Archives for April 2016

New York Law Journal recently published an article discussing a copyright case involving pre-1972 sound recordings, available here. To recap:

Under current federal copyright law, music recorded after 1972 is entitled to certain protections, but it is unclear what, if any, protection is available for music recorded before 1972 under New York state law. While New York provides no statutory protection to owners of pre-1972 sound recordings, the U.S. Court of Appeals for the Second Circuit noted that the state’s common law provides certain rights to copyright holders in these recordings. The Second Circuit has asked the New York Court of Appeals to determine whether there is a right of public performance for creators of sound recordings under state law and if so, what the nature and scope of that right is. The Second Circuit stated that it needed clear guidance from the New York Court of Appeals to decide whether copyright holders of pre-1972 recordings could bar broadcast of their materials, which could force broadcasters to pay royalties for a multitude of pre-1972 recordings by artists like the Beatles and the Rolling Stones.

Should a personal injury plaintiff be compelled to give a court unlimited access to her Facebook account? According to the Appellate Division, First Department, the answer is no, but a dissenting opinion calls for a reevaluation of the Court’s decisions on this subject.

In Forman v. Henkin, 134 A.D.3d 529 (1^st Dep’t 2015), the plaintiff alleged that she suffered injuries limiting her from doing various activities. She testified at her deposition that she used a Facebook account before the accident, but deactivated it after she started her lawsuit. The defendant moved for an order compelling the plaintiff to provide access to her Facebook account, including all photographs, status updates, and instant messages. The lower court ordered the plaintiff to produce all photographs of herself privately posted before the accident that she intended to use at trial, and all photographs taken after the accident that did not depict nudity or romantic encounters. She was also directed to include the number of words and characters in her private messages.

The Appellate Division modified the lower court order, finding that only photographs that the plaintiff intended to present to the jury at trial had to be disclosed. The defendant had not demonstrated his right to plaintiff’s nonpublic Facebook pictures or messages. The First Department and other Appellate Division Departments have required that a defendant requesting social media information must establish the relevancy of the requested disclosure before allowing discovery in this area. The plaintiff’s uploading of pictures or mere messages to other Facebook users did not meet this threshold of relevance.

The dissent recognized that the court’s prior recent decisions supported the majority opinion, but noted that the precedent relied upon is only a few years old. It recommended that the court reevaluate its precedent since social networking practices are still developing. The dissent was particularly concerned with the threshold requirement that the defendant could acquire nonpublic material shared on personal social networking sites if and only if he found something in the plaintiff’s public posts that contradicted her claims, which often requires judges to conduct an in-camera review to determine which posts are relevant. The in-camera review imposes a considerable burden on trial courts, which will only intensify as more and more people use social media sites. The dissent argued that a demand for social media posts, relevant to the issues raised in the case, would be consistent with the the traditional rules of discovery.

WWD recently published an article exploring the importance of hashtags and trademark protection to retailers, available here. To recap:

Brands often use hashtags for their marketing campaigns. For example, Madewell’s #everydaymadewell, Hudson’s #letyourselfgo, and Revolve’s #revolveme encourage ongoing conversations between retailers and their customers. Because hashtags invite customer interactions, brands also recognize that hashtags can be valuable digital properties and are increasingly seeking protection for them.

The United States allows companies to register a hashtag with the USPTO if it functions as an identifier of the source of the brand’s goods or services. According to a recent Thomson Reuters report, “#CanWeTrademarkIt?,” the USPTO received 1,398 trademark applications for hashtagged terms last year, up from just seven in 2010. The study notes that clothing, footwear, and headgear are the most common classification of good and services with trademarked hashtags, with more than 800 so far. According to the author of the study, by registering their hashtags for trademark protection, brands have legal recourse against wrongful use of those trademarks by other parties using them for commercial gain. He also notes that brands aren’t likely to trademark every hashtag they use, due to the cost of registering, the time it takes, and the global reach of social media.

To see what Castaybert PLLC can do for you in terms of Intellectual Property Law, click here.

