Tags: 2015, Intellectual Property, ip, patent, privacy, privacy shield, safe harbor, trademark
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By: Callie L. Pioli
2015 was another busy year in terms of intellectual property law, but luckily, MBBP has been carefully monitoring all of the important developments. There were many contenders for spots in our list, but only a select few could make the cut.
- Happy Birthday to All! – Marya v. Warner/Chappell Music, Inc.
- Google Books (Authors Guild v. Google, Inc.)
- Disparagement versus Free Speech: In re Tam
- Issue Preclusion & The TTAB: B&B Hardware, Inc. v. Hargis Indus., Inc.
- Patient Infringement Liability: Akamai Techs., Inc. v. Limelight Networks, Inc.
- Biosimilarity: Amgen v. Sandoz
- Patentability of Natural Phenomena: Ariosa Diagnostics, Inc. v. Sequenom, Inc.
- Computer Fraud & Abuse Act
- Safe Harbor Down, EU-US Privacy Shield Up
Clearing Away Cloud Confusion; MBBP Team to Illuminate Intricacies of Buying and Selling Cloud Services 02/01/2016Posted by Morse, Barnes-Brown Pendleton in Computer Software & Hardware, Corporate, Events, Intellectual Property, Licensing & Strategic Alliances, Privacy and Data Security, Telecommunications & Networking.
Tags: cloud, cloud computing, corporate counsel, NECCA, risk, technology, vendor contract
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Lawyers for technology companies are increasingly asked to assess the risks of client companies shifting from standard sales and licenses to a cloud model, and lawyers for every company need to assess the pros and cons of receiving core technology as a service over the internet. On Wednesday February 3rd, at a NECCA (New England Corporate Counsel Association, Inc.) seminar held at the Westin Waltham from 10:00 to noon, MBBP attorneys Howard Zaharoff, John Hession, Mark Tarallo and Faith Kasparian will address the complexities of cloud computing and offer guidance to in-house counsel and other professionals advising their clients on these critical issues.
Among the topics to be covered are understanding the legally relevant features of cloud computing, identifying the key contract issues, recognizing the terms a standard vendor contract should contain, and discovering the implications of recent developments in data privacy, particularly in the EU, for companies that are purchasing or selling cloud services.
To explore these and many other aspects of this complex and rapidly -evolving subject, reserve your space for this important and edifying NECCA seminar. Lunch will be served at 12:30 p.m.
Tags: Contours of Copyright, copyright, Intellectual Property, music, musical composition
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It is axiomatic that copyrights do not protect words or short phrases. But how short is too short for copyright? 10 words? 5 words? 3 words? Consider Henny Youngman’s classic 4-word joke, “Take my wife … please.” Is that a copyrightable jocular expression, or an uncopyrightable short phrase (or, for you copyright pros, a merged idea)? The answer is important, not only to comedians, but also to epigrammatists, songwriters, poets … and anyone who wishes to include, in a work they are creating, word sequences they’ve seen used by another.
A recent case, William L. Roberts v. Stefan Kendal Gordy (U.S D.C., S.D. Florida 2015), provides helpful guidance, though not a definitive answer.
Discussion: The plaintiffs, Roberts et al., owned the musical composition Hustlin’, whose chorus consists of the repeated refrain “everyday I’m hustling.” The defendants, Gordy et al., had a hit song, Party Rock Anthem, which included the phrase “everyday I’m shuffling.” When the defendants began marketing their “shuffling” phrase on T-shirts and other merchandise, the plaintiffs sued, arguing that their copyright in the song included a copyright in the “hustlin’” refrain, and therefore they could prevent anyone from copying that refrain, whether in a similar song or standing alone on a garment.
The defendants disagreed, and the court sided with them. Yes, said the court, the plaintiff’s song was entitled to copyright protection. However, “copyright protection does not automatically extend to every component of a copyrighted work.” Rather, because “originality” is the sine qua non of copyright, and short phrases are common and unoriginal, the copyright in a work does not extend to individual short phrases (or, of course, single words) in the work. This doesn’t mean, the court explained, that the presence of “ordinary” phrases deprives a work of copyright protection; but it also doesn’t mean that the copyright umbrella shelters every word or phrase contained in a copyrighted work.
