Copyright Office Modernizes Registration Under DMCA

Any company operating a website that is unsure whether all the content on it is its own copyrighted material should have an Agent registered under the Digital Millennium Copyright Act (“DMCA”). At long last, registering an Agent no longer involves a process out of the 1950s with a filing fee well out line with its benefit. Filing is now done online and the fee is minimal.

The DMCA provides safe harbors from copyright infringement liability for online service providers and websites that allow users to post or store material on their systems, or, perhaps, have material on their sites of questionable copyright origin. If a DMCA Agent is registered, then the agent must be the one to receive notifications of claimed copyright infringement. After notice, the website has a short time to determine if the objected to material is infringing another’s copyright, but no law suit can be brought during this time period, and if the material is removed, no suit can be brought at all.

In December 2016, the Office introduced an online registration system and electronically generated directory to replace the Office’s old paper-based system and directory. Accordingly, the Office no longer accepts paper designations.

Until  December 31, 2017, Agents who were appointed under the old paper-based system are still valid agents. For the time being, the Copyright Office is maintaining two lists of Agents, but after that date, all Agents need to be appointed electronically. Knull PC is contacting clients for whom it has been Agent under the paper system to ask if they want this update.

Protecting Beer Brands: A Trademark Strategy for Brewers

By Chuck Knull

I have spent a great deal of time as a lawyer helping brewers keep their brands from encroachers.  There are numerous ways that the brand names and trade dress of one beer can cross over into the territory of another beer brand.  As a result, a bartender in a dimly lit bar may pick the wrong bottle out of the cooler for a patron, or a soused patron might slur out an order one brand when intending another. Things like this have plagued the larger brewers for ages. Hence, specially colored and shaped bottles, and distinctive cans are often used by them.

Add to this the confusion of restaurants and pubs, which may have names close to the names of beers,  serving their own mini-brews and the problem gets bigger.  Now, with a multitude of local breweries growing and expanding in the U.S., the possibility is growing of one brewery’s “Red Ale” looking and sounding a lot like the “Red Ale” from another brewery that used to have a territory far enough away to make no difference. As we have reviewed the nation we have noted that a lot of growing local breweries need to step up the level of protection for their brands.  Otherwise, they may face expensive and uncertain litigation in the future.

I have written about the problem of relying on the TTB Certificate of Label Approval. A COLA IS NOT BRAND PROTECTION. My discussion is intended to offer a roadmap to actual brand protection using the Federal Lanham Trademark Act and related legislation to obtain concrete protection. The primary methods of obtaining protection for your brands must, of course, depend on individual budgets, but a growing brewer must not stint on brand protection or it will very possibly run into boundaries that it will not be able to cross over.

The aim of any brewer of beer should be to make sure that when a customer orders its beer, it gets its beer. The aim of branding is to be sure that all potential customers know about one’s brands. The way one does both of these things is by adopting a brand strategy.  Below is an aggressive strategy such as the ones that I have helped large, multi-national brewers carry out. Select from this list in a generous way and implement each selection.

Trademark Registrations Are Territorial

Except for a very few, absolutely famous trademarks, a trademark registration will not provide trademark rights beyond the jurisdiction providing the registration.  There are great stories in trademark law about people visiting foreign countries, seeing a nice product with a nice mark connected to it, and taking the entire concept of the product and mark to another country and, more or less, cloning the product.  Later, the originator decides to move into the same country and finds that it has no rights to use its trademark there.  Trademark registrations are territorial.

I have had some interesting cases showing such twists and turns. I represented a Dutch milk (not beer) coop which had made a popular condensed milk product in Vietnam (used to make wonderful Vietnamese coffee). The mark had been expropriated by the Communist Vietnamese government.  But Vietnamese immigrants to the USA demanded the product and the former managers of the Vietnamese subsidiary who were among these immigrants developed the brand in the US under the authority of the Dutch Coop.

When Vietnam went capitalist, the milk company which had evolved out of the seizure from the Dutch tried to bring into the US a close version of the Dutch product already here.  It lost in court.

Another situation causing great agitation for AmBev, the owner of the Budweiser beer brand, involves prior use of Budweiser by European brewers blocking attempts by AmBev to obtain Common Market trademark registrations (and a reverse situation where the Czech owner of perhaps the oldest Budweiser trademark must change its brandname for its been when it sells into the United States).

Strategic Trademark Registration

  1. Obtain trademark registrations for each beer brand in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.
  2. Obtain a trademark registration for one’s House Mark in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.  I have previously written about House Marks.
  3. Obtain trademark registrations for each beer and can label (including all colors and graphics) in each country where the beer will be sold, because trademark rights are territorial.  An advanced trademark program is going to be concerned with look alike labels.  It is too easy for a bartender or consumer to pick up the wrong bottle, can or six pack if the labels are too similar.  A few mistakes and the brewer that has simulated the popular label will find its sales increasing.
  4. Obtain whatever protection is available for any special bottle or can colors and shapes. In the U.S., such protection is generally available through trademarks. In other countries, special design protection is available.
  5. Obtain trademark registrations for slogans used in advertising your beers.A good slogan can enhance even a one trademark brewery’s house brand mark. Some old standards are listed below:- The Beer that Made Milwaukee Famous (Schlitz)
    – The Champagne of Bottled Beer (Miller)
    – It’s All About the Beer (Heineken)Check out more great beer slogans here.
  6. Make appropriate trademark applications for goods distributed to bars and restaurants, such as signage, glassware, coasters, and for any items that are sold or licensed for sale, such as T-shirts with beer labels on them.

