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The Contours of Copyright #2: Can You Copyright Yoga Poses? 11/06/2015

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, New Resources.
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Attorney Howard ZaharoffBy Howard Zaharoff

Section 102 of the Copyright Act tells us that “choreographic works” – i.e., dances – are protected by copyright. So if you’re Alvin Ailey or Saroj Khan, the copyright police will protect you if someone copies or publicly performs your original choreography.

But what if you’re Beto Perez, who created Zumba; or Arnold Schwarzenegger (governor, actor, bodybuilder), who developed his own workout routines; or Bikram Choudhury (yoga guru and plaintiff), who in 1979 published a book describing his “Sequence,” 26 asanas and two breathing exercises performed for 90 minutes in a room heated to 105 °F? Does copyright protect original workouts or yoga sequences?

Probably not. At least according to the 9th Circuit in the recent case, Bikram’s Yoga College v. Evolation Yoga.

Discussion: Bikram Choudhury, self-proclaimed “Yogi to the stars,” was important in popularizing yoga in the U.S. He claimed he developed his Sequence after many years of research and verification, and he touted its many health and fitness benefits. But when two students who attended his 3-month teacher training started their own studio, offering a “hot yoga” class very similar to his Sequence, he sued for infringement.

The district court ruled that the Sequence was a “collection of facts and ideas” not entitled to copyright protection. Choudhury appealed and the Circuit Court upheld the lower court’s finding.

The Court first reasoned that the Sequence is “an idea, process or system designed to improve health” (Choudhury himself described his Sequence as a “system” or “method” designed to “systematically work every part of the body”). Since Section 102 of the Copyright Act is clear that copyright does not protect any idea, process or system, the Court easily concluded that the Sequence was an unprotectable idea or system. Put differently: “Choudhury thus attempts to secure copyright protection for a healing art,” an obvious no-no.

Nor does the grace and beauty embodied in the Sequence matter, since many processes can be beautiful –a surgeon’s movements, a baker’s kneading – without being copyrightable. In other words, “beauty is not a basis for copyright protection.”

The Court similarly dispensed with Choudhury’s argument that, even if individual yoga poses cannot be copyrighted, the original sequence of poses he developed is copyrightable as a “compilation,” that is, a work formed by “the collection and assembling of preexisting materials.” Not so, said the Court: because Choudhury himself claimed that “the medical and functional considerations at the heart of the Sequence compel the very selection and arrangement of poses and breathing exercises,” the entire Sequence, no less than the individual poses, is itself a process and “therefore ineligible for copyright protection.”

The final – and, as discussed below, least satisfying – part of the Court’s holding is that the Sequence cannot be protected as a “choreographic work.” The Court acknowledged that this term isn’t defined in the Copyright Act (though the legislative history makes clear that the term excludes “social dance steps and simple routines”). But that doesn’t matter, says the Court: “The Sequence is not copyrightable as a choreographic work for the same reason that it is not copyrightable as a compilation: it is an idea, process, or system to which copyright protection” may not extend.

The Court also noted that daily life consists of “many routinized physical movements, from brushing one’s teeth to pushing a lawnmower,” which could be characterized as forms of dance (by whom, the Court does not say). Only the idea/expression dichotomy prevents people from obtaining “monopoly rights over these functional physical sequences.” So at least in the 9thCircuit, arrangements of physical movements with a functional purpose, such as improving one’s health or fitness, no matter how aesthetic or beautiful, are merely unprotectable ideas or processes and therefore cannot be claimed as anyone’s copyright.

An Interlude for Copyright Aficionados: The Court’s final argument – that compilations of physical movements that “serve basic functional purposes” are unprotectable ideas/processes and not protectable choreography – begs the question. It’s cheating for a court to simply declare that a sequence of physical movements that functions as a means to health and fitness is thereby an uncopyrightable process without explaining why other sequenced movements that have similar fitness benefits are copyrightable choreography (which is surely true of the athletic choreographic routines of Alvin Ailey and Pilobulus).

Is it the functional purpose (or effect) of Choudhury’s sequence of poses – i.e., that despite their grace and beauty, they are particularly conducive to fitness – which makes the Sequence an uncopyrightable process? Why? Rarely does the functionality of a work completely deprive it of copyright. Even the designers of “useful articles” can claim copyright in any “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects.” If functionality were a copyright killer, architecture and software would have no protection.

Indeed, why not treat physical movements like architecture and software? Just as copyright law provides no protection for “individual standard features” of architectural works, or for standard routines and features of software applications, can’t we conclude that, although individual poses (or short sequences of poses) that are included in the Sequence and that are unoriginal, standard, or highly effective for fitness cannot be monopolized by copyright, the original overall selection and order of the poses can be deemed sufficiently original and aesthetic to qualify as copyrightable choreography?

