Recommended Reading: Privacy Policies for Web Sites You Visit

by Christina Frangiosa

Most web sites have privacy policies that generally identify what the site does with your personal information once it is submitted to them. Depending on the purpose of the web site, these policies can be very involved (on sites that collect and retain your credit card information and/or Social Security Numbers) to very simple (on sites that collect very little of your personal data).

There are no hard-and-fast rules for what must be included in a privacy policy, and there is no minimum list of terms that must be included. In certain industries, however, federal law imposes disclosure requirements that require certain types of businesses to identify what they do with your personal information. For instance, financial institutions may be governed by the Gramm-Leach-Bliley Act (GLB), which generally places restrictions on the use of personal financial information, such as credit cards. Similarly, health care providers may be governed by Health Insurance Portability Accountability Act (HIPAA), which provides very detailed rules about the use of personal medical information. Web sites that are directed to children or could reasonably foresee a younger audience are required to comply with the Childrens’ Online Privacy Protection Act (COPPA), which significantly limits what personal information web site operators are permitted to collect and/or retain.

If an organization covered by federal laws such as these also provides a web site, their treatment of your personal information should be described in the privacy policy associated with the web site (or in the case of health care providers, they may hand you a hard-copy Notice of Privacy Practices when you visit their offices for treatment, which has a different purpose than online privacy policies).

In addition, the Federal Trade Commission (FTC) recently updated its guidelines identifying best practices for online advertising – which includes statements made in online privacy policies. FTC Staff Revises Online Behavioral Advertising Principles (2/2/09). It also provides a summary of best practices to be considered by web site operators. Privacy Policies: Say What You Mean and Mean What You Say (2/08). Among these guidelines is a simple instruction: if a web site posts a privacy policy, it must not violate the terms.

Violations of privacy policies have resulted in investigations initiated by the FTC, sometimes resulting in fines against the company for saying one thing in its privacy policy and then doing something completely different. See, for example, these summaries about FTC investigations and settlements: Sony BMG Music Settles Charges Its Music Fan Websites Violated the Children’s Online Privacy Protection Act (12/11/08); Online Apparel Retailer Settles FTC Charges That It Failed to Safeguard Consumers’ Sensitive Information, in Violation of Federal Law (1/17/08). In essence, privacy policies are considered to be a form of advertising, and therefore, must be truthful.

Evaluating Privacy Policies

You should understand that in some circumstances, the moment you visit a web site information about you (although perhaps not personally identifiable) can be collected automatically by the web site, including your computer’s IP address, the date and time of your visit, the number of times you have visited this particular site, and (sometimes) where else on the Internet you have visited. Then, you may be in a position to submit personal information to the site – perhaps your credit card in order to complete an online purchase, a home phone number, a mailing address, a birth date, updates to a wishlist or baby gift registry, etc.

At the very least, when you are faced with sending personal information about yourself to a web site, take a few minutes to find the privacy policy associated with that site and read it to find out what they will be doing with the information that you are about to give them. If you cannot understand the policy, or if you do not like what you are reading, perhaps reconsider whether you should give them your personal information. In an age where identity theft is common, it pays to be careful with such information.

You can also check to see whether the privacy policy has an “opt out” procedure that you can invoke if you do not want to permit that particular use of your information.

Selected Privacy Policies for Comparison*

BANKING SITES
Citibank; Republic First Bank; TD Bank; Wachovia Bank; WellsFargo

DRUG STORES (Prescriptions, Rebates)
CVS; Duane Reade; Rite Aid; Safeway

GOVERNMENT
Federal Trade Commission (FTC); Internal Revenue System (IRS); The White House; US Department of Commerce; US Department of Justice; US Patent & Trademark Office

MEDICAL SITES
Johns Hopkins Medicine; LabCorp; Mayo Clinic; Quest Diagnostics; WebMD

NEWS ORGANIZATIONS
ABC News; CNN; Fox News; MSNBC; NY Times; Wall Street Journal; Washington Post

SEARCH ENGINES
Ask.com; Bing; Google; Yahoo

SHOPPING SITES
Amazon; Barnes & Noble; LL Bean; Sears; Starbucks; Target; Wal-mart (a new policy will go into effect Aug. 23, 2009 – the link points to a series of privacy policies available through Wal-mart)

SOCIAL NETWORKING SITES
Facebook; LinkedIn; MySpace; Twitter

USER-GENERATED CONTENT (Photos, Videos)
Kodak EasyShare; Shutterfly; Snapfish; YouTube; Zazzle

FOREIGN SITES (with different legal requirements)
Agence-France Presse; BBC (see also Targeted Advertising Update (for users outside the UK only); The Economist; The Financial Times; World Intellectual Property Organization

* Note: By posting links to the privacy policies of the web sites identified above, I am not making any representations or endorsements about the value of the products or services provided by these sites or about the validity or enforceability of their privacy policies. These links were chosen somewhat randomly and are intended to serve as examples to show various ways to explain a site’s treatment of data collected from its visitors.

Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered

by Christina Frangiosa

Updating a prior post: Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation

On June 25, 2009, the TTAB issued another opinion in its “Fraud on the PTO” jurisprudence. Esprit IP Limited v. Mellbeck Ltd, Opposition No. 91189412 (TTAB June 25, 2009) [not precedential]. In this case, Applicant (Mellbeck) filed an application seeking trademark registration for the following goods:

Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Belts; Bibs not of cloth or paper; Caps; Children’s and infants’ cloth bibs; Children’s cloth eating bibs; Cloth bibs; Cloth bibs for adult diners; Cloth bibs for use by senior citizens or physically- or mentally-challenged persons; Cloth diapers; Clothing for wear in judo practices; Clothing for wear in wrestling games; Clothing, namely, arm warmers; Clothing, namely, folk costumes; Clothing, namely, hand-warmers; Clothing, namely, khakis; Clothing, namely, knee warmers; Clothing, namely, neck tubes; Clothing, namely, throbes [sic]; Clothing, namely, wrap-arounds; Corsets; Dusters; Foulards; Hoods; Infant and toddler one piece clothing; Infant cloth diapers; Jerseys; Leather belts; Mantles; Mufflers; Nondisposable cloth training pants; Paper hats for use as clothing items; Parts of clothing, namely, gussets for tights, gussets for stockings, gussets for bathing suits, gussets for underwear, gussets for leotards and gussets for footlets; Perspiration absorbent underwear clothing; Shifts; Short sets; Shoulder wraps; Swaddling clothes; Ties; Tops; Travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf; Triathlon clothing, namely, triathlon tights, triathlon shorts, triathlon singlets, triathlon shirts, triathlon suits; Underarm clothing shields; Wearable garments and clothing, namely, shirts; Wraps.

The application passed initial review by the Examining Attorney without Office Actions or Examiner’s Amendments, and was published for opposition on December 2, 2009. See Full File, including Notice of Publication dated November 12, 2008.

Opposition Filed

Esprit IP Limited (“Opposer”) opposed the application on March 23, 2009, alleging that it was filed fraudulently (among other claims) and requested that registration be refused. Notice of Opposition ¶ 21.

In its answer, Applicant conceded that it “does not sell in the US all of the apparel products listed in the application” for this mark. Answer ¶ 17 (admitting Opposer’s allegation on this point without modification).

Attempts to Modify the Description of Goods

Shortly thereafter, Opposer moved for judgment on the pleadings on several of its claims, including on the fraud claim. In response, Applicant responded to the motion, admitting its error in drafting the description of goods, and filed a motion to amend the description in an attempt to fix the problem. The amendment it requested was:

Clothing, namely, fleece jackets, t-shirts, ski masks, helmet liners, neck warmers, socks, thermal underwear, windcheaters, base-layers, thermal gloves, undersuits, longjohns, sweaters, [and] hats.

In general, the USPTO might accept a modification to the description of goods or services covered by a particular application, but only if the modification is narrower than the original filing; the USPTO will not accept a broader description or one that deviates completely from the original as filed. 37 C.F.R. § 2.71(a) (“The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.”) (emphasis added); TMEP § 1402.06. Should an applicant wish to obtain a registration for the mark as applied to goods or services beyond the original description, it may only do so by filing a new application to cover the new goods or new services.

Unfortunately for Applicant, however, both Opposer and the TTAB recognized that this modified description had only one product in common with the original description: hats. Opinion at 3-4. The rest of the description covered brand new products. The TTAB denied the motion to amend, rejecting the new expanded description, concluding that it was “unacceptable because it designates goods that are outside the scope of the identification as set forth in the application as filed.” Id. at 3 (citations omitted).

Reliance on Lack of Counsel to Defend Against the Fraud Claim

In attempting to change its description completely, Applicant lamented that it was “not represented by an attorney and has no prior experience in United States trademark matters” and therefore argued that it should be excused from liability for having submitted a completely false description of goods used in connection with the mark. Id. at 5. In prior cases, however, the TTAB expressly rejected an applicant’s attempt to rely on the advice of counsel, or to hide behind its lack of counsel, in an effort to avoid refusal/cancellation of its application/registration due to fraud. See Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172, 86 USPQ2d 1572 (TTAB Mar. 7, 2008) [precedential] (precluding client from relying on the advice of counsel as a defense to a fraud claim); Tequila Cazadores, S.A. De C.V. v. Tequila Centinela S.A. De C.V., Opposition No. 91125436 (TTAB Feb. 24, 2004) [not precedential] (refusing to recognize a defense of lack of counsel to a claim of fraud). Here, the TTAB held that “[t]he fact that applicant is a foreign entity that is representing itself without previous experience in United States trademark procedure cannot avoid a finding of fraud.” Opinion at 8.

