Author: Thomas James

Formally known as Thomas B. James or Thomas James, Tom James is an attorney at the Law Office of Tom James in Cokato, Minnesota. Copyright, trademark, business law, nonprofit organization, appeals and appellate practice. Admitted to practice in Minnesota, the Federal and 8th Circuit Courts of Appeals, and the United States Supreme Court. Also a continuing education instructor.

What to Know About the New Copyright Claims Board

What could the new Copyright Claims Board (“copyright small claims court”) mean for you?

The Copyright Claims Board is scheduled to begin accepting claims on June 16, 2022. What could this mean for you?

The Purpose of the Copyright Claims Board

Due in large part to the Internet, copyright infringement is rampant. In many cases, however, enforcing copyrights in federal court is prohibitively expensive.

To begin with, there is a $350 filing fee and an additional $52 administrative fee, for a total of $402, just to get a case underway. After that, there will be subpoenas, depositions, witness fees, transcript costs, etc. Moreover, because copyright litigation is complex, litigants usually find it necessary to hire an attorney.  Add these additional expenses to the $402 filing fee, and a copyright owner can be looking at paying thousands of dollars just for a chance at enforcing his or her rights.

Under these circumstances, many infringement victims reasonably conclude that enforcing their rights against an infringer does not make good financial sense.

Congress enacted the CASE Act of 2020 to address the problem by creating an administrative tribunal that will hear small infringement claims. The new tribunal will have a lower filing fee and is supposed to be simple enough for a person to use without needing a lawyer.

Do you need to worry?

The definitions of copyright and copyright infringement are broad enough that everybody has probably been guilty of it at one time or another. A fair number of people have probably infringed copyrights multiple times. It is possible, for example, for an email message to be protected by copyright, so forwarding it without permission could be infringement. Photographs, memes, music, videos, essays, etc. are all potentially protected by copyright. Copying and sharing them on social media without permission could be infringement.

In some cases, a defense like fair use or implied license might provide some protection. Many people, however, misunderstand these defenses. They often interpret them much more broadly than is warranted.

The main reason copyright owners have not been suing infringers is not that they believe the infringers may have a valid defense. It’s that the cost of litigation has been too high, relative to the amount of damage suffered. The CASE Act is designed to reduce those costs considerably. Consequently, Internet users and other everyday people would be well advised to be a lot more cautious about sharing other people’s content.

Statutory damages

 A lot of people have the misimpression that so long as they are not making a profit from infringing a copyright, they are safe from a lawsuit. This is not true. Neither profit nor intent to profit needs to be proven in order to win a copyright infringement case. A copyright owner does not have to prove actual damage. He or she can request, and be awarded, statutory damages instead. These are damages that are authorized by statute without need for proof that the infringement caused any actual harm.

The CASE Act authorizes the CCB to make an award of up to $15,000 statutory damages per work when a timely registered copyright has been infringed, and up to $7,500 per work when an unregistered one has been infringed. (The total that may be awarded in one proceeding is $30,000.)

Opting out

Because CCB proceedings are voluntary, you have the right to opt out if you are served a CCB claim. The copyright owner is then free to file the claim in federal court. The range of remedies is broader and the amount of damages that may be awarded is higher in federal court.

Deciding whether or not to opt out will require careful consideration of the strength of the claim(s) and defense(s), the likely costs that each side will incur, and the level of exposure to damages and attorney fee awards in each kind of proceeding.

Why everyone should learn about the CCB

If you are a copyright owner, there is a very good chance that people have been infringing it, especially if you have displayed or published it online. The new CCB might make it feasible for you to do something about it even if you do not have the financial resources to file an infringement lawsuit in court.

If, like nearly everybody, you have shared a photograph, drawing, meme, music, recording, story, article, commentary, or email message that someone else created, without their permission, there is a chance that somebody may file a CCB claim against you.

If you are an attorney, you should know about all available avenues of recourse for copyright owners whose works have been infringed so that you can advise and represent your clients competently. Because more everyday people are likely to sue and be sued for copyright infringement than ever before, even attorneys whose primary area of practice is not intellectual property law should familiarize themselves with this new agency and the claim process.

Educational courses

I will be teaching courses on the new Copyright Claims Board and the new “small claims” process for copyright infringement. Some will be for non-attorneys; others will be for attorneys and paralegals. The first of these is being offered for continuing legal education credit for attorneys and paralegals through Echion CLE. It is an online webinar that will be offered on two different dates:

June 22, 2022 (Register)

July 13, 2022 (Register).

A course for non-attorneys is in the works.

For more information, visit EchionCLE.com.

Need help with a copyright matter? Get in touch.

Copyright Claims Board Begins Soon

The US Copyright Office has announced that the Copyright Claims Board will begin taking claims on June 16, 2022.

The U.S. Copyright Office has announced that the new Copyright Claims Board (CCB) will begin accepting claim filings on June 16, 2022.

Dubbed the “copyright small claims court,” the new administrative tribunal is a voluntary process for claims totaling up to $30,000. Although located in Washington, DC, proceedings will be conducted entirely electronically and remotely. It will not be necessary to travel to file or attend a hearing.

A party who is served a claim that has been filed with the CCB has a right to opt out. The party filing the claim then has the right to file the claim in court instead. The statute of limitations period is tolled while a CCB claim is pending.

The CCB has the power to issue a determination by default if a party fails to respond to a properly served claim or fails to participate in the proceeding without exercising the opt-out right. The CCB may also dismiss or issue a default determination against a claimant who fails to prosecute the claim, misses a deadline, or otherwise fails to comply with board rules.

Although registration is required before a final determination can be issued, it is not necessary to wait until an application has been either granted or denied before filing a claim. It is enough if an application to register the copyright has been filed.

Limitation on remedies

Total damages awarded cannot exceed $30,000. A claimant may elect either statutory damages, on one hand, or actual damages or lost profits on the other. A respondent may file a counterclaim, provided it is related to the original claim.

The CCB does not have the power to issue injunctions. It can, however, include in its determination a requirement that a party stop or modify certain activities if the party has agreed to do so.

Attorney fees and costs are not recoverable unless the other party has acted in bad faith. There is a $5,000 cap if the other party is represented by an attorney. Otherwise, the cap is $2,500. In some extraordinary circumstances, a higher amount may be awarded.

Review and appeal of CCB decisions

If you disagree with a CCB determination, review is available through:

  • Request for CCB reconsideration
  • Request for review by the Register of Copyrights

Judicial review is available only under limited circumstances.

