or not be able to access it with speed.

Further, as Comcast owns NBC Universal, some have speculated that it might be able to offer NBC’S content to customers at rates that are lower than many of its competitors.  If so, it would not be surprising if we soon see other content providers attempting to form distribution arrangements that are similarly competitive distribution arrangements.   Currently, the situation remains in flux.  The net result, no pun intended, is that consumers’ content delivery choices may eventually effectively be constricted, perhaps to a two-tier pricing structure where content will be available at an increased cost for faster online delivery.

Even more concerning is the possibility that if net neutrality is not restored, consumers may be faced with the situation that only those that get Internet service from the giant ISPs, like Comcast, will readily have access to premium and more desirable content.  Moreover, if the percentage of consumers receiving Internet access from giant ISPs like Comcast continues to increase, it will likely result in increasing difficulty for providers of less popular content to market their content without a favorable arrangement with one of the large ISPs.   Thus, if net neutrality is not restored, content providers may soon face a distribution environment that discourages video producers, writers and artists without influential connections from producing innovative content because of significant ISP-created barriers reducing the likelihood that such content will ever be viewed.

While it appears to be dead for the moment, the FCC has vowed to take steps to resurrect net neutrality in some form.   Many of the concerns now being loudly expressed by content providers, free speech advocates and some consumer groups may ultimately be unrealized.  Therefore, we will have to wait and see what the FCC ultimately does.

Attorney Anna M. Vradenburgh counsels and represents clients regarding trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website or her profile on LinkedIn.  This article is not intended to be, nor should it be considered to be, legal advice.

Circuit Court Strikes Down Net Neutrality Rules – Perspective

For several years now, an extremely consequential debate concerning net neutrality rules has pitted the freedom to equally access information on the Internet against the right of broadband providers to set prices for, and otherwise control, the bandwidth and Internet connectivity services as they choose.  Net neutrality refers to the notion that the web should be free and open so that users have unimpeded access to any service or application without Internet service providers (ISPs) imposing restrictions or bans on such access.

By statute, the Federal Communications Commission (FCC) is authorized to regulate “all interstate and foreign communications by wire or radio.”  Internet communications, therefore, fall within the jurisdiction of the FCC.   Through the Open Internet Order of 2010, the FCC established net neutrality rules on broadband providers, including disclosure, anti-blocking and anti-discrimination rules, in an effort to prevent companies, which provide access to the Internet, from discriminating against different content providers.  The FCC feared that broadband providers would grant preferential treatment to some influential content providers at the expense of new startups and smaller companies, which would struggle to compete in such an environment wherein established providers have reinforced brand advantages.  In this type of environment, some content might become slower to access, become inaccessible or simply cost more to access.

Pursuant to Title II of the Communications Act of 1934, the FCC is granted broad authorization to regulate “common carriers”, such as telephone companies.  Under this authority, the FCC could vigorously regulate the telephone companies, including mandating that all telephone calls made on its network be allowed, and further, regulating the rates that could be charged.   The rules set forth in 2010 by the FCC seem to reflect the exercise of this broad authority.   However, this broad regulatory power applies specifically to “common carriers.”  In 1996, Congress enacted The Telecommunications Act of 1996, which defines two types of entities: telecommunications carriers, which are classified as common carriers; and information services providers, which do not fall within that category.

In Verizon v. FCC, No. 11-1355 (D.C Cir Ct. App. 2014), Verizon Wireless sued the FCC claiming the regulatory body lacked the authority to regulate how their company offers content to its customers.  Verizon argued that the FCC could not subject it to the same regulations which governed utilities, such as telephone carriers, like AT&T and the Baby Bells in previous decades.  Verizon contended that anti-blocking and anti-discrimination rules, as applied to the telephone companies in years past, should not apply to them as they fall outside the category of “common carriers” because of the FCC’s prior categorization of Verizon and similar bandwidth providers as information service providers and not as telecommunications carriers.

The DC Circuit Court of Appeals agreed with Verizon’s position and ruled that while the FCC did have some authority under Section 706 of The Telecommunications Act of 1996 to regulate traffic on the Internet, the scope of its regulatory power did not extend to the implementation of the anti-blocking and anti-discrimination rules set forward in the FCC’s Open Internet Order of 2010, the directive which implemented the net neutrality approach.  In some respects, the FCC was hoisted on its own petard, or its prior leadership’s petard, with respect to whether these internet companies can be correctly analogized to the telephone companies of decades past.  The DC Circuit Court relied on the FCC’s decision in 2002 that Internet service providers were not a telecommunications carrier, but rather, an information service provider.  This self-classification limits the F.C.C.’s authority, according to the DC Circuit Court of Appeals.

While Verizon did win this particular battle, the DC Circuit Court of Appeals did offer the FCC some room to maneuver.  It noted, making an obvious analogy between the Internet and railroads, that “Railroads have no obligation to allow passengers to carry bombs on board, nor need they allow passengers to stand in the aisles if all seats are taken. It is for this reason that the Communications Act bars common carriers from engaging in “unjust or unreasonable discrimination, not all discrimination.”

The DC Circuit Court’s decision provides the FCC the chance to rewrite regulations that fall within the limited authority they were granted by Congress via the 1996 Telecommunications Act to encourage innovation and growth of the Internet.  In this regard, the FCC can seek to find a middle ground, which permits Internet service companies to allow some content providers to charge customers for special content, while keeping the information and services available on the Internet open to everyone. The question remains what kind of regulation is, using the railroad analogy, just and reasonable.