Instead, it is incumbent upon applicants to be fully informed about the truth of their statements made under oath and to understand the implications of giving such a declaration in connection with their applications for trademark registration. See Hacehette Filipacchi Presse v. Elle Belle, LLC, Cancellation No. 92042991, 85 USPQ2d 1090 (TTAB Apr. 9, 2007) [precedential]; Hurley Int’l LLC v. Volta, Opposition No. 91158304, 82 USPQ2d 1339 (TTAB Jan. 23, 2007) [precedential].

TTAB Refused Registration

Ultimately, in the Esprit case, the TTAB found that “[b]y setting forth an identification of goods for more than fifty goods, when applicant was not using the mark on all of these goods, and indeed may have been actually using the mark only on one of those identified goods, applicant made a material misrepresentation of fact that the [USPTO] relied upon in determining applicant’s right to registration.” Opinion at 8. The TTAB granted Opposer’s motion for judgment on the pleadings and refused registration to Applicant. Id. at 9.

Lessons Learned

Finally, while this case may not be cited as precedent in other cases, it should suggest the following lessons for applicants: 1) descriptions of goods and services can only be narrowed during examination; 2) applicants cannot file applications based on “use in commerce” in connection with goods or services on which they have not actually used the mark in question; and 3) applicants cannot rely on the lack of counsel or claimed misunderstandings of the requirements of U.S. trademark law to avoid refusal or cancellation based on this doctrine.

Court Enters Order Banning Publication of Unauthorized Sequel to Catcher in the Rye

by Christina Frangiosa

Updating a prior posting: When is a Fictional Character Copyrightable?

On July 1, 2009, District Court Judge Deborah Batts entered an Order in the Salinger v. Fredrik Coulting, et al., No. 09-CV-5095 (S.D.N.Y.) case holding that the new book focused on Holden Caufield as a 76-year-old man did not fit within the narrow “fair use” exception to copyright infringement. (Copy of the complaint can be found here.) The order also preliminarily enjoins the sequel’s author (publishing under the pseudonym J.D. California) and publisher from “manufacturing, publishing, distributing, shipping, advertising, promoting, selling or otherwise disseminating any copy of 60 Years [the book] or any portion thereof, in or to the United States.” Order at 37. The injunction may become permanent following a full trial on the merits.

Essentially, the court rejected defendants’ arguments that the “sequel” was a parody commenting on the original work and on the nature of Holden Caufield’s character. Importantly for the analysis of whether fictional characters are separately copyrightable, the Court held that “Plaintiff possesses a valid Copyright in the novel The Catcher in the Rye, that the character of Holden Caulfield . . . is sufficiently delineated so that a claim for infringement will lie.” Opinion, at 2 (citations omitted).

The opinion also addresses in detail the fair use factors and whether any other part of the sequel could be considered an acceptable parody, and thus not a work infringing the original copyright.

Additional coverage of the opinion can be found in the following sources, among other places:

* Ashby Jones, “Holden Caulfield Stays Young: Salinger Wins Copyright Suit,” The Wall Street Journal’s Law Blog, July 1, 2009.

* Sewell Chan, Ruling for Salinger, “Judge Bans ‘Rye’ Sequel,” New York Times, July 1, 2009.

* Larry Neumeister, “Judge blocks publication of Salinger spinoff book,” Associated Press, July 1, 2009 (as published on FindLaw.com)

Copyright Protection Proposed for Fashion Designs

by Christina Frangiosa

Under current law, fashion designs and patterns are not protected from infringement by the Copyright Act. Instead, they are considered “useful designs” that are beyond the scope of the current Act. Recent legislation proposed in the House, however, seeks to change this by amending Chapter 13 of the Copyright Act and extend copyright protection for limited purposes and a limited term. Design Piracy Prohibition Act, H.R. 2196, 111th Congr. (proposed April 30, 2009).

Provisions of H.R. 2196

H.R. 2196 was proposed by Rep. William D. Delahunt (D-MA), and co-sponsored by 23 other members of the House. It proposes to amend 17 U.S.C. § 1301 (and following), and to extend limited protection to all clothing, including “undergarments, outerwear, gloves, footwear and headgear” as well as various accessories and luggage (namely “handbags, purses, wallets, duffel bags, suitcases, tote bags and belts”) and frames for eyeglasses. H.R. 2196 § 2(a)(2)(B).