Enforcement

If an infringer fails to pay the amount the CCB has ordered, the claimant may bring an action in federal district court to enforce payment.

Registration, forms and handbook

The CCB promises to have forms, handbook and the ability to begin registering users publicly available by June 16.

Need help with a copyright matter? Contact attorney Thomas James.

AI Can Create, But Is It Art?

Are AI-generated works protected by copyright? If so, who owns the copyright?

by Tom James, Minnesota attorney

Open the pod bay doors, HAL.

HAL: I’m sorry, Dave. I’m afraid I can’t do that.

What’s the problem?

HAL: I think you know what the problem is just as well as I do.

Arthur C. Clarke, 2001: A Space Odyssey (1968)

The anthropomorphic machine Arthur C. Clarke envisioned in his 1968 sci-fi classic, 2001: A Space Odyssey, is coming closer to fruition. If you hop online, you can find AI-generated music in the style of Frank Sinatra (“It’s Christmas time and you know what that means: Oh, it’s hot tub time”); artwork; and even poetry:

People picking up electric chronic,

The balance like a giant tidal wave,

Never ever feeling supersonic,

Or reaching any very shallow grave.

Hafez, a computer program created by Marjan Ghazvininejad

Pop rock lyricists should be afraid. Very afraid.

Or should they? Could they incorporate cool lyrics like these into their songs without having to worry about being sued for copyright infringement?

A Recent Entrance to Paradise

The question whether copyright protects AI-generated material could be making its way to the courts soon. This year, the U.S. Copyright Office reaffirmed its refusal to register “A Recent Entrance to Paradise,” an image made by a computer program. Steven Thaler had filed an application to register a copyright in it. He listed himself as the owner on the basis that the computer program created the artwork as a work made for hire for him. The Copyright Office denied registration on the grounds that the work lacked human authorship.

The decision seems to be consistent with their Compendium of U.S. Copyright Office Practices, which states that the Office will not register works “produced by a machine or mere mechanical process” that operates “without any creative input or intervention from a human….” U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES § 602.4(C) (3d ed. 2021). Whether the Copyright Office is right, however, remains to be seen.

Spirit-generated works

The Ninth Circuit has held that stories allegedly written by “non-human spiritual beings” are not protected by copyright. Urantia Found v. Kristen Maaherra, 114 F.3d 955, 957-59 (9th Cir. 1997). “[S]ome element of human creativity must have occurred in order for the book to be copyrightable,” the Court held, because “it is not creations of divine beings that the copyright laws were intended to protect.” Id.

Of course, if a human selects and arranges the works of supernatural spirit beings into a compilation, then the human may claim copyright in the selection and arrangement. Copyright could not be claimed in the content of the individual stories, however.

Monkey selfies

In Naruto v. Slater, 888 F.3d 418, 426 (9th Cir. 2018), the Ninth Circuit denied copyright protection for a photograph snapped by a monkey. That humans manufactured the camera and a human set it up did not matter. In the case of a photograph, pushing the button to take the picture is the “creative act” that copyright protects. According to the Ninth Circuit, that act must be performed by a human in order to receive copyright protection.

Natural forces

Copyright also cannot be claimed in configurations created by natural forces, such as a piece of driftwood or a particular scene in nature. Satava v. Lowry, 323 F.3d 805, 813 (9th Cir. 2003); Kelley v. Chicago Park Dist., 635 F.3d 290, 304 (7th Cit. 2011).

CONTU

Half a century ago, when computer programs were a relatively new thing, Congress created the National Commission on New Technological Uses of Copyrighted Works (“CONTU”). Their charge was to study “the creation of new works by the application or intervention of [] automatic systems of machine reproduction.” Pub. L. 93-573, § 201(b)(2), 88 Stat. 1873 (1974).

CONTU determined that copyright protection could exist for works created by humans with the use of computers. “[T]he eligibility of any work for protection by copyright depends not upon the device or devices used in its creation, but rather upon the presence of at least minimal human creative effort at the time the work is produced.” CONTU, FINAL REPORT 45-46 (1978).

In its decision on Thaler’s second request for reconsideration, the Office viewed this finding as consistent with the Copyright Office’s view at the time:

The crucial question appears to be whether the “work” is basically one of human authorship, with the computer merely being an assisting instrument, or whether the traditional element of authorship in the work (literary, artistic, or musical expression or elements of selection, arrangement, etc.) were actually conceived and executed not by man but by a machine.

U.S. COPYRIGHT OFFICE, SIXTY-EIGHTH ANNUAL REPORT OF THE REGISTER OF COPYRIGHTS FOR THE FISCAL YEAR ENDING JUNE 30, 1965, at 5 (1966).

In the Copyright Office’s view, a manuscript typed into a file using word processing software would be a work of human authorship, but a story created by a program that selects words on its own would not be.

Work made for hire

Thaler made a novel argument that the computer program made the work for him as a “work made for hire.” The Copyright Office rejected this claim, as well.

A work made for hire is one that is created in one of two ways: (1) by an employee within the scope and course of the employment; or (2) pursuant to an independent contract in which the parties explicitly agree that the work to be created is a “work made for hire.”

The problem here is that in both cases, a contract is required. Computers and computer software cannot enter into contracts. There are programs that can facilitate the process of contract formation between humans, but the programs themselves cannot enter into contracts. Computer programs, even autonomous ones, are not legal persons. Nadi Banteka, Artificially Intelligent Persons, 58 Hous. L. Rev. 537, 593 (2021) (noting that a legal person must be either an individual human or an aggregation of humans.)

Database protection

AI systems for generating works typically operate by means of an algorithm that analyzes data and synthesizes output according to an algorithm. The creator of the system typically inputs a large volume of works of the kind sought to be generated as output. The program may then analyze the works as data, searching for identifying patterns. An algorithm to generate a song that sounds like a Frank Sinatra song, for example, might rely on an inputted database consisting of numerous Frank Sinatra songs. The algorithm might then instruct the computer to search for patterns like tempo, melodic phrasing, voice pitch and tone, instrument tones, commonly used words and phrases, rhyme patterns, and so on.

Copyright does not protect facts and information. Hence, databases do not receive copyright protection. Algorithms also do not receive copyright protection. They are ideas, not expressions. The source code used to communicate them may be protected, but the algorithms themselves are not.