In short, nothing in the Court’s opinion explains why the entire 28-step Sequence was ruled an unprotectable idea and no aspect or feature of these graceful movements could be deemed choreographic and copyrightable. This is not to say the Court is wrong. Rather, right or wrong, the Court failed to articulate any principles that distinguish movements constituting “a healing art” from movements constituting athletic dance.

Conclusion: Despite its unfortunate failure to provide a principled distinction between copyrightable choreography and uncopyrightable workouts, it remains undeniable that, in the 9th Circuit at least, there is no copyright protection for sequences of yoga poses intended to improve health and fitness, no matter how graceful or beautiful they may be.

Still, given the gaping hole left by this decision, and the popularity of fitness and yoga, it’s hard to imagine that the issue of copyrightable choreography won’t reappear soon. Or, as Arnold Schwarzenegger (as actor, not bodybuilder) might say: “I’ll be back.”

For more information on this topic, please contact Howard Zaharoff.

The Sweetest Trademark Cases of 2015 10/30/2015

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Legal Developments, New Resources.
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By Callie L. Pioli

In 2015 the U.S. Patent & Trademark Office (“USPTO”) received hundreds of thousands of trademark applications. While the USPTO did not face a scary number of cases in the candy and sweets industry, the ones that did appear addressed some very creative issues. As we prepare for this year’s Halloween and brace ourselves for the accompanying sugar-highs, we took a moment to trick-or-treat for the sweetest trademark cases of the year.

In re Kabushiki Kaisha Lawson

LawsonThe Japanese mega-brand Lawson filed with the USPTO to extend trademark protection covering its Uchi Café Sweets product line, currently registered in Japan. Lawson is a well-known operator of 便利店, “convenience stores” whose product lines epitomize the trend of cute, or kawaii, designs and objects common in Japanese culture and gaining popularity in the U.S. as well. Unfortunately for Lawson, UCHI had already been registered in the U.S. by Austin, Texas’s Uchi, a Japanese restaurant. Because of the similarity of the goods at hand, the USPTO declared that there is a likelihood of confusion among consumers as to the source of the confections, and accordingly denied registration.

In re Kristin Harris

GlutenIt is estimated that 1 of every 133 Americans suffers from Celiac disease; more still suffer from gluten-intolerance or gluten allergies. A great many delicious treats contain gluten-based sweeteners, such as barley malt, to sweeten the products (pure cocoa is devastatingly bitter.) Further, the tools and machinery used to harvest and process cocoa beans are often the same tools used to harvest and process wheat and other grains, creating cross-contamination issues for those with allergies. In response, entrepreneur KristAnn’s online store caters to those who are afflicted with Celiac disease, and offers shoppers the opportunity to purchase apparel and confections under the CELIABRATE (a combination of “celiac” and “celebrate”) brand. The issue that concerned USPTO was the use requirement. As trademarks are granted based on a mark’s use in commerce, a specimen demonstrating such use has to be submitted to the USPTO office during the registration process. In the specimen demonstrating use, KristAnn combined its mark with other phrases such as “Celiabrate Life,” “Celiabrate Love” and “Celiabrate Bliss.” The Examining Attorney felt that such combinations were inconsistent with the CELIABRATE mark for which KristAnn initially sought protection. Fortunately for KristAnn, the Trademark Trials & Appeals Board (“TTAB”) disagreed with the Examining Attorney based on the mark’s use with the variety of additional terms, as well as the mark’s independent significance. With the TTAB’s reversal of the Examining Attorney’s position, the mark will move on through the registration process and KristAnn may quite soon have another reason to Celiabrate!

In re August Storck KG


Have we gone 2far in our trans4mation of letters in common words? German candy company August Storck seemed to think it could push the boundaries a little farther. August Storck, known primarily in the U.S. for their brand “Werther’s Originals,” sought protection for its latest product in the candy market: “2good”. It is 2bad however that the mark “toogood” is already registered for use by the French distribution company Triumph Snat. The TTAB issued an opinion that, while not visually identical, the two marks were phonetically identical, and as the goods sought to be protected are substantially similar (though connoisseurs of German and French chocolate may disagree), there is a high likelihood of confusion between the two marks. August Storck was just 2 L8 this time.

For the rest of our list, click hereFor more information on trademark matters, please contact Callie Pioli.