Rather than providing blanket copyright protection as you might find for an original literary work (e.g., a book), this bill proposes that copyright protection would only last for three years beginning on the date of publication of the registration or the date on which the design is first made public, whichever is earlier. Id. § 2(d); 17 U.S.C. § 1304 (determining when protection begins). The bill defines an “infringing article” as one for which “the design . . . has been copied from a design protected under this chapter, or from an image thereof, without the consent of the owner of the protected design.” H.R. 2196 § 2(e). Importantly, however, the bill excludes the following from this definition: “an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture or similar medium.” Id. 2(e)(2). Presumably, these “copies” are permitted, at the least, for advertising or marketing purposes.

There is also a carve-out for designs that are independently created, reflect a “trend” or if they are “not closely and substantially similar in overall visual appearance to a protected design.” Id. A “trend” is further defined as “a newly popular concept, idea or principle expressed in, or as part of, a wide variety of designs of articles of appear that create an immediate amplified demand for articles of apparel embodying that concept, idea or principle.” Id. § 2(a)(2)(B).

Unlike other provisions in the Copyright Act, in order to obtain copyright protection for fashion designs, this bill requires an owner to apply for registration within six (6) months of making the design available to the public either in the U.S. or another country. Id. § 2(f)(1). Failure to apply for registration within that narrow window of time will eliminate the designer’s ability to sue under copyright law relating to copies of that specific design. Id.

The bill also anticipates that the Copyright Office would provide free public access to a database cataloging all of the fashion designs that have been registered under this provision. Id. § 2 (j); id. § 2(j)(a)(3). In order for this to be effective, owners must provide a “brief description of the design for purposes of matching the search criteria of the searchable database . . . [but this description] shall in no way limit the protection granted to the design or the subject matter of the registration.” Id. § (f)(3). The database will also contain a “substantially complete visual representation of all fashion designs submitted for registration under this chapter” as well as certain objective information. Id. § 2(j).

This bill also increase certain penalties for filing for protection inappropriately, so that the current statute would be revised to read: “Whoever knowingly makes a false representation materially affecting the rights obtainable under this chapter for the purpose of obtaining registration of a design under this chapter shall pay a penalty of not less than $5,000 [current amount is $500] and not more than $10,000 [current amount is $1,000], and any rights or privileges that individual may have in the design under this chapter shall be forfeited.” Id. § 2(h); see also 17 U.S.C. § 1327 (emphasis added).

If enacted, this bill would have immediate effect. Id. § 3.

Prior Proposals

In 2006, the Copyright Office presented a written statement to the House Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, explaining why the limitations proposed in the then-current bill (H.R. 5055, 109th Congr., 2d Sess., introduced March 30, 2006) might be acceptable. Statement, July 27, 2006. (“The Office believes that if Congress concludes that fashion design protection legislation should be enacted, H.R. 5055 provides a sound basis for balancing competing interests.”). For instance, the Copyright Office applauded the 3-year limitation to protection proposed by the bill:

“Because the peak demand for such [high-fashion] designs is relatively short-lived, a 3-year term is considered adequate to satisfy the designer’s reasonable expectation of exclusivity. . . . The Office applauds the proponents of fashion design legislation for seeking a modest term of protection that appears to be calibrated to address the period of time during which fashion designs are most at risk of being infringed and during which fashion designers are most likely be harmed by the sale of infringing goods. The Office would find it difficult to support fashion design legislation that offered such protection for the 10-year term enjoyed by vessel hull designs, but considers the 3-year term to be reasonable, assuming that the proponents of the legislation are able to make the case for protection.” Id.

The Statement outlines in detail prior proposals seeking protection for fashion and industrial designs, dating back to 1914. Id. Hearings were held about H.R. 5055 on July 27, 2006, but the bill was not enacted before the end of the session.

Current Status of H.R. 2196

Upon introduction on April 30, 2009, the bill was referred to the House Committee on the Judiciary.

When is a Fictional Character Copyrightable?

by Christina Frangiosa | 1 Comment

Until recently, there was no easy answer to this question, except to say, “it depends on how well defined the particular character is.” On June 17, 2009, however, a federal district court in New York considering J.D. Salinger’s motion for a temporary restraining order blocking the publication and distribution of a “sequel” to his 1951 classic Catcher in the Rye ruled from the bench during oral argument that the character of Holden Caulfield is copyrightable on its own. (The Court’s opinion is not yet available through PACER, although many articles have reported the nature of the Court’s opinion in granting the TRO; the formal opinion apparently will be filed within the next 10 days.) See, e.g., Ashby Jones, “Judge Halts Publication of ‘Catcher’ Sequel, For Now,” Wall Street Journal Law Blog, June 17, 2009.

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