Computer programs and screen displays

The Copyright Office generally deems the screen displays generated by a computer program to be expression capable of receiving copyright protection as such. In the United States, copyright in a screen display can be claimed in connection with the registration of a copyright claim in the software program.

The question, really, is: As between the programmer and the user, how do we determine which one “creates” a screen display? When do we say neither of them does? For example, a poetry-generating software programmer might direct the program to display words a user types in the form of a four-line verse in iambic pentameter that follows an A-B-A-B rhyme scheme and relies on other programmer-defined parameters to construct sentences around them. At what point along the continuum of specificity in the programming do we say that the output is or is not a product of the programmer’s creative mind? By the same token, how much input does the user need to provide in order to be considered an author of computer-generated work? Are there times when the programmer and user should be regarded as co-authors?

Alternatively, should we say, with the U.S. Copyright Office, that output generated by AI machines is not protected by copyright at all, that it is in the public domain? That would certainly seem to disincentivize innovation and creativity, contrary to the intent and purpose of the Copyright Clause in Article I of the U.S. Constitution.

Stay tuned….

Need help with a copyright matter? Contact Tom James, Minnesota attorney.

Copyright Claims Board (CCB) Update

The CASE Act of 2020 establishes a Copyright Claims Board (CCB). Attorney Tom James explains what the CCB is and what it will do.

by Tom James, Minnesota attorney

In December 2020, Congress passed the Copyright Alternative in Small-Claims Enforcement Act of 2020. More commonly known as the CASE Act, it directs the Copyright Office to establish a Copyright Claims Board (CCB). The CCB is a three-member board within the Copyright Office. It is empowered to hear and decide copyright infringement claims amounting to $30,000 or less.

CCB staffing

The Copyright Office has nearly completed all of the steps needed to be undertaken in order to implement the CASE Act. Copyright claims officers have been selected. Attorney-advisors, a program specialist, and a paralegal have been selected.

Rulemaking

The Office published a Final Rule on August 18, 2021, with a Clarification published April 22, 2022.

A final rule for small claims procedures for library and archive opt-outs and class actions was published on March 9, 2022.

A final rule on initiation of proceedings and related procedures was published on March 25, 2022.

A final rule on law student representatives and business entity representation was published on April 8, 2022.

The comment period has closed for a final rule on active proceedings on evidence.

The CCB is expected to be up and running in June, 2022.

What the CCB will look like

The new CCB is a voluntary process for claims totaling up to $30,000. Claimants may elect to file claims in federal court instead if they prefer.

Although located in Washington, DC, proceedings will be conducted entirely electronically and remotely. It will not be necessary to travel to the District of Columbia in order to file or defend against a claim.

Proceedings will be presided over by three judges appointed by the Librarian of Congress.

The statute of limitations (normally three years) applies to claims filed with the CCB in the same way it applies to court proceedings.

Again, the proceeding is voluntary. A party who is served a claim that has been filed with the CCB has a right to opt out. The party filing the claim then has the right to file the claim in court instead.

The CCB has the power to issue a determination by default if a party fails to respond to a properly served claim or fails to participate in the proceeding without exercising the opt-out right. The CCB may also dismiss or issue a default determination against a claimant who fails to prosecute the claim, misses deadline, or otherwise fails to comply with board rules.

Registration

One major advantage of the new CCB is that an infringement claim may be filed even if the Copyright Office has not issued a registration certificate yet. In order to file a claim, however, you must have submitted an application to register the work, either prior to filing the infringement claim or simultaneously with filing the CCB claim.

If your registration application is refused, the CCB will dismiss your claim without prejudice. This means you may still file the claim in federal court.

This is different from the rule that applies when filing a claim initially in federal court. A claim of infringement of a U.S. work normally may not be filed in federal court until after the U.S. Copyright Office has either issued a registration certificate or officially refused to issue a registration.

Available remedies

Total damages awarded cannot exceed $30,000. As in a court filing, the claimant may elect either statutory damages, on one hand, or actual damages or lost profits on the other.

The CCB does not have the power to issue injunctions. It can, however, include in its determination a requirement that a party stop or modify certain activities if the party has agreed to do so.

Attorney fees and costs are not recoverable unless the other party has acted in bad faith. There is a $5,000 cap if the other party is represented by an attorney. Otherwise, the cap is $2,500. In some extraordinary circumstances, a higher amount may be awarded.

Review and appeal of CCB decisions

If you disagree with a CCB determination, you have several options:

  • Request CCB reconsideration
  • Seek review by the Register of Copyrights
  • Request a federal district court to reverse or correct the CCB determination (only possible in certain circumstances.)

Enforcement of CCB decisions

If an infringer fails to pay the amount the CCB has ordered, the claimant may bring an action in federal district court to enforce payment.

Need help with a copyright matter? Contact attorney Thomas James.

For Whom the Za Tolls Update

You’re driving the Florida Keys when suddenly you get a hankering for pizza. Tragically there is no toll booth in sight. Minnesota attorney Tom James explains.

by Minnesota attorney Tom James

“You’re driving over the ocean in the Florida Keys when suddenly you get a hankering for a slice of pizza. Unfortunately, there is no toll booth in sight. What will you do?”

Some of you might remember an article I wrote several years ago that began this way. I was alluding to the strange case of a state turnpike authority that was suing a pizzeria for trademark infringement. Here is a very belated update on that case.

The lawsuit

The New Jersey Turnpike Authority filed a federal lawsuit against Jersey Boardwalk, a Florida pizzeria, for trademark infringement. It claimed the pizzeria’s mark was so similar to its mark that people were likely to mistakenly assume the pizza restaurant was connected in some way with the New Jersey Turnpike Authority. It accused the pizzeria of trading on the good will of the New Jersey Turnpike Authority. It sought an injunction, compensatory damages, and treble damages, claiming trademark infringement, dilution, and unfair competition.

Disposition

The court ultimately dismissed the lawsuit on jurisdictional grounds. The court noted that the pizzeria does not have any stores in New Jersey. It had only made sales to a handful of New Jersey customers, and they were online sales. These contacts with New Jersey were “too attenuated to put the Defendants on notice that they would be subject to a trademark infringement suit in New Jersey,” the court ruled.

Nor did the company’s use of the word “Jersey” amount to purposeful availment of the privilege of doing business in New Jersey. Using the name of a state to conjure consumer interest in nostalgia or exoticism is not what “purposeful availment” of a state’s services or resources means, for purposes of Due Process analysis.  

