IP Claims Fail Against ISP for Merely Hosting Infringing Material

In a recent decision by the United States District Court for the Eastern District of Pennsylvania (ED Pa.), the court dismissed an individual author’s suit against Amazon for hosting an infringing copy of his copyrighted work. Parker v. Paypal, Inc., Civil Action No. 16-4786, 2017 WL 3508759 (E.D. Pa. Aug. 16, 2017).

THE FACTS

Plaintiff, Gordon Roy Parker, wrote a book entitled “Outfoxing the Foxes: How to Seduce the Women of Your Dreams,” for which he registered his copyright in 1998. In October 2015, he learned that his book was being sold online as part of an “anthology of books and articles written by and for pickup artists.” Id. at *2. He requested that the work be removed from the site – which appears to have occurred, at least for a time.

Several months later, in December 2015, he learned that sales of the anthology (including his copyrighted work) had resumed. In addition to seeking a take down of the book from this site, and to restricting the site’s access to its PayPal account, Parker notified Amazon.com, Inc. and Amazon Web Services, Inc. (collectively, “Amazon”) regarding Amazon’s hosting of the infringing work. (The Court’s opinion does not discuss any response by Amazon at this time.)

Parker alleges in his complaint that despite providing such notice to Amazon, the infringing work was still being hosted through Amazon’s cloud servers at least as late as Spring 2016.

In a May 2016 email, Parker told Jeff Bezos (CEO of Amazon) about the infringement and said that Parker was removing six of his titles from Amazon’s Kindle Books program. The distribution of his books through Kindle was undertaken under contract between Parker and Amazon. In response to Parker’s email, representatives of Amazon asked him to report potentially infringing material “consistent with the Digital Millennium Copyright Act.” Id. at *3. (Note: Within Amazon’s Conditions of Use Page, its “Notice and Procedure for Making Claims of Copyright Infringement” Section includes a link to an online form to report instances of infringement.)

AMAZON MOVED TO DISMISS THE CLAIMS

Amazon moved to dismiss Parker’s claims against it on the grounds that: (1) Parker failed to state a proper claim for copyright infringement or unfair competition as to Amazon; (2) Parker’s claim for breach of contract (based on the Kindle publishing agreement for seven of his e-books, including the infringed work) was pre-empted by the Copyright Act; and (3) the remaining claims for misappropriation of likeness and unjust enrichment are barred by the Communications Decency Act, 47 USC § 230 (“CDA”).

The Court agreed with Amazon’s analysis and dismissed Parker’s complaint as to Amazon. (Note that the case still proceeds with respect to other defendants.)
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Don’t Assume Post-Registration Invoices for Trademark Fees Are Legitimate

Yesterday, the U.S. Patent & Trademark Office (“USPTO”) and the Trademark Public Advisory Committee (“TPAC”) held a public roundtable on the topic of “Fraudulent and Misleading Solicitations to Trademark Owners” to discuss the pervasiveness of fake “invoices” being sent by third parties to trademark owners seeking to collect additional fees, while appearing to be official notices from the USPTO.  (See also Meeting Notice, 82 Fed. Reg. 29535 (June 29, 2017)).

However, these “invoices” are NOT official notices from the USPTO. Depending on the results of your due diligence (see below for “What Can You Do?”), disregarding them should not have a negative impact your trademark application or registration with the USPTO.  Continue reading

What do Barber Poles and Lapel Pins Have in Common?

Both can serve as examples of trademark use in connection with membership in an organization. In May, the Wall Street Journal reported on enforcement actions by the New Hampshire Board of Barbering, Cosmetology & Esthetics to fine the unauthorized use of a barber pole by a hair salon that did not have any barbers on staff. Jennifer Levitz, “Barber Poles Have Their Own Police Force, With Badges and Everything,Wall Street Journal (May 2, 2017) (subscription may be required). The article also reported on the enforcement actions by the Arizona State Board of Barbers carried out by their state inspectors against salons for unlawful displays of barber poles or its likeness, without a licensed barber on duty (a violation of the Arizona Administrative Code). Id.

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New Law Prohibits Non-Disparagement Provisions in Form Consumer Contracts

On December 14, 2016, President Obama signed into law H.R. 5111, a bill that prohibits companies from including within their standard form contracts with its consumers a non-disparagement clause that would prevent such customers from making any statements about the company’s products, services or employees. The Consumer Review Fairness Act of 2016 (“CRFA” or “the Act”) passed overwhelmingly in both the House and the Senate, garnering bipartisan support. See also House Debate, 162 Cong. Rec. H5295-H5298 (daily ed. Sept. 12, 2016) (statements upon introduction by bipartisan cosponsors). In fact, H.R. 5111 passed in the Senate, without amendment, on Unanimous Consent on November 28, 2016. See Senate Debate, 162 Cong. Rec. S6520 (daily ed. Nov. 28, 2016). Upon signing by the president, the Bill became Public Law No. 114-258.

Provisions and Application of CRFA

The law prohibits any “person” (which could be an individual or an entity) from “offer[ing] a form contract containing a provision described as void in subsection (b).” Id. §2 (c). Such provisions that are “void from the inception of the contract” include at least one of the following prohibited characteristics: Continue reading

USPTO Requests Comment on Draft Examination Guide for Matter “Incapable” of Registration

On January 25, 2017, the USPTO released its Draft Examination Guide on “Incapable Informational Matter” (“Draft Guide”) for public comment. As it has with several prior requests for comment about draft examination guides, the USPTO has requested interested parties to submit their comments electronically through the USPTO’s Idea Scale “Trademark Policy Collaboration Site.” Initially, the USPTO requested that comments be submitted no later than February 13, 2017 (Trademark Alert 1/25/17), but has since extend the deadline until March 15, 2017. (Trademark Alert 2/7/17). To date, no comments have been posted about the guide.

In its January 25 Alert, the USPTO explained the purpose of the Draft Guide:

“The types of wording held as merely informational by case law is growing. Marks that include such wording must be refused because they do not identify the source of the goods or services. Each section of this guide discusses a common category of informational matter and covers case law, analysis, and possible response options. This guidance is intended to promote consistency by clarifying examination policies and procedures.”

See Alert; see also February 13 Alert (same message with minor editorial changes). More particularly, the Draft Guide focuses primarily on refusals to register marks that fail to function as source indicators (in other words, instances where marks, or portions of marks, “fail[ ] to distinguish the applicant’s goods/services from those of others or to identify a single source” and which are thus not qualified to be registered as trademarks because they “fail to function as a mark.” Draft Guide at 1.

EXAMPLES OF MATTER THAT FAILS TO FUNCTION AS A MARK

The Draft Guide focused on three main categories of “informational matter” that are incapable of functioning as a trademark and thus is not registrable: matter that is 1) “used in a manner merely to convey information about the goods/services;” 2) a widely-used message; and 3) a “direct quotation, passage and/or citation from a religious text.” Highlights in each category will be addressed below.

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