MBBP Attorneys to Host Office Hours at TechSandBox 6/4/2015 06/03/2015

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Corporate, Events.
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IP and Technology Licensing Attorney Howard ZaharoffOn June 4th MBBP Attorneys Howard Zharoff and Daniele Ouellette Levy will host Office Hours at TechSandBox providing legal guidance on topics that include copyright, trademark and licensing work. These pro bono sessions give you access to experts in topics such as intellectual property, business formation, benefits, taxes, marketing, sales  funding, IT and technology commercialization. Access is offered to Members and Non-members as space allows.

Corporate Attorney Daniele Ouellette LevySign up today to reserve your time slot by visiting TechSandBox!



MBBP’s Sean Detweiler Presents at WIT Accelerate Bootcamp 10/14/2014

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, Licensing & Strategic Alliances, MBBP news.
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Patent Attorney Sean DetweilerLast 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


MBBP’s Joanna Brougher 2014 National Law Journal Rising Star 09/02/2014

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Intellectual Property, Life Sciences, MBBP news, Medical Devices.
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9-2-2014 10-08-43 AM MBBP’s Joanna Brougher was selected for the 2014 National Law Journal’s list of Boston’s Rising Stars. The National Law Journal Rising Stars program recognizes the region’s 40 most promising lawyers age 40 and under.  Joanna graduated from the University of Rochester with a B.S. in Microbiology, a B.A. in German, and a masters in public health. Joanna received her J.D. from Boston College Law School in 2008.  She is a biotech, pharma, medical device and intellectual property consultant, and is also a adjunct lecturer at Harvard School of Public Health where she teaches a course on intellectual property and health technologies.

Congrats, Joanna!

More info on Boston’s Rising Stars

Ten Crucial Questions to Answer Before Contacting a Patent Attorney 08/25/2014

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Intellectual Property, MBBP news.
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Managing Partner and Patent Attorney Lisa TreannieDon’t be fooled by the ads you see promoting the quick filing of a pat­ent application. MBBP’s Lisa Warren gives some insight on why it is important to communicate with a patent attorney when filing a patent application. By considering your invention and preparing the right questions before contacting an attorney, you’ll be sure to save valuable time and money. Are you fully prepared to file for your patent?

To read the full article

For more information on this topic, please contact Lisa Warren.

Howard Zaharoff Interviewed for HoGo Blog Piece 03/04/2014

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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IP and Technology Licensing Attorney Howard ZaharoffOn March 4 MBBP IP Technology and Licensing Attorney Howard Zaharoff was featured in a blog post by HoGo, a DRM (digital rights management) platform that lets users copy-protect, distribute and manage PDF files. The blog post titled “Ten Questions with… Howard Zaharoff (Part One)” shares his legal perspective on copyrights and copy protection with readers of HoGo Blog Confidential.

Visit HoGo to see the first half of Howard’s interview.

Please feel free to contact Howard with any of your own questions on IP and Copyright law.

Trends: Top 10 Intellectual Property Developments of 2013 02/10/2014

Posted by Morse, Barnes-Brown Pendleton in Client News, Intellectual Property, Legal Developments, New Resources.
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Top 10 Intellectual Property  Developments of 2013Looking back at 2013, there were many interesting developments in intellectual property. In an effort to keep our contacts and clients up-to-date with the most recent IP law changes and court decisions, MBBP has compiled our Top 10 Intellectual Property Developments of 2013:

  1. AIA Institutes “First Inventor to File” System
  2. Association for Molecular Pathology v. Myriad Genetics
  3. Bowman v. Monsanto
  4. Apple and Samsung
  5. Federal Trade Commission v. Actavis, Inc.
  6. Already, LLC v. Nike, Inc.
  7. Kirtsaeng v. John Wiley & Sons, Inc.
  8. The Authors Guild, Inc. v. Google, Inc.
  9. COPPA Rule Amendments
  10. New Top Level Domain Names

For more information on these developments, please view the full article here.

Changes To Implement the Patent Law Treaty 12/19/2013

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property.
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Patent Attorney Stan ChalvireBy: Stanley Chalvire

On Wednesday, December 18, 2013, new U.S. Patent and Trademark Office (USPTO) final rules addressing the implementation of the Patent Law Treaties Implementation Act of 2012 (PLTIA) took effect, revising the rules of practice pertaining to patent cases.  The final rule was issued on October 21, 2013 pursuant to title II of the PLTIA, which amends U.S. law to implement the provisions of the Patent Law Treaty (PLT). The PLT, an international treaty to which the U.S. is a signatory, aims to harmonize and streamline formal procedures pertaining to the filing and processing of patent applications.