Or, as the court puts it: “The question presented … is not whether the lyrics of Hustlin’, as arranged in their entirety, are subject to copyright protection. The question is whether the use of a three-word phrase appearing in the musical composition, divorced from the accompanying music, modified, and subsequently printed on merchandise, constitutes an infringement of the musical composition Hustlin’. The answer, quite simply, is that it does not.”
To add insult to injury, the court also notes that the terms “hustling” and “hustlin’” were used in many earlier songs, and that the plaintiffs never asserted that the phrase “everyday I’m hustlin’” originated with them – which in itself could have killed their copyright claim (to be copyrightable, a work needn’t be novel, as in the patent sense of never before appearing anywhere, but does need to be original, in the copyright sense of having composed it oneself without copying from another). Finally, says the court, there is no substantial similarity between the original musical composition, containing the (uncopyrightable) phrase “everyday I’m hustlin’,” and the defendant’s T-shirts, containing the (uncopyrightable) phrase “everyday I’m shuffling.” In short, none of the plaintiff’s original expression was infringed by the defendant’s apparel.
An Interlude for Copyright Aficionados: There was nothing earthshaking about this decision, though it is interesting to read the court’s sampling of many short phrases that failed to win copyright protection, including: “so high” (2 words), “get it poppin’” (3 words), “fire in the hole” (4 words – uh-oh, Henny), “most personal sort of deodorant” (5 words), and “You Got the Right One, Uh-Huh” (5 words, plus an “Uh-Huh”). So, one might conclude, a half dozen words or more are probably the minimum required for copyrightability.
Perhaps the reason this court – and no court I’m aware of – has stated a bottom line number below which copyright cannot apply is that no one can be absolutely certain that a creative author couldn’t be original in even a handful of words. Let’s cheat, make up a word, and stick it in a short phrase: “She’s my joyzilla mama.” Four words – really 3 plus a mashup – which have never appeared before (a Google search more or less confirmed this). Can I use copyright law to prevent another person from using my original phrase in a song or on a T-shirt?
My answer is a definite “maybe.” The epigrammatist Ashley Brilliant has successfully registered – and once successfully asserted – copyrights in his epigrams, many of which are quite short (such as, “When all else fails … Eat” = 5 words). Poets and songwriters often feel that their short but creative phrasings are worthy of protection. So maybe we can’t state an absolute bottom line because we can’t guaranty that a brilliant writer or composer won’t dash our assumptions.
Conclusion. Still, it’s hard to imagine anyone successfully claiming copyright in any 2- or even 3-word (real words, not coined) phrase – if for no other reason than given the relatively small number of meaningful 2- and 3-word phrases, and the exhaustive output of English speakers, each of those short phrases would have already appeared so frequently that no one using such a phrase could convincingly assert it originated with them, or that they should have the right to keep anyone else from using it.
So, unlike Roger Bannister running a mile under 4 minutes, the possibility of someone writing a copyrightable phrase of under 4 words (probably 5, possibly 6) should stand the test of time.
For more information on this topic, please contact Howard Zaharoff.
Tags: patent, patents, Star Wars
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Today, December 18, 2015, is the official release in the U.S. of Star Wars: The Force Awakens, which is the seventh installment in the film series. The original trilogy began in 1977, and 38 years later is still going strong; a highly regarded film franchise to say the least. In part, the film series owes some of its success to the technology that “surrounds and penetrates” the movies.
Since the original trilogy, inventors have focused on creating or improving upon such Star Wars technologies as human prosthetics, solar power, robotics, lasers, rocket and missile technology, force fields, clones and genetic engineering, cybernetics, forms of levitation, and holography.