Many of the worst experiences that brewers face are caused by t-shirt companies printing what they consider to be parody t-shirts featuring pictures of beer cans or bottles along with statements like “I only drink

[name of beer] when I want to get blasted.”  Alcohol is a highly regulated business and the government frowns upon statements about beverages that imply potency, drunkeness, and the like.

A brewer should want nothing to do with such “parody” and the first step is to apply for trademark applications for the types of goods that might be bothersome.

Copyright Registrations Support Your Trademarks

  1. Depending upon how original and artistic one’s labels are, it may be possible to apply for and register copyright in the labels. Timely registrations can provide clout against competitors who copy too closely other’s labels.  Learn more about why applying for copyright registration is a good idea here.
  2. Company websites and advertising materials should be subject to periodic copyright applications and registration.

Police Trademarks to Stop Problems Early

  1. Review and dispute domain names containing house mark or brand marks or similar
  2. Have your trademark lawyers proactively watch your marks or employ a trademark watch service for USPTO applications for alcoholic and non-alcoholic beverages, restaurants and bars, and foods such as cheese and snacks; oppose similar names.
  3. Monitor Twitter, Facebook, etc. for derogatory comments about brands and take action by complaining to these services and/or referring to your lawyers.
  4. Check for new COLA filings for alcoholic beverages to assure that no similar names to your brands are applied for in COLA filings.  Small breweries, distilleries and wineries may never do anything beyond a COLA filing. Timely cease and desist letters can stop the use of similar names.  We have discussed why reliance upon a COLA alone is not a brand protection program.
  5. An owner of a registered trademark can file with U.S. Customs to prevent counterfeit or unauthorized imports of trademarked goods. Entry of such goods, when they are alcoholic beverages, is less of a problem than with some other goods.
  6. Review competitor advertising for misrepresentations of your brands or false or misleading claims as to their own brands. Take action if necessary.

Why Should I Apply for a Copyright Sooner Rather Than Later?

By Chuck Knull

Making your company’s products or services appear special and different from the competition involves branding. Branding involves the use of trademarks to identify the source of products. Protecting your brand also requires careful attention to the protection available under copyright laws, as copyright protection can enhance trademark protection.

The Federal Copyright Act protects the “original expression” of an idea or ideas when such expression is “fixed”, that is, when it is printed, painted, recorded or filmed. The ideas themselves are not protected by copyright.

Anybody making or marketing consumer products must seriously consider registering copyrighted material such as the text and illustrations of a web site, posters, print advertising, website videos, infomercial recordings, the labels on the goods and its packaging, and any instructional or informational material packed with products or offered as handouts.
The owner of a copyright has the right to prevent (by injunction) others from copying, distributing and otherwise using the copyrighted material. If the copyright owner has made a timely filing of an application for registration of the material with the U.S. Copyright Office, the copyright owner can also recover “statutory damages” (in practice, a form of punitive damages) and its own attorney fees from the infringer. Thus, as a simple infringement might not carry much in the way of monetary damages with it, a person who makes timely registrations of its material can make it extraordinarily costly for anyone to copy such material.

Since people bent on borrowing a company’s good will by trading on another’s trademarks ordinarily don’t mind also borrowing packaging, web site text, or instructional inserts. Why do the work when it is so easy digitally to copy? Having registered copyrights, combined with a trademark infringement suit, can obliterate such an infringer. An application for copyright registration is a simple document to complete, can be done on line, and the government filing fees start is only $35.00. Few protective actions are as cost-effective and simple to do.

For example, Company C owned the trademark registration for MIGHTY GOAT for a very successful goat milk soap made with the milk from our famous Catskill goats that bodybuilders can use to wash the oil off their bodies after competition. It has also registered the wrapper design and the product information sheet of its product at the U.S. Copyright Office. Company Y comes out with a competing soap called MIGHTY SHEEP that it claims is “compare to MIGHTY GOAT.” Company Y also copies the text of Company C’s product information sheet inserted in the product box. A court finds that using “compare to MIGHTY GOAT is permitted even though Company Y’s soap has sheep milk in it. But it also finds that the product information sheet was a copyright infringement, and awards the owner of MIGHTY GOAT statutory damages of $100,000 plus its attorney fees (no small sum, since it had laid out $40,000 to its lawyers.) On the hand, if Company C had not timely registered its copyright. All the Court can award in this situation is actual damages of $100 for the reasonable licensing fees for the infringing information sheets. No attorney fees.

A couple of examples from my real life practice also show how this works.

A while ago, I had a client discover that photographs of its products were appearing on another website that was offering the products at substantially reduced prices. We could not be sure if the products were actually sold there, or whether the website used the products as a “bait and switch” and would ship substitutes if my client’s were ordered. The business did regularly register copyright in its website including such photos, so we were able to get the photos and the products taken off. The fact that we had the registrations acted a sledgehammer to make our point. Had we not had it, the pictures might still be up. The fact that the materials were registered for copyright before the commencement of the lawsuit made any fight by the infringers a bad tactic as it stood to pay all its own legal fees and also fund our legal fees during such fight.

On the other hand, I also helped a client who had been wrongfully sued for copyright infringement by a software program owner who claimed that the client was using its program without a license and thus infringing copyright. The program owner claimed that its was owed statutory damages and its attorneys for this infringement, but we were able to establish early in the case that the program owner had not applied to register the copyright until right before it brought the law suit. We convinced the judge to knock out the claims for these extra penalties in a summary judgment motion, which left the program owner with a small claim for lost license fees. When it could not prove any infringement at trial, our client was vindicated. However, had the program owner actually registered its copyright at the right time, my client might have been forced to settle for a large payment rather than fight the case and risk not convincing the court that it had not infringed.