Some of the final rule’s notable changes to U.S. patent law generally pertain to: (i) the restoration of patent rights following the unintentional abandonment of patent applications and the unintentional delay of the payment of certain fees; (ii) the restoration of foreign priority or domestic benefit claims after the expiration of the priority period; and (iii) the extension of the time periods for responding to certain USPTO communications.  A copy of the final rules can be accessed at 78 Fed. Reg. 62368.

For more information or to discuss the PLTIA or how the new rules affect your patents or patent applications, please contact Stan Chalvire.

Stanley Chalvire and Thomas Dunn Named Co-Chairs of MBBP Life Sciences Task Force 10/03/2013

Posted by Morse, Barnes-Brown Pendleton in Attorney News, MBBP news.
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On September 19th, MBBP announced that Intellectual Property Attorneys Stan Chalvire and Tom Dunn will be assuming the role of co-chairs of MBBP’s Life Sciences Task Force Committee, effective immediately. Stan and Tom had this to say of their appointment:

We would like to thank the former Chair of the MBBP’s Life Sciences Task Force, Lisa Treannie, Esq., for all of her valuable guidance, leadership and contributions to the Life Sciences Task Force over the past four years. We look forward to picking up where Lisa left off by helping to further deepen MBBP’s role as trusted counselors and strategic advisors to companies in the life sciences industry.

Congratulations Tom and Stan!

MBBP Welcomes Attorney Andrew M. Bunin 01/22/2013

Posted by Morse, Barnes-Brown Pendleton in Attorney News, MBBP news.
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Patent Attorney Andrew BuninMBBP is pleased to announce that Attorney Andrew M. Bunin has joined the firm as an associate. Andrew is a registered patent attorney practicing in all areas of intellectual property law including patent preparation and prosecution, trademark prosecution, and intellectual property portfolio management. Andrew specializes in a range of technologies including communication devices, nanotechnology, computer software and hardware, optics, medical devices, mechanical devices, electronics, and diagnostics. He has experience performing intellectual property analysis regarding patentability, freedom to operate, and infringement.

Prior to joining MBBP, Andrew practiced at an intellectual property specialty law firm in the Boston area. Andrew has in-house experience in the legal departments of a large corporation in the surgical field, a mid-size government contract company, and a biotech start-up company. Prior to his law career, Andrew worked as a Patent Examiner at the United States Patent and Trademark Office.

Andrew holds a B.S. in Biological Resources Engineering from the University of Maryland and a J.D. from Franklin Pierce Law Center (now University of New Hampshire School of Law). Currently, Andrew is pursuing certificates in Computer Engineering Technology and Electronics Technology as well as a degree in Electronic Engineering Technology from the University of Massachusetts-Lowell.

Please contact Andrew with any IP law questions.

Mike Cavaretta to Present at BBA Event: Game Publishing 2.0 11/08/2012

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MBBP Attorney Mike CavarettaOn Friday, November 16th the Boston Bar Association is hosting an event on Game Publishing 2.0 featuring MBBP Attorney Mike Cavaretta. Mike, co-chair of the Arts, Entertainment and Sports Law Committee of the Intellectual Property Section within the BBA, will discuss how the distribution and publishing of digital games has changed and how those changes influence agreements between game developers and publishers.

To learn more or to register for the event, please visit the BBA.

Mike Cavaretta Named BBA Arts, Entertainment, and Sports Law Committee Co-Chair 09/10/2012

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MBBP Attorney Mike CavarettaMBBP Attorney Mike Cavaretta has recently been selected as a Co-chair for the Arts, Entertainment and Sports Law Committee of the Intellectual Property Section within the BBA.

Mike represents information and technology businesses, including Internet, videogame and other interactive media companies, software companies, and entertainment and publishing companies. He is experienced in strategic alliances, intellectual property licenses, videogame development and publishing deals, technology development and distribution transactions, and trademark and copyright protection and registration.

Congratulations Mike!

For more information, please visit the Boston Bar Association.

MBBP Attorneys to Speak at 14th Annual NE IP Law Conference 2011 05/23/2011

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, Legal Developments.
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IP and Technology Licensing Attorney Howard ZaharoffOn June 16th, Massachusetts Continuing Legal Education (MCLE) is hosting the 14th Annual New England Intellectual Property Law Conference 2011, where attendees can get up-to-speed on trends and new developments that business lawyers and litigators need to know in the ever-changing field of intellectual property law. MBBP IP Licensing and Trademark Attorneys Howard Zaharoff and Faith Kasparian will be attending the conference as faculty members. Howard IP Licensing and Trademark Attorney Faith Kasparianis a program Co-Chair, while Faith will present an overview and update to the FTC’s New Privacy Framework.