If you are thinking about trying to make something from the Star Wars universe a reality, “do…or do not. There is no try.” “You can’t stop change any more than you can stop the suns from setting.” And if you invent something, remember that it is “unwise to lower your defenses.”
Read the full article here!
Tags: LCC, Limited Liabilities, myLawCLE
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On Monday, April 13th, MBBP Attorney Mark Tarallo will be presenting myLawCLE’s “Basic LLCs 101”. The goal of the program is to provide course participants with a basic understanding of limited liability companies.
The course will discuss a wide range of information regarding limited liabilities companies, including:
- What is an LLC?
- Comparison of LLCs with other entities-Liability, Taxes, and Other Issues
- Formation of the LLC
- When to Use and Avoid the LLC
- Drafting the Operating Agreement-Key Provisions
- Ethical Issues in Representing the LLC
Any questions regarding this topic, please feel free to contact Attorney Mark Tarallo directly.
To register for this event, please see the myLawCLE events page.
Tags: alliances, licensing, Life Sciences, rights of first refusal, strategic partnerships, technology companies
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When entering into an exclusive licensing arrangement, the odds of success are against most companies. Typically within the first twelve months of an arrangement, 2/3 of all alliances crumble. If these ventures are so prone to failure, what preventative measures can a company employ to ensure success?
To learn how to achieve success when entering an alliance, read John Hession’s full article.
Tags: console developer, Demiurge Studios, Marvel Puzzle Quest, mobile apps, mobile developer, SEGA
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MBBP Client Demiurge Studios, an independent game developer out of Cambridge, Massachusetts, has been acquired by SEGA Networks, a multinational video game developer, publisher, and hardware development company. Founded in 2002, Demiurge Studios made the transition into mobile gaming in 2008 and found success with Marvel® Puzzle Quest™, a top 100 grossing app on the App Store and top 50 grossing apps on Google Play. Previously, they worked with world-class developers like BioWare™ and Irrational Games™ on AAA console and PC games, contributing to titles such as Bioshock, Borderlands, and Mass Effect. Demiurge Studios will continue to make games under the Demiurge Studios name.
Morse, Barnes-Brown & Pendleton serves as counsel to Demiurge Studios, and advised it in connection with the structuring, negotiation and documentation of this transaction.
To learn more, read the full press release.
Our Greatest Hits of 2014! 01/21/2015Posted by Morse, Barnes-Brown Pendleton in Corporate, Employment, Immigration, Intellectual Property, Licensing & Strategic Alliances, M&A, MBBP news, Privacy and Data Security, Public Companies, Taxation.
Tags: employee claims, employment law, IRS, mergers and acquisitions, startup, venture capital
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Other popular articles include:
- Avoiding Employee Claims of Unlawful Retaliation
- Enforcing Noncompetition Agreements
- International Travel on an H-1B Visa
- Common Publishing Legal Issues and How To Avoid Them
- Book Publishing Contracts: Checklist of Deal Terms
- A Rose by Any Other Name: Pros and Cons of Pseudonyms
- Common Stock Valuation and Option Pricing by Private Companies
10 Years of Valuations Under 409A
- Double Trigger Acceleration: Neat in Theory, Messy in Practice
Most popular posts from our 4 blogs:
- Good Company: Ten Crucial Questions to Answer Before Contacting a Patent Attorney
- M&A Today: “Materiality Scrape” Provisions in Merger/Acquisition Agreements
- Massachusetts Employment Law: Are Your Commissioned Sales Employees Entitled to Minimum Wage and Overtime?
- VCs and Startups: Why Incorporate?
These articles, along with our newsletters and other blogs can found here.
Tags: Bootcamp, Intellectual Property, patents, Wentworth, WIT, WIT Accelerate Program
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Last week, MBBP patent attorney Sean Detweiler spoke at an even hosted by the Wentworth Institute of Technology Accelerate program. The event is called Bootcamp, and it allows students to get insights about innovation and entrepreneurship, while also getting inspiration for new ideas and and how to make them real. Sean gave a presentation on intellectual property with specifics about patents, including provisional applications, what they should cover and when to think about them in the context of a start-up scenario. The audience was very involved, and there were some great questions as well as more specific discussions on patent law issues.
