What You Need to Know About the CASE Act

The CASE Act of 2020 establishes a new Copyright Claims Board (“CCB”) to hear infringement, noninfringement and misrepresentation claims which meet certain criteria.  Generally, the Act provides a less expensive method for harmed parties to assert copyright claims short of filing in federal court.

Remedies available include actual damages and profits, statutory damages and injunctive relief.  Works timely registered with the Copyright Office are eligible for an award of statutory damages of up to $15,000 for each infringed work.  Statutory damages for timely registered works may not exceed $30,000 in any single proceeding.  Works considered not timely registered are eligible for statutory damages of $7,500 per infringed work, not to exceed, however, $15,000 in any single proceeding.  For both timely and not timely registered works, statutory awards limitations are exclusive of attorneys’ fees and costs.

Claimants must file an application to register the allegedly infringed work prior to filing with the CCB. Although issuance of a copyright registration certificate is NOT required to initially file, registration IS required for damages to be awarded.

 

Why does it matter?

Lower value small claims may now be asserted more easily.  For those seeking small licensing fees for use of their works or wishing to represent themselves, the CASE Act will help.

The CCB will be staffed with attorneys who may be available to help claimants evaluate or state their claim.  This may allow certain claimants to file on their own without hiring a personal attorney; it should be noted, however, that CCB staff attorneys may or may not provide more than general guidance to the claimant and may or may not be available when needed.

Defendants/Respondents in CCB claims have the right to opt out of the proceedings (within 60 days) and to instead have the claim heard in federal court.  If so, the claimant will have wasted time filing with the CCB and will still need to move forward in federal court, which will benefit large corporate defendants.

 

What to do?

  1. Get Registered. To take full advantage of the CCB statutory damages awards, copyrighted works need to be timely registered.
  2. Audit Content and Contracts. Don’t be an easy target for claims, meaning, review content and related contracts to ensure proper licensing or originality of content and add a layer of indemnity to contracts before small claimants can take advantage of new easier filing of copyright complaints against you.

 

 

– Pam Gavin & Elizabeth Sewell

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Copyright Registration for Short Online Literary Works

The Copyright Office recently implemented a new method of group registration for short online works that simplifies the registration process and provides a much more cost-effective path to protection.  This development offers a great opportunity for bloggers and other authors that frequently publish online content, who may not have previously considered copyright protection due to effort and expense, to obtain protection for their works.  The Group Registration for Short Online Literary Works (GRTX) allows authors to simultaneously register between two and fifty works.

To be eligible for the GRTX process, the relevant works must be:

  • Published for the first time online;
  • Between 50 and 17,500 words;
  • Published during the same 3-month period; and
  • Written or co-written by the same author or joint author.

The process is primarily for those who regularly publish content online, for example with social media posts, articles, and blogs.  The protection conferred only applies to the text of the work, so the GRTX is not suitable for images, videos, audiobooks, or computer programs.  Works made for hire are also not eligible for GRTX.

A major benefit of the GRTX is its ability to save copyright owner’s money.  For a Copyright Office fee of only $65,[1] authors using the GRTX can register up to fifty works.  Before the GRTX, clients would have spent more than $3,000 in government fees to register and protect the same volume of works in separate applications.  The new filing also helps to accelerate the registration process for online content creators who would likely have spent much more time and effort on registering their many publications separately before the GRTX.

If you are interested in developing a copyright protection strategy for your creative works, please feel free to reach out to us for more information on the process and associated fees.

-Jamie Seibert

[1] Please note, this fee represents only the government filing fee at the Copyright Office, and not any associated legal fees if you hire an attorney to represent you in connection with strategizing and filing for copyright protection.

IP Rights in Halloween Costumes

When I was growing up, I, like many children, wore homemade costumes of my favorite characters for Halloween – saving my parents money versus the store-bought alternatives, but certainly costing my mother time.  With a rise in intellectual property protection efforts by companies large and small in recent years, you may be wondering if your handmade creations might put you at risk for an infringement claim from one of the more over-zealous intellectual property enforcers (here’s looking at you, Disney).  As a lawyer, I am nigh physically incapable of saying “have no fear,” but I think I’m comfortable with a reassuring “have very little fear!”