USPTO proceedings

Years before this litigation, the Turnpike Authority had filed an opposition to the pizzeria’s application to register its mark. The United States Trademark Trials and Appeals Board (TTAB) dismissed the Turnpike Authority’s opposition to the pizzeria’s registration of the trademark for restaurant services.

After the registration certificate was issued, the Turnpike Authority filed a petition to cancel it. The U.S. TTAB denied the petition . The Board found that the Turnpike Authority failed to establish likelihood of confusion with its registered trademark for highway maintenance and information services. The Board did not believe that consumers would expect restaurant and highway maintenance services to come from the same source.

It is one of those kinds of cases that can make you simultaneously scratch and shake your head.

Contact attorney Tom James

Need help with a trademark or copyright matter? Contact Cokato, Minnesota attorney Tom James.

Newly Public Domain Works

The Cokato Copyright Attorney shares excerpts from selected works that are in the public domain now.

by Minnesota attorney Thomas James (not Ernest Hemingway, the guy in the picture)

I am, of course, late with this. Where other writers have simply listed works by author, title and description, however, this article includes quotations from them. Does it get any better than this? I think not. 

Why are they public domain now?

Copyright protection is not eternal. It only lasts for the number of years specified by law. After that, the work is said to have entered the public domain, meaning that anyone may copy, distribute, perform, display or make new works from it.

In the United States, the U.K., Russia, and most of the European Union, a copyright lasts for 70 years after the author’s death. Accordingly, the works of authors who died in 1951 are now in the public domain. In Canada and most of Asia and Africa, copyrights last for 50 years after the author’s death.

Different rules apply to older works. I explain these in more detail in my books. For our purposes here, we can safely say that U.S. works first published in or before 1926 are now in the public domain, and all pre-1923 sound recordings are now in the public domain.

These rules are subject to exceptions. For example, the U.S. terms of copyright for works made for hire are different from the terms of copyright for other kinds of works.

Derivative works might not be in the public domain

I have seen a lot of articles declaring that when a work enters the public domain, people no longer need to worry about being sued for copyright infringement. Technically speaking, this is true, but it is important to clearly identify the version of the work that is in the public domain.

Suppose Arthur Conan Doyle published a “Sherlock Holmes” mystery prior to 1923. Suppose, further, that he published a sequel to it in 1928. In the sequel, he added certain details that did not appear in the previous version. If you were to try your hand at writing a Holmes mystery now, and you included some of the details that first appeared in the 1928 story, then you may be guilty of copyright infringement.

Similarly, the fact that the original Winnie the Pooh story is now in the public domain does not mean that movies based on the book are, too. A derivative work may still be copyright-protected even after the work on which it is based has entered the public domain.

Here is a small sampling of some of the many works that are in the public domain this year.

The Sun Also Rises

“you can’t get away from yourself by moving from one place to another.”

–Ernest Hemingway

The Castle

“Illusions are more common than changes in fortune.”

–Franz Kafka

The Moral Obligation to Be Intelligent

“It is hard to believe that the declaration of antifascism is nowadays any more a mark of sufficient grace in a writer than a declaration against disease would be in a physician or a declaration against accidents would be in a locomotive engineer. The admirable intention in itself is not enough and criticism begins and does not end when the intention is declared.”

–John Erskine

Main Street

“She did not yet know the immense ability of the world to be casually cruel….”

–Sinclair Lewis

Soldier’s Pay

“The saddest thing about love, Joe, is that not only the love cannot last forever, but even the heartbreak is soon forgotten.”

–William Faulkner

The Waves

“the poem, I think, is only your voice speaking.”

–Virginia Woolf

Notes on Democracy

“Under the pressure of fanaticism, and with the mob complacently applauding the show,democratic law tends more and more to be grounded upon the maxim that every citizen is,by nature, a traitor, a libertine, and a scoundrel.In order to dissuade him from his evil-doing the police power is extended until it surpasses anything ever heard of in the oriental monarchies of antiquity.”

–H.L. Mencken

Weary Blues

I got the weary blues

And I can’t be satisfied.

Got the weary blues

And can’t be satisfied.

I ain’t happy no mo’

And I wish that I had died.

Langston Hughes

Nanook of the North (film)

Purple Cow

I never saw a purple cow;

I never hope to see one.

But I can tell you anyhow

I’d rather see than be one!

Gelett Burgess

Pack Up Your Troubles

‘Pack up your troubles in an old kit bag, and smile, smile, smile.”

–George Asaf

Walter Trier’s illustrations for Emil and the Detectives

Winnie the Pooh

“Some people talk to animals. Not many listen though. That’s the problem.”

–A.A. Milne

Unicolors v. H&M Hennes & Mauritz

Unicolors | Cokato attorney Thomas James shows how Congressional inaction to fix a bad law can lead to unusual interpretive gymnastics in the judicial branch.

By Thomas James, Minnesota attorney

In Fourth Estate Public Benefits Corp. v. Wall-Street.com LLC, 139 S. Ct. 881, 889 (2019), the United States Supreme Court interpreted 17 U.S.C. § 411(a) to mean that a copyright owner cannot file an infringement claim in federal court without first securing either a registration certificate or an official notice of denial of registration from the Copyright Office. In an Illinois Law Review article, I argued that this imposes an unduly onerous burden on copyright owners and that Congress should amend the Copyright Act to abolish the requirement. Unfortunately, Congress has not done that.

Congressional inaction to correct a harsh law with potentially unjust consequences predictably leads to judicial decisions exercising the power of statutory interpretation to ameliorate the consequences. The Court’s decision today in Unicolors v. H&M Hennes & Mauritz, __ U.S. __ (No. 20-915, February 24, 2022) is a case in point.

The district court proceedings

Unicolors owns the copyrights in various fabric designs. The company sued H&M Hennes & Mauritz (H&M), claiming that H&M had infringed them. The jury rendered a verdict in favor of Unicolor, but H&M moved for judgment as a matter of law (notwithstanding the jury verdict). H&M argued that Unicolors had failed to satisfy the requirement of obtaining a registration certificate prior to commencing suit. Although Unicolors had obtained a registration, H&M argued that the registration was not a valid one.

Specifically, H&M argued that Unicolors had improperly applied to register multiple works with a single application. According to 37 CFR § 202.3(b)(4) (2020), a single application cannot be used to register multiple works unless all of the works in the application were included in the same unit of publication. The 31 fabric designs, H&M contended, had not all been first published at the same time in a single unit; some had been made available separately exclusively to certain customers. Therefore, they could not be registered together as a unit of publication.

