Copyright lawyers are warning that there is a new rule, for registering groups of photographs in a single copyright registration. Ava Doppelt, of the Orlando, Florida copyright law firm of Allen, Dyer, Doppelt + Milbrath, explains that the rule modifies the procedure for registering groups of published photographs and a similar procedure for groups of unpublished photographs.

According to Attorney Doppelt, before the change, photographers could register an unlimited number of photographs in one application, for the regular $55 fee. Under the new rule, an applicant is limited to 750 photos in one application. Ms. Doppelt explains: “the Copyright Office is now requiring electronic forms; paper applications are no longer allowed. The deposit copies of the photographs must also be submitted in a digital format, either through the electronic database or by mailing the files on a CD to the Copyright Office. Applicants must list each photograph in the application by title and file name, and for published photos, the month and year of publication.”

To qualify for group registration, all the photographs in the application must be created by the same “author.” If the photos are works for hire owned by the same employer, they may be filed together in a single application even if they were actually taken by different individual photographers, according to Attorney Doppelt.

Trademark Lawyers Warn – Get It In Writing!

Visitors to Key West may have enjoyed sipping a cafe con leche at Sandy’s Cafe, a venerable Cuban restaurant that’s been on White Street since 1984. The restaurant was founded by Inocente “Sandy” Santiago, who came to Key West from Cuba in 1943, and later opened the restaurant next to his laundromat. In 1995 Sandy’s friend Fernando Caceres took over the operation of the restaurant, and continued to run it, paying monthly rent to Sandy’s company.

After Sandy died in 2016, relations between the families became strained. Caceres launched a food truck and a bakery using the Sandy’s name, and filed trademark applications in the United States Patent and Trademark Office for the Sandy’s trademark. Sandy’s son, also called Sandy, eventually evicted Caceres from the building, whereupon Caceres opened “Sandy’s Café” half a block down the street from the still operating original Sandy’s location. Both families claim ownership of the Sandy’s trademark – the Santiago family based on the fact that it is, after all, their name, and their building. They claim that Caceres was nothing more than a tenant with no rights in the Sandy’s name other than as a licensee. Caceres, on the other hand, asserts that Sandy Sr. “sold” him the restaurant in 1994, along with the trademark and all the goodwill.

According to Trademark Lawyer Ava Doppelt of the trademark law firm of Allen, Dyer, Doppelt + Gilchrist, in Orlando, Florida, both sides have filed claims and counterclaims in a lawsuit asserting ownership of the Sandy’s trademark, and each side is requesting that the court issue a preliminary injunction to stop the other side from representing itself as the true and original Sandy’s Café. A hearing is scheduled this month on those motions, but no matter what happens at the hearing, unless the case is settled, it will move forward until a jury resolves the dispute.

According to Attorney Doppelt: “the lesson here is that the parties should have memorialized their relationship before they became enemies. The truth is that as friends, they probably never thought about trademarks or licensing or quality control; everything was just working fine. Only when things changed did they have to fall back on the “oral trademark license” that the Santiagos supposedly granted to Caceres, and the oral “sale” that supposedly took place in 1994.” Both parties point to various expenditures they made for the restaurant, as well as articles over the years that associated one or the other with the restaurant. Ms. Doppelt explains: “but the ultimate decision on ownership could go either way. It’s now become a matter of who said what, and whose version of the facts is most believable. This is not how you want disputes about your business assets to be resolved. A written contract may not prevent litigation, but at least it will require the parties to consider and resolve questions about their relationship while they are still talking.”

Lawyers Warn Business Owners to Be Careful After Receiving A Cease and Desist Letter

You’ve received the dreaded cease and desist letter alleging your company is infringing someone else’s patent—but what’s the next steps? According to Intellectual Property Lawyer Brock Hankins, of the Florida law firm of Allen, Dyer, Doppelt + Gilchrist, “first, you need to consider contacting an attorney, since every case is unique and may require special action. A close second, the company should issue a memo to all relevant employees once a potential claim is known ensuring that any relevant documents are not destroyed. This is true even if no lawsuit has been filed.”

Over the past several years, destruction of relevant evidence—known as spoliation—has assumed a level of importance in IP litigation which warrants very careful attention. According to Attorney Hankins: “claims of spoliation and motions seeking discovery sanctions for failure to preserve relevant ESI cause litigants and courts to take costly and time-consuming detours from the litigation.”

Many companies are familiar with preserving documents, however there are small, but very important wrinkles that companies should take into consideration when faced with potential patent infringement action. As an example, Mr. Hankins explains “the relevant documents that need to be preserved are often different than in most cases encountered by companies. Relevant documents that need to be preserved during patent litigation include, and should not be limited to, documents relating to the design and development of the product they allege infringes, communications—internal and external—regarding the product, sales information, and discussions about the patent owner or products sold by the patent owner.”

The Supreme Court Changes the Law of Patent Protection

On May 30, 2017, the Supreme Court of the United States issued an opinion in Impression Products, Inc. v. Lexmark International, Inc., where, according to patent lawyers, the Court overturned a 25 year-old standard on the patent exhaustion doctrine.

According to patent lawyer Brock Hankins of the Florida law firm of Allen, Dyer, Doppelt + Gilchrist, the dispute related to the toner that printers use to make images on printed page. Lexmark owns a number of patents with respect to the toner cartridges and sells the cartridges to consumers around the world. When a cartridges run out of the toner they can be refilled and reused. Companies recognized the opportunity to buy empty Lexmark cartridges from consumers, refill the toner, and the resell the cartridges to new consumers at a discounted price.

With respect to the patent exhaustion doctrine, two questions were presented to the Court in Impression Products v. Lexmark:

(1) “Whether a patentee that sells an item under an express restriction on the purchaser’s right to reuse or resell the product may enforce that restriction through an infringement lawsuit;”

(2) “whether a patentee exhausts its patent rights by selling its product outside the United States, where American patent laws do not apply.”

Mr. Hankins explains that “the Court sided against Lexmark for both questions. First, the Court found that Lexmark had exhausted its patent rights in those cartridges the moment it sold them. Second, the Court found that although the first sale doctrine is not explicit in the Patent Act, the application of the same doctrines are no less direct because the basis of patent exhaustion is an antipathy toward restraints on alienation.”

The implications for patent owners—particularly those that operate around the globe—are considerable. Patent owners may seek to raise prices for goods sold abroad because of the weakening of patent owner rights.

Allen, Dyer, Doppelt, + Gilchrist, P.A.

Address: 255 South Orange Avenue, Suite 1401, Orlando, Florida 32801
Tel: 407-841-2330
Toll Free: (877) 886 8810
Fax: 407-841-2343
Email: [email protected]
Website: https://allendyer.com/