For more info on patents and intellectual property, please contact Sean Detweiler
‘Battle of the Forms’: Can it be won? 09/18/2014Posted by Morse, Barnes-Brown Pendleton in Licensing & Strategic Alliances, New Resources.
Tags: agreements, legal forms, SaaS, sale of goods, software, software license
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Often, in transactions between customers and vendors, each party has its own “boilerplate” terms and conditions that it wants to use, which of course are often quite different than the other party’s terms – a scenario referred to as “the battle of the forms”. So how does one know which terms govern the transaction? This presentation helps to sort it out.
Originally presented on 9/17/14, MBBP IP & Licensing attorney Mike Cavaretta touches upon the following:
- Sale of services vs. sale of goods
- Is software a service or good?
- Is a software license a sale of software?
- Electronic agreements
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Medical Development Group (MDG), an organization for professionals in the medical device industry, is hosting an upcoming forum event entitled “Intellectual Property Approaches to Safeguard Value”. MBBP IP and Licensing Attorney Stanley F. Chalvire will serve as one of the speakers of this forum event, which will generally be directed to intellectual property strategies for creating and preserving value of medical devices.
During the forum, some topics that Stan will address include:
- Trade Secrets and the protections they can provide
- Distinguish Trade Secrets and Patents
- Discuss Strategic Considerations to Maintain Trade Secrets
The event takes place at Constant Contact headquarters in Waltham, MA on Wednesday October 1st.
To register, please visit MDG Boston
OYO Sportstoys Featured on WBZ-TV 08/04/2014Posted by Morse, Barnes-Brown Pendleton in Client News, Licensing & Strategic Alliances.
Tags: acton, kinex, LEGO, licensing, mega blocks, MLB, NBA, NFL, NHL, oyo, OYO sportstoys
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MBBP client OYO Sportstoys, Inc. was recently featured on a segment of WBZ-TV discussing its factory in Acton, Massachusetts that is creating mini sports figures of famous athletes. OYO has licensing agreements with MLB, the NFL and the NHL which allows them to use the names of all players. They hope to get a deal with the NBA soon as well. OYO figures are compatible with other notable building block toys like Lego, Kinex, Mega Blocks and more. Each little OYO mini-figure is customized to look like the real player and gets a little water bottle and a football, baseball or hockey stick.
Check out the full video here: Acton Company Doing Big Business Making Little Plastic People
Tags: COPPA, FTC
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By: Faith Kasparian
On July 1, 2013, the amendments to the regulations that implement the Children’s Online Privacy Protection Act (COPPA) went into effect.
The COPPA Rule imposes requirements on operators of websites or online services (including apps) that are directed to children under the age of 13 or that have actual knowledge that they are collecting personal information online from a child under the age of 13. Among other COPPA Rule requirements, operators must provide notice to parents and obtain verifiable parental consent before collecting, using, or disclosing personal information from children under the age of 13. The amendments constitute the first major changes to the COPPA Rule since the Rule went into effect in 2000.
There are five important changes reflected in the COPPA amendments:
- Expanded Definitions
- Additional Methods for Obtaining Parental Consent
- Heightened Responsibilities on Operators
- Increased Oversight of Safe Harbor Programs
To learn more about these changes, please see the full article here.
Developing an app? Make sure you own it! 02/20/2013Posted by Morse, Barnes-Brown Pendleton in Games & Interactive Entertainment, Intellectual Property, Licensing & Strategic Alliances.
Tags: app development, ownership rights, phone apps
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On February 11th, Adobe published an article “Developing an app? Make sure you own it!” written by MBBP Licensing, Technology and IP Attorney Michael Cavaretta. Mike advises readers on precautions app developers should take in order to ensure their ownership rights are protected.
To read the full article, please visit the Adobe Developer Connection.
For more information on developing an app, feel free to contact Mike.