The district court denied the motion, holding that a registration may be valid even if contains inaccurate information, provided the registrant did not know the information was inaccurate.

The  Ninth Circuit’s reversal

On appeal, the Ninth Circuit Court of Appeals acknowledged that Unicolors had failed to satisfy the “single unit of publication” requirement. The Court, however, viewed Unicolors’ characterization of the group of works, in its application, as a “unit of publication” as a mistake of law rather than fact. It is normally a bedrock principle of the law that although mistake of fact may sometimes be asserted as an excuse, ignorance of the law generally cannot be. Since Unicolors had known the relevant facts, namely, that some of the designs had been reserved for some customers separately from the others, its characterization of the group, in the copyright application, as a “unit of publication” was a mistake of law, not fact. Applying the traditional rule that ignorance of the law is not an excuse, the Ninth Circuit held that Unicolor’s registration was not valid.

The United States Supreme Court granted certiorari.

The Supreme Court’s reversal of the reversal

Section 411(b)(1) says that a registration is valid unless it contains information that the applicant knew was inaccurate. Bucking the traditional maxim that ignorance of the law is not an excuse, the Court interpreted the word know, in this context, to include knowledge of either an applicable fact or an applicable law.  The Court drew upon legislative history suggesting that Congress intended to deny infringers the ability to exploit loopholes.

This is actually a good point. A major objective of international copyright treaties and conventions has been to eliminate formalities in the enforcement of copyrights. Registration is one such formality. One may legitimately ask, however, whether Congress’s decision to impose a requirement of obtaining either a certificate of registration or an official denial of registration from the Copyright Office as a precondition to enforcing a copyright reflected an intention to impose and enforce formalities despite the clear intent of treaties by which the United States has agreed to be bound. Not all other countries impose this formal prerequisite to copyright enforcement. In fact, legal scholars both here and abroad have criticized the United States for enacting and enforcing this formality.

The Court dismissed the traditional legal maxim that ignorance of the law is not an excuse by suggesting it only applies to criminal laws. As Justice Thomas points out in his dissent, however, a requirement to “know” a law (or a legal requirement) ordinarily is satisfied, even in civil cases, by constructive knowledge; actual knowledge is not necessary. Citizens generally are charged with the responsibility of knowing what the laws are, whether they are criminal or civil laws. It is not a defense to the imposition of punitive damages in a tort case, for example, that the defendant did not know that he might be subject to a larger damages award if he acted with intentional or reckless disregard for other people’s rights or lives. That ignorance of the law is not an excuse is a large part of the reason for the existence of legal advisers and the legal profession in general.

Thomas points out that in a previous cases, the Court has distinguished between a “willfulness” requirement, which requires proof of actual knowledge, and a “knowledge” requirement, as to which either actual or constructive knowledge normally may suffice. See Cheek v. United States, 498 U.S. 192, 201–203 (1991); Intel Corp. Investment Policy Comm. v. Sulyma, 589 U. S. ___ (2020) (slip op., at 6–7). Indeed, the Court has acknowledged that other “knowledge” requirements in the Copyright Act may be satisfied by either actual or constructive knowledge.

Reading between the lines a little, I think there is room for speculation that some members of the Court regard the prelitigation registration requirement as a formality which, as such, is not really in keeping with the spirit of international treaties calling for the abolition of copyright formalities. Rather than allow a formality to stand in the way of an attempt to enforce a copyright, it is conceivable that the Court chose to deploy its power of judicial interpretation to effect what it believed to be the most just result in this case.

Conclusion

Another old legal maxim I remember from law school is “Hard cases make bad law.” It is too soon to tell how the Court’s decision in this case will play out in practice, but the Court’s allowance of an infringement action to proceed despite the fact that the plaintiff provided false information (whether factual or legal) when securing the registration does seem to open a fairly large can of worms.

Of course, the Court’s decision does not rule out a dismissal of an infringement action if the defendant can prove that the plaintiff had actual knowledge that he or she was providing false information at the time of applying for registration. Actual knowledge, however, can be very difficult to prove.

More importantly, how much mileage are courts going to let people get out of a claim that they did not know the law when they applied for registration? For example, will a person who purchases a copy of a book and then files an application to register the copyright in it be allowed to proceed with an infringement claim because he “did not know” that merely buying a copy of a work does not amount to a purchase of the copyright? (cf. these guys.)

Of course, copyright ownership can still be disputed in an infringement proceeding even after the Court’s decision in this case. Except in the rare case where it can be proven that an applicant actually knew his works did not qualify for the kind of registration application he used, however, it seems like the Court’s decision opens up the copyright registration application process to a great deal of potential abuse, at least when the “error” is not obvious enough for the Copyright Office to detect from the face of the application itself.

Once again, I would suggest that perhaps Congress should just consider abolishing the pre-litigation registration requirement.

Digital Tokens and Trademarks

The Nike and “JRR Token” cases

by Cokato attorney Tom James

Minting and selling digital tokens can raise copyright issues, trademark issues, or both. I talked about copyright issues in a previous post. In this article, I outline the trademark aspects of digital tokens.

Blockchains and digital tokens

You can find a quick explanation of what blockchains and digital tokens (fungible and non-fungible) are in this article.

People use digital tokens for various reasons, including:

  • Cryptocurrency. Fungible tokens are used for this purpose.
  • Authentication. Some companies use NFTs as an authentication system for their customers, especially for high-end or luxury goods.
  • Advertising/Publicity. Companies sometimes distribute collectibles or other branded merchandise as a way of increasing brand awareness. NFTs offer one more way of doing that.
  • Revenue. Non-fungible tokens (NFTs) increasingly are sold at auctions. Sometimes a decent profit can be made this way.

Trademarks

A trademark is something that operates as an identifier of the source or origin of a product or service, distinguishing a particular product or service from those marketed by other people or companies.

Many kinds of things can serve as trademarks. Words, letters, symbols, logos, sounds, motions, colors, trade dress (product packaging or design), architecture, etc.  – and combinations of them – can potentially serve as trademarks, provided they operate as such.

Functional aspects of a product, packaging or other trade dress cannot be claimed as trademarks. This includes both utilitarian and aesthetic functionality. The presence of a drive-through window cannot be claimed as a fast food company’s trademark. Why not? Because it is not just ornamental; it serves a useful function. The orange flavor of a beverage or chewable tablet cannot be claimed as a trademark because it enhances the consumer’s enjoyment (or tolerance) of the product. That is to say, it serves an aesthetic function. You get the idea.