For more information and to register for the conference, please visit MCLE.

For more information on intellectual property law, feel free to contact Howard or Faith.

Sheri Mason to be Panelist in CLE Session 04/28/2011

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Intellectual Property Attorney Sheri MasonOn Wednesday, May 11, MBBP IP Attorney Sheri Mason will sit as a panelist for a Boston Bar Association CLE seminar titled “In-Depth Planning for Artists and Art Collectors:A Foundation for Intellectual Property andTrusts & Estates Attorneys“. This program will provide helpful information for both trusts and estates lawyers and intellectual property lawyers who advise artists and art collectors. The panel will explore the commercial aspects of the art world and provide a foundation in the specific intellectual property and estate planning issues that affect artists and collectors.

This event is being sponsored by Arts, Entertainment, and Sports Law Committee of the Intellectual Property Law Section, the Trusts & Estates Section, and Volunteer Lawyers for the Arts.

For more information and to register for the seminar, please visit the Boston Bar Association.

Basic Considerations for Determining Whether to Rely on Patents or Trade Secrets to Protect Your Intellectual Property 01/31/2011

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Patent Attorney Stan ChalvireBy Stanley Chalvire

Patents and trade secrets both protect valuable information and technology, though each has distinct advantages and disadvantages. A patent grants the owner the right to exclude others from practicing the claimed invention for a limited time (in the U.S., 20 years from filing), in exchange for teaching the public how to make and use the claimed invention. Trade secret laws, on the other hand, protect information that derives value from not being generally known to the public. A decision of whether to rely on patents or trade secrecy must be made carefully, strategically and in consideration of business objectives. The decision will dictate enforcement rights and remedies, and may be scrutinized by business partners, investors and competitors. Several important factors should be considered.

One obvious consideration is whether the technology or information represents patentable subject matter and, if so, whether the likely scope of any patents that may issue will afford meaningful protection. This analysis may be informed by evaluating the closest prior art or by surveying the types of patent claims which competitors are relying upon to protect their intellectual property. To the extent that the anticipated scope of patent protection will be very narrow or allow competitors to easily design around the patent, patent protection may not be ideal.

Timing is also a critical consideration, especially for rapidly evolving technologies. Patent applications are formally examined and, although the time to issuance varies with the jurisdiction, the pendency of a patent application may approach four years or more in the United States depending on the technology. In contrast, no formal approval or examination is required for trade secret protection; rather, the owner need only maintain the secrecy of the information. Although there are mechanisms by which the prosecution of a patent application may be expedited, if the technology may become obsolete within a short period of time, patent protection may not be the best protection.

A fundamental premise of trade secret protection is that the information is not publicly known and that the information remains subject to reasonable efforts to maintain it in confidence. Trade secret laws will not prevent a third-party from independently developing the information or from reverse engineering publicly available products to learn the underlying information, nor will trade secret laws prevent the subsequent exploitation of information which was properly discovered. Accordingly, to determine whether trade secret protection is useful, one should consider the ease with which the information can be kept secret, as well as of the resources that must be devoted to maintaining its secrecy. Generally, reasonable efforts to maintain the secrecy of trade secret information includes restricting access to only those individuals who need to know the information to perform their duties, implementing appropriate employment agreements and security measures, and avoiding disclosures of the information except under appropriate non-disclosure agreements. To the extent that it is impractical or difficult to maintain the secrecy of the information, trade secret protection alone may not suffice.

The above factors (and others that your IP counsel can explain) should be considered in developing a comprehensive strategy to protect your company’s valuable technologies, processes and information. Often, a successful strategy will integrate both patents and trade secrets, as well as copyrights and trademarks. The early development of an intellectual property strategy and the periodic reassessment of that strategy in light of changing business objectives are key to protecting the valuable intellectual property assets of any company.

For more information on this topic, please contact Stan Chalvire.

Get An Agent Magazine Features Howard Zaharoff Article, “Before You Sign With an Agent” 05/13/2010

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IP and Technology Licensing Attorney Howard ZaharoffWriter’s Digest Guides has recently released its newest guide, Get An Agent, which covers such topics as the basics of publishing, how to submit your work and how to attract an agent. The 2010 Get An Agent includes an article written by MBBP Attorney Howard Zaharoff titled “Before You Sign With an Agent…”. The article advises writers on “how to negotiate terms that will benefit your writing — and make your agent work for you.”

To view the full article, please visit our Technology and IP Resources page.

For more information on IP and Technology Licensing, please contact Howard Zaharoff.


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