Further, the FCC can revisit its decision in 2002, which exempted the Internet from greater regulation as if Internet service providers were a utility.  Ostensibly, the FCC could attempt to reclassify broadband service providers as a utility so as to subject them to greater regulation.  From statements made by the current head of the FCC, Tom Wheeler, the Commission intends to first see if it can redraft some net neutrality rules that do not run afoul of the DC Circuit Court’s decision.  He has not, although, foreclosed the possibility of reclassifying these companies as common carriers to essentially enhance the scope of its own regulatory powers.

Accordingly, for content based businesses, such as, for example, Netflix, if the current regulations remain in force, these businesses could be subject to discriminatory treatment by the service providers.  For instance, preferential treatment could be granted to those companies willing to pay higher fees in exchange for allowing their customers faster access to their content.  Or, companies like Netflix, might refuse to pay, and be disadvantaged by slower transmission of content to its customers.  Ultimately, the end consumer could be paying higher fees for some preferred content.

Attorney Anna M. Vradenburgh counsels and represents clients regarding trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website or her profile on LinkedIn.  This article is not intended to be, nor should it be considered to be, legal advice.

Will Pro Football Fans In Washington Be Rooting For The Redskins In Five Years?

Several months ago, President Obama re-sparked a controversy about the use of the name “Redskins” by Washington’s NFL football team when he suggested that the team’s owner should consider changing their name.  Recently a delegate from the American territory of American Samoa filed a bill in Congress to cancel any trademark registration with that term. Simultaneously, a cancellation proceeding is pending before the U.S. Trademark Trial and Appeal Board (“TTAB”) to terminate six (6) registrations that contain the term REDSKINS in the trademark on the grounds that the term is  offensive to Native Americans.  At least three (3) of these registrations were issued in 1974, one issued in 1978, and the earliest issued in 1967.  The term REDSKINS has been used by the NFL since at least as early as 1932!

If either of these efforts prevail, the team may feel sufficient pressure to change their name. This is not the first time the team has faced this campaign.  When they made it to the Super Bowl in 1992, Native Americans protested outside the Super Bowl venue in Minneapolis against the team’s use of the name and mascot.  Around the same time, a trademark action to cancel various trademark registrations containing the term REDSKINS on the ground that the trademarks should not be registered because they are immoral, scandalous or offensive initially succeeded before the TTAB before being overturned by the U.S. District Court in D.C., in part, because the filing parties waited too long to raise their complaints.

Whether the term is controversial depends upon who you ask.  While members of the Oneida Indian tribe believe it is offensive, many Washington fans view the name as a sign of toughness and strength.  Regardless of these views, there is also a question of constitutionality: should a law be upheld that dictates the prohibition of the registration, not the use, of a term because it is viewed as offensive?   By what standard is it deemed offensive?   What if it becomes not offensive?  The Trademark Office already provides a forum, i.e., a cancellation proceeding, to object to such registrations, which is currently being utilized by the objecting parties.  The use of the federal government through attempted legislation seems heavy handed.  Indeed, in the 1989 case of Texas v. Johnson, 491 US 397, Supreme Court Justice William Brennan stated, “If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.”   In this case, it appears to be a limited faction of society that contends the registration of REDSKINS is offensive. We shall soon see which view ends up holding sway.

Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website.

Getty Images Going Gangbusters Against Who They Term As “Unauthorized Users”

Scrolling down a page on the internet, you find a photograph of a beautiful resort in Bora Bora, which incidentally happens to be your next vacation destination.  Since you are leaving in two weeks for the overdue trip, you post the photograph on your Facebook page with a caption that reads “Where I will be in 14 days.”

Innocent enough?  Below the image there are two words: “Getty Images”.  Who is “Getty Images” and what does it matter?   It matters.  Getty Images is one of the biggest stock photo agencies in the world.  They license users who can, for the time period of the agreement, use the licensed photograph(s) on their social, news or business websites upon the payment of an agreed-upon fee. What, though, if the image does not have any indication of ownership?  It must be free to use, right?  In all instances, the simple answer is no.

Use of an image found on the Internet is likely to expose you to a claim of copyright infringement.  Indeed, Getty Images aggressively polices the images they are authorized to license by sending out letters demanding that the unauthorized user of the image immediately stop using the image and remove it from their site.  Included in this demand to cease use of the image is a demand for what could amount to an exorbitant sum of money for damages that Getty Images claims that the recipient of the letter owes.
So does the soon-to-be vacationer have to worry about getting one of these stark cease and desist letters?  The pattern of enforcement by Getty Images appears to be directed to those who may profit financially from the use of the photograph on a news or business website.  Thus, if the person in this hypothetical operates a travel agency and utilizes the image on the agency’s website, then the answer would be “Yes”, provided the agency, or user, has no licensing agreement with Getty Images.  However, Getty Images specifically licenses use of images for social networking sites.  Thus, it appears that any unauthorized user is a target for one of these letters.

Would that travel agency, or unauthorized user, have to pay damages to Getty Images for the unauthorized use of the photograph?   Under copyright laws, the unauthorized use of a photograph is copyright infringement.  Thus, an unauthorized user could be liable for damages, especially if Getty Images can show how long the photograph was used and if that use generated a profit for the unauthorized user.  Many companies or individuals, who have intentionally or unintentionally, used images within the control of Getty Images without a license, have found that mere removal of the photograph is not enough to resolve the matter.  This also applies to actual licensees who continued to use a licensed photograph after their license agreement with Getty expired.

If you received such a letter, the best thing to do is immediately contact an Intellectual Property attorney who handles copyright infringement matters.  Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues.  To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website. She can provide expert advice to you about your case and represent you in a copyright action, or other intellectual property actions that you may be facing.