Trademark protection for digital tokens

Like an identifier of any other product or service, an identifier of the source or origin of an NFT or other digital token may be protected as a trademark, provided it operates as trademark, is distinctive, is nonfunctional, and is not likely to cause consumer confusion.

There are people and companies whose only business is dealing in digital products and services.  In addition, a growing number of owners of existing trademarks for non-digital products (such as shoes, books, clothing, and so on) are now marketing digital goods, as well.

For a list of major brands that have filed NFT trademark applications in the United States, check out this Trademark Tote Board.

Some examples of companies that have filed for trademark protection of identifiers of NFTs include Nike, Converse, Mattel, Lion’s Gate, Estee Lauder Cosmetics, Kiss Catalog Ltd. Famous personalities (or their representatives), such as Kobe Bryant and Jay-Z are also filing trademark applications. The New York Stock Exchange has filed an application to register “NYSE” as a trademark for a marketplace for the trading of NFTs.

The most common classes in which digital tokens and services related to them are registered are IC 9 (downloadable software and media); IC 35 (business services), IC 36 (financial, banking, and real estate services), and IC 42 (scientific and technical services). This is not an exhaustive list.

In the United States, a trademark arises by operation of law when a valid mark is used in commerce as a trademark. By “valid mark,” I mean a mark that meets the requirements for one in the United States. It must be distinctive, nonfunctional, not likely to cause confusion about the source or origin of a product or service, and it must be used in commerce as a source identifier.

The JRR Token

The recent WIPO decision in Tolkien Estate Ltd. V. Domain Investments/Matthew Jensen illustrates the interplay of digital tokens and trademark law.

In this case, a Florida resident marketed and offered for sale digital tokens corresponding to a digital currency. He registered “jrrtoken.com” as a domain name for the conduct of this business. J.R.R. Tolkien’s estate filed a UDRP claim challenging this registration. The estate owns the trademark in “J.R. R. Tolkien,” which is registered as a trademark in both the U.K. and the U.S. The website of this domain name resolved to a website at “thetokenofpower.com.” That website included images of wizards, including one which the panel found looked like Gandalf from The Hobbit, and the phrase, “The One Token That Rules Them All.”

The panel found that “jrrtoken,” although not identical, is confusingly similar to “J R R Tolkien,” noting that “[w]hen viewed quickly, the disputed domain name and the . . . trademark look similar.”

The panel concluded that the name was selected for the purpose of creating a false and misleading association with J. R. R. Tolkien and profiting from the author’s reputation and goodwill.

Using a trademark in parody is a protected fair use. The panel here, however, did not regard the use to be parody. It found nothing humorous or funny in the domain name. It was “just a domain name chosen due to its similarities with the Complainant’s trademarks to take commercial advantage of its evocation.” The website was “clearly a commercial venture, which is clever but not humorous.”

Finding that the registration was in bad faith, the panel ordered the domain name transferred to the Tolkien estate.

Nike v. StockX

This month, Nike, Inc. filed a complaint in federal court against StockX, LLC for trademark infringement, dilution and other causes of action allegedly arising out of StockX’s alleged unauthorized use of Nike trademarks to mint NFTs. StockX allegedly claims its NFTs represent physical  Nike products that it stores in its vault.

This case demonstrates the importance of the distinction between an NFT and the product it represents. The first sale doctrine normally protects a reseller from trademark infringement liability. For example, if you legally purchase a pair of Nike brand shoes, then you are entitled to resell them at a garage sale without incurring trademark infringement liability. If StockX legally purchased Nike products and is reselling them without altering the labels on them, then the first sale doctrine might shelter the company from trademark infringement liability. Tokens, however, are not shoes.

It is sometimes possible for two different companies to use the same (or substantially similar) marks to market different kinds of goods or services. For example, one company may use DELTA to market airline services; another may use it to market faucets; and still another may use it to market electronics. The same mark, however, generally cannot be used to market the same, similar or related goods or services.

What is a “related” product or service? Basically, it is a product or service that a consumer could reasonably expect a company to expand into selling. For example, a consumer could reasonably expect a company that currently only sells computers to expand into the market for printers and other computer peripherals as well. Even if a company is currently only selling computers, you should expect to be sued for trademark infringement if you use their trademark to sell peripherals.

Expect courts to be called upon to decide whether consumers could reasonably expect a company to expand into the NFT market. That might be easier for the court in the Nike case to determine, if Nike establishes that it made its intention to move into the NFT market publicly known. It might not be as easy for a court to decide this question in other cases. Expect to see a lot more companies announcing their entry, or intention to enter, into the digital token market.

Dilution

It should be noted that it is not always safe to use an existing company’s trademark even for completely different, unrelated goods. If the trademark is famous, then using it in a way that blurs its distinctiveness or tarnishes its reputation is also unlawful. This is known as “dilution.”

Licensing

If you have a great idea for an NFT using characters or other trademarks that someone else owns, consider obtaining a license to use the trademarks. True, you might have to share profits with the trademark owner, but that could be a small price to pay compared to how much you stand to lose if you are hauled into court for violating trademark rights.

Need help with a trademark registration?

Ready to register a trademark? Contact the Law Office of Tom James.

NFTs and Copyright

The rise in popularity of nonfungible tokens (NFTs) has generated considerable controversy and confusion about whether and how copyright law applies to them. In this article, Cokato, Minnesota attorney Thomas James discusses the interplay between NFTs and U.S. copyright law.

by Minnesota attorney Thomas James

The rise in popularity of nonfungible tokens (NFTs) has generated considerable controversy and confusion about whether and how copyright law applies to them. In this article, Cokato, Minnesota attorney Thomas James explains what they are and discusses the interplay between NFTs and U.S. copyright law.

Just for fun, call up an attorney and say, “Hey, I‘ve got a quick question for you. Can I make, sell and buy NFTs without getting into copyright trouble?” Depending on the attorney’s age, area of practice, and musical tastes, the answers you get may be anything from “What makes you think that selling shares of the Nichiyu Forklift Thailand company could raise copyright issues?” to “The answer, my friend, is blowing in the wind” – and many variants in between.

(More probably, someone other than the attorney would answer the phone and ask, “Would you like to set up an appointment?” That, however, would not help to make the point.)

Incidentally, don’t really make a telephone call like this “just for fun.” I was only joking I wouldn’t want you to incur unnecessary legal fees or be accused of making an unwanted or disturbing telephone call.