Trademarks help customers identify the source of a product or service. Although trademarks help prevent consumer confusion, start-ups often have misunderstandings about the process or trademark law. Westfair Online recently published an article about the common misconceptions about trademarks, available here. To summarize:

Contrary to popular belief, companies should NOT adopt a mark that tells consumers exactly what they are buying. Trademark laws do not allow companies to register a new name that merely describes a feature or function of the product.
- Although some famous trademarks use descriptive names, they are exceptions. For example, Food Network is a descriptive name, but Food Network has also developed recognition. It ordinarily takes several years of use and millions of dollars in advertising and sales before a descriptive term is entitled to registration.
- If a company wants to protect its name against use, it shouldn’t use a descriptive name, unless it is prepared to put the time and money into achieving widespread recognition.
Just because the USPTO approves an application does not eliminate any trademark risk. The office examines whether there is a likelihood of confusion only with earlier active applications and registrations.
Companies do not have to identify every possible item they may sell or service they may provide to adequately protect their mark. Overbroad coverage has several downsides, such as a more expensive application, an increased possibility of conflict with third-party marks, and an application vulnerable to attack by others on the ground of fraud. In most cases, a narrowly-tailored application should still protect the mark for closely-related goods.
That said, companies should provide complete descriptions when filing to avoid inquiry or objection by the USPTO. Trademark applicants should indicate whether the mark has any meaning or significance in connection with the goods or services, translate any foreign wording in the mark, and describe the features of any design elements. Failing to answer questions thoroughly when filing may ultimately make an application more expensive and delay issuance of the registration.

To see what Castaybert PLLC can do for you in terms of Intellectual Property Law, click here.

Art insurance is essential for any art collector because it safeguards both the investments in art and the artworks themselves. It also protects both the current owner and future owners. The Clarion List recently published a useful reminder about the importance of art insurance, available here. To summarize:

Specialized art insurance is best evaluated on a case-by-case basis but often has advantages over simply including your collection in your regular homeowners or renters policy. Factors to consider are the overall value of your collection, the value of individual works, and what the specific policy offers.
Although insurance cannot replace a one-of-a-kind work of art, it can help you rebuild or restore your collection after a calamity.
An insurance policy may also be cheaper than paying a conservator to restore damaged art after a disaster.
If artwork is stolen, destroyed, or damaged beyond repair, an insurance policy may allow you to purchase a comparably valued work of art. Although this solution may not restore your original artwork, it provides the option to buy a comparable work.

To learn more about the Art Law Practice at CASTAYBERT PLLC, click here.

April 6, 2016 – André Castaybert, principal attorney at CASTAYBERT PLLC, has received a 2016 Martindale Hubbell peer review AV rating of “Preeminent” in ethical standards and legal ability for the past two years.

April 5, 2016 – André Castaybert has received over 200K views of his Fashion Law, Intellectual Property and Art Law curated content on Scoop It. Using Scoop It, André is able to keep himself and his clients and other followers informed about the very latest news affecting these fast moving industries.

André’s Fashion Law and Business Scoops now have 1017 regular followers. His Art Law content has 929 followers, and his IP, Copyright, Trademark, and Advertising content has 303 followers. Visit André’s Scoop It home page here.

To learn more about CASTAYBERT PLLC’s IP practice, click here.

To learn more about the firm’s Art Law practice, click here.

To learn more about the firm’s Fashion Law practice, click here.

In the February 2016 edition of WIPO Magazine, CREATe’s Pamela Passman shared “eight steps to secure trade secrets,” available here. To summarize:

Implement business procedures to reinforce non-disclosure agreements. A company’s overall corporate policy is essential for maintaining confidentiality as evidence that it protects trade secrets.
Control physical and electronic access. Courts are increasingly requiring this, and companies should regularly assess and update their systems.
Identify, assess and take steps to manage risks. Trade secrets should be documented in an internal registry, and an assessment of the risks should be made in the event that they are stolen.
Create supply chain procedures and plans. Since third parties can have access to a company’s trade secrets for manufacturing, product development, or other collaborations, it is important to have processes in place to protect confidential assets.
Conduct employee and vendor training so both groups know what is considered confidential information and what is expected of them when handling such information.
Establish a cross-functional team with representation from those who can ensure that trade secret protection policies are being followed.
Make continual improvements. Trade secret protection is an ongoing process, and efforts and procedures should be monitored and updated annually to ensure compliance.
Make trade secret protection a priority. By boosting security and implementing procedures to ensure trade secret protection, companies mitigate risks and show courts that they have taken reasonable steps to protect confidential corporate assets in the event that trade secrets are compromised.

To learn more about what CASTAYBERT PLLC can do for you in terms of trade secret protection, click here.