The four areas of intellectual property protection that could apply to a Halloween costume are publicity rights and trademark, copyright, and patent protection.  I will address each in turn:

Publicity Rights

Should your costume include elements that could be used to identify a particular person, you may be violating such person’s publicity rights.  For example, a costume of Albert Einstein was the subject of a publicity rights lawsuit in 2010.  Publicity rights laws vary from state to state, and typically prevent unauthorized reproduction or use of a person’s likeness (which may include name, image, portrait, picture, signature, or other identifying elements) for commercial or advertising purposes.  The purpose of such laws is to prevent unauthorized parties from trading off the likeness of others without fair compensation.  Therefore, unless you plan on using your homemade costume in an advertising (e.g. in an advertisement for your small business) or commercial (e.g. manufacturing, producing, or selling your costumes) sense, you are likely not at risk for violating your costume subject’s publicity rights.

Trademark

Trademark owners have an affirmative duty to police their marks against unauthorized use by a third party.  However, trademarks by their definition are used as source identifiers for goods or services being sold in commerce.  Like the commercial and advertising aspects discussed above regarding publicity rights, trademark protection seeks to prevent parties from benefiting or trading off the trademarks of others for financial or reputational gain.  Thus, recreating a protected design, logo, image, etc. in a homemade costume that will be used for personal use only (and likely for one night only), presents very minimal risk of liability for trademark infringement.

Copyright

Unlike publicity rights and trademark laws, federal copyright protection extends to any reproduction of a protected work.  However, the Copyright Act specifically carves out exceptions for “fair use” reproductions.  Surprisingly, Halloween costumes are not directly addressed; however, the statutory factors to be considered in determining whether or not a fair use exception applies include “the purpose and character of the use, including whether such use is of a commercial purpose;” and, “the effect of the use on the potential market for or value of the copyrighted work.”  17 U.S.C. § 107(1), (4).  Again, the law focuses on commercial, rather than personal, use of the potentially infringing work.  Also, practically speaking, damages in many copyright claims are based on lost profits to the copyright owner, meaning sales of the infringing work that should be attributed to the rightful copyright holder.  Again, so long as your costume is made and used for your or your family’s personal use only, your use of the copyrighted material is very likely a “fair use.”

Patent

Patents prohibit any recreation of the patented design and, in general, apply to innovative designs.  This may sometimes apply to costumes.  For example, a patent exists for a costume that can be modified for comfort according to the outside temperature.  The U.S. laws concerning patents also consider what are known as “design patents.”  Design patents lack the exception of fair use but are only in effect for fourteen (14) years, and only protect unique and original designs separate and apart from a functional aspect of a costume.  This mains that no one can have a patent on a purple suit, but could have a design patent on a distinctive and ornamental patterned suit.  While it is unlikely that your recreated costume would run afoul of a design patent, the possibility is higher than in the other areas discussed above, particularly as there is no exception or commercial requirement.  The practical risk is even lower, as patent owners are unlikely to be patrolling neighborhoods (outside of their own trick-or-treating efforts) looking for infringers.  Furthermore, design patents are not the preferred method of protection in many cases, as the protection expires after a much shorter period (consider the fact that patent protection for designs is only 14 years, versus the “lifetime of author plus 75 years” protection applied to copyrights).

Conclusion

Avoid the urge to market, mass produce, and sell your wonderful homemade “wears” and devote the energy you may have used worrying about infringing on Marvel’s intellectual property to how many candy corns you can fit in your mouth at one time!  This author is pro-candy corn, but if that offends you to your core, consider Skittles and/or M&Ms instead.  Happy Halloween!

-Fred Freeman, Esq.

U.S. Supreme Court decision may impact your copyright registration strategy

 

The U.S. Supreme Court ruled last week that copyright owners may now only file suit only after a copyright registration issues for the work in question. This ruling reverses the view previously held in certain federal circuits, including the 4th Circuit, which includes Virginia.

Because the copyright registration process can prove lengthy, we recommend that copyright owners file to register valuable works as soon as possible after creation in order to take legal action expeditiously when the need arises.

For further information regarding registration of your copyright-able works and/or the benefits of registration, please feel free to contact us.