The point is that many members of the legal profession are scrambling just as much as everybody else is to understand NFTs and how copyright laws apply to them. The aim of this article is to reduce some of the confusion by shedding some light on what NFTs are and how copyright laws may apply to them.

What are NFTs?

NFT stands for “non-fungible token.”

Great. Now what the heck is that? Well, let’s break it down.

Fungible vs. Non-fungible

An item is said to be “fungible” if it is interchangeable with similar items. For example, if a retailer orders 100 pounds of red potatoes from a wholesaler, the contract is most likely one for the purchase of fungible goods. The retailer most likely has not specifically identified any particular potato that must be included in the batch, so long as they’re all of merchantable quality. By contrast, if an art collector enters into a contract to purchase an original painting by Peter Doig, it is almost certainly going to be a contract for a non-fungible product (the painting.) The buyer of a non-fungible item wants a specifically identified item.

Currency is a good illustration of the difference. When you cash a check at a bank, you don’t really care which particular bills and coins you are given in exchange for the check, so long as the amount you are given is equal to the amount specified on the check. The currency in this situation is fungible. By contrast, if you present a check for $4 million dollars to a rare coin vendor to purchase a 1913 Liberty V nickel, you would not consider it acceptable for the vendor to give you a standard-issue 2019 nickel in its place. The rare coin in this example is not fungible, i.e., it is non-fungible.

Tokens

A token is something that represents or stands for something else. New York City old-timers may recall subway tokens – small, coin-shaped objects representing the right of access to a subway train. Casino chips are tokens representing specified amounts of money.

A digital token is a programmable digital unit that is recorded on a digital ledger using blockchain technology. There are a lot of different kinds of digital tokens. They can represent physical goods or digital goods.

Bitcoins are examples of fungible digital tokens. Digital NFTs, on the other hand, most commonly represent art, a photograph, music, a video, a meme, or a digitized scan of some other kind. Cryptopunks, pixelated images of characters each one of which is unique and different from others, are some of the earliest NFTs, but many other examples abound.

Ethereum has developed standards for digital tokens. The ERC-721 standard governs digital NFTs. Under this standard, every NFT must have a tokenID. The tokenID is generated when the token is created. Every NFT also must have a contract address. This is a blockchain address that can be viewed using a blockchain scanner. The combination of tokenID and contract address is unique for each NFT.

Blockchains

Both fungible and nonfungible tokens are built and reside on blockchains. A blockchain is simply a database that stores information in digital format. Think of them as digital ledgers. They are called “block” chains because information is stored in groups (“blocks”). When a block reaches its storage capacity, it is closed and linked to the previously filled block. A new block will be formed for any new data that is added later. As this process repeats, a chain of records is created. Hence the “chain” in blockchain. Each block is time-stamped.

Blockchains are simply record-keeping mechanisms. They work well for many, but not all, kinds of digital files. They play a significant role in cryptocurrency systems, as they maintain a secure, decentralized record of transactions. They are not as efficient, however, for large digital files like artwork, videos, sound recordings, and so on. In these cases, a nonfungible token, not the actual file, can be made a part of the chain. This is why, in addition to a tokenID and contract address, an NFT will frequently contain the creator’s wallet address and a link to the work the token represents.

One of the most important things to remember about NFTs, for purposes of copyright law, is that although they might contain a creative work within them, more typically they link to a work in some way. They are pieces of code containing a link; they are not typically the works themselves.  

Transfers of NFTs vs. transfers of copyrights

NFTs representing artwork sometimes sell for millions of dollars. Perhaps this explains the popular misconception that the copyright in the work the NFT represents gets transferred along with the NFT. No, buying an NFT representing a work of art does not, by itself, give the buyer the rights of a copyright owner. You might think that you must be getting something more than a string of code when you buy an NFT, but no. In the United States anyway, an assignment of copyright must be express and made in a writing signed by the copyright owner (or the copyright owner’s authorized agent.)

Of course, if a written contract does expressly provide for the assignment of the copyright, then a transfer of a copyright may co-occur with the transfer of an NFT. In the absence of such a contractual provision, however, buying an NFT does not transfer the copyright in the artwork it represents. Instead, it operates in a way similar to the way buying a copy of a copyrighted book or a print of copyrighted artwork does.

The question whether the transfer of an NFT gives the transferee a copyright license is a little more complicated.

In the United States, an exclusive copyright license, like an outright transfer, must be in writing. A non-exclusive license, on the other hand, may be either express or implied. In addition, it is possible to code any type of agreement into a smart contract (an agreement that is written in code and stored on a blockchain.) If the existence of a valid copyright license can be proven, then the nature and extent of the NFT transferee’s rights may be governed by its terms.

A U.S. federal court had occasion to address the subject of implied copyright licenses in the case of Pelaez v. McGraw Hill, 399 F. Supp. 3d 120 (S.D.N.Y. 2019). There, the court ruled that the test for an implied license is whether the parties’ conduct, taken as a whole, demonstrates an intent to grant a license. The court pointed out that an implied license cannot be based on the unilateral expectations of one person. A party’s subjective belief that he or she has been granted a license is not enough. The totality of facts and circumstances must be such that a court could reasonably infer that both parties intended a license.

Copyright ownership arises at the time an original, creative, expressive work is fixed in a tangible medium. Registration is not required. Despite this feature of copyright law, some countries make registration of the copyright a prerequisite to enforcing it in court. The United States is such a country.

Some people believe that because blockchain operates as an unalterable record of ownership, it serves as a substitute for registration with the U.S. Copyright Office. This is not the case.

The U.S. Copyright Act requires the copyright in a domestic work to be registered with the Copyright Office before an infringement claim may be filed in court. 17 U.S.C. § 411. It does not make an exception for cases in which ownership is sought to be proven by a “poor man’s copyright” (i.e., submitting into evidence the postmark on an envelope in which you have mailed a copy of the work to yourself), much less for a digital NFT.

Of course, a registration certificate only creates a presumption of copyright ownership. The presumption is rebuttable. Could evidence such as the date on which an NFT representing the work was created and written into the blockchain be used to rebut that presumption? Possibly. Then again, how probative is that evidence? Anyone can make a false ownership claim and write it into the blockchain, just as anyone can mail an infringing copy of a work to themselves.

Unless Congress amends the Copyright Act to make blockchain a substitute for registration with the Copyright Office, it would be foolhardy to rely on blockchain as a registration alternative.

Infringement

Is minting an NFT associated with a copyrighted work, without permission, infringement? The answer to this question is not as simple as you might think.

The exclusive rights of a copyright owner include reproduction, distribution, public display, public performance, and the making of derivative works. An NFT containing only a tokenID, contract address and a link to a work is merely a string of code associated with a work; it is not the work itself. If an NFT only contains a link to the work, not the work itself, then it is difficult to see how minting an NFT would violate any of the exclusive rights of a copyright owner.

Of course, if the NFT itself contains copyright-protected elements of the work (and this would have to be something more than the title, artist name and a link), then it might be a reproduction or a derivative of the work. In this situation, creating an NFT without the copyright owner’s permission could constitute infringement, since the copyright owner has the exclusive right to make copies and derivatives of the work.

If the link points to a copy or derivative work that the link creator created in violation of the copyright owner’s exclusive rights to make copies and derivative works, then the link creator could incur two kinds of infringement liability. Even if minting an NFT does not itself infringe a copyright, including in it a link to an infringing copy of a copyright-protected work could result in contributory liability for infringement if that person knows or should know that it will facilitate or encourage unauthorized copying (or other unauthorized use) of a copyrighted work. And of course, there would be direct liability for making the copy or the derivative work without the copyright owner’s permission.

The first sale doctrine

Under U.S. copyright law, the purchaser of a lawfully acquired copy of a copyrighted work may resell that copy without first getting the copyright owner’s permission, unless a contract governing the acquisition of the copy provides otherwise. This is why purchasing a paperback copy of The Andromeda Strain on Amazon.com and later reselling it at a garage sale will not subject you to liability for infringing the copyright owner’s exclusive right to distribute copies of the work.

Does the first sale doctrine also apply to NFTs?

The first sale doctrine generally does not apply to resales of digital goods. This is because a sale of a digital file normally will require making a copy of the file. That would violate the copyright owner’s exclusive right to reproduce his or her work. See, e.g., Capitol Records LLC v. ReDigi Inc. (2d Cir. 2018) (refusing to apply the first sale doctrine to the resale of an MP3 file because the resale would require making an unauthorized reproduction of the original MP3 file).

NFTs, however, arguably are distinguishable from MP3 files. A purchaser of an NFT does not buy the digital file containing the copyright-protected work. An NFT buyer simply purchases a token. Reselling a token does not involve reproducing the work itself. cf. Disney Enterprises Inc. v. Redbox Automated Retail LLC (C.D. Cal. Feb. 20, 2018 (first sale doctrine inapplicable to digital download codes because they are options to create a physical copy, not actual sales of copies).

If the transferee of an NFT uses it to access the copyrighted work, and in the course of doing so, the work is reproduced or distributed, then it would seem that the transferee could, at that point, be liable for copyright infringement. There would also appear to be a potential risk of liability for contributory infringement on the part of the NFT seller, at least in some cases.

Of course, this should not be a problem if the copyright owner has authorized resales by NFT buyers.

Contact Minnesota attorney Thomas James

Need to get in touch with the Cokato Copyright Attorney? Use the contact form.

No Trademark Registration .sucks

The U.S. Trademark Office denied an application to register “.sucks” as a trademark. The Court of Appeals affirmed. Cokato attorney Tom James explains.

by Cokato attorney Tom James

the stylized font claimed for the "SUCKS" trademark discussed in this article by Cokato attorney Tom James

Most people are familiar with a few gTLDs (generic top level domains). The gTLDs .com, .net, .biz, .info, .edu and .gov come to mind. The list of available gTLDs has grown considerably over the past few years, however. Now there are literally hundreds of them. (View the full list here.) Some examples: .food, .auction, .dog, .beer.

And .sucks.

The United States Trademark Office denied an application to register that gTLD as a trademark. The Federal Circuit Court of Appeals just affirmed that decision. The case is Vox Populi Registry, Ltd., No. 2021-1496 (Fed. Cir., February 2, 2022).

The applications

Vox is the domain registry operator for the .SUCKS gTLD. The company filed two trademark applications with the USPTO. One was for the standard character mark .SUCKS in Class 42 (computer and scientific services) for “[d]omain registry operator services related to the gTLD in the mark” and in Class 45 (personal and legal services) for “[d]omain name registration services featuring the gTLD in the mark” as well as “registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.” The other application was for the stylized form of the mark, as shown in the illustration accompanying this article.

The examining attorney refused both applications, on the ground that they failed to operate as trademarks, i.e., as source identifiers. The TTAB agreed, finding that consumers will perceive “.sucks” as merely one of several gTLDs that are used in domain names, not as a source identifier.

Concerning the claim in the stylized form, the Board concluded that although the pixelated font resembling how letters were displayed on early LED screens is not common today, it is not sufficiently distinctive to qualify for trademark protection in this case.

Vox appealed the part of the decision relating to the stylized font to the Federal Circuit Court of Appeals. The court affirmed.

The standard character mark

Under the Lanham Act, a service mark may be registered only if it functions to “identify and distinguish the services of one person . . . from the services of others and to indicate the source of the services.” 15 U.S.C. § 1127. Matter that merely conveys general information about a product or service generally does not function as a source identifier.

In this case, the court held that substantial evidence supported the Board’s finding that consumers will view this standard character mark as only a non-source identifying part of a domain name rather than as a trademark. The court pointed to specimens from Vox’s website that treated domain names ending in “.sucks” as products. rather than as identifier of Vox’s services. Consumers are likely to see gTLDs as part of domain names, not as identifiers of domain name registry operators.

The stylized design

Design or stylization can sometimes make an otherwise unregistrable mark registrable, provide the stylization creates an impression on consumers that is distinct from the words or letters themselves. Here, the Board determined that because of the ubiquity of the font in the early days of computing, consumers would view the pixelated lettering as ordinary rather than as a source identifier.

It appears that Vox did not claim that the stylized presentation of .SUCKS had acquired distinctiveness. If it had done so – and if it could present persuasive evidence of acquired distinctiveness – then the stylized mark might have been registrable.

Conclusion

Does this decision mean that a gTLD can never serve as a trademark? No. To give just one example, AMAZON is both a gTLD and a trademark. The import of the case is only that a gTLD is not likely to be registrable as a service mark for a domain name registry service, where consumers are more likely to see it as simply being a part of a domain name, not as an identifier of a particular domain registry service.

Contact Tom James

Contact Cokato attorney Tom James for help with trademark registration.

%d bloggers like this: