Screen shot from YouTube counter notification tutorial

In Terms of Use and the Digital Millennium Copyright Act (DMCA), I discussed DMCA provisions pertaining to takedown notices. This post discusses how an online service provider should respond to a takedown notice and the role of the counter notification.

17 U.S.C. Section 512(c)(1)(C) states that for a provider to be protected by the DMCA, it must respond to a valid takedown notice by “respond[ing] expeditiously to remove, or disable access to, the material that is claimed to be infringing….”

Receipt of Counter Notification

Section 512(g)(2) goes on to state that once the material has been removed or access has been disabled, the provider must take additional steps to maintain DMCA protection.

• The provider must take reasonable steps to notify the subscriber (the person who provided the material) that it has been removed or access has been disabled.
• Upon receipt of a counter notification (described below), the provider must forward the counter notification to the person who provided the takedown notice and must inform that person that the material, or access to it, will be reinstated within ten business days.
• The provider must reinstate the material and access to it within 10-14 business days unless the provider’s designated agent receives from the person who provided the counter notification notice that the person who filed the takedown notice has filed a lawsuit seeking to restrain the subscriber’s infringing activity.

Counter Notification Contents

Section 512 (g)(3) states that a counter notification must include substantially the following.

• A physical or electronic signature of the subscriber.
• Identification of the removed or disabled material and its former location.
• A statement, under penalty of perjury, of a good-faith belief that removal or disabling the material was the result of mistake or misidentification.
• The subscriber’s name, address and telephone number; and a statement that the subscriber will consent to court jurisdiction and will accept service of process from the person who filed the takedown notice.

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

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From late 2004 to early 2016, I published a not-quite-monthly email newsletter on various business-related legal topics – what I called my “monthly missives“.

I recently compiled the nearly 100 emails and have made the collection available on the Downloads page.

The emails are organized by subject matter:

• Corporate / Business Entity Matters
• Employment / Termination
• Intellectual Property / Licensing
• Miscellany

If you are interested, just look for Dana Shultz’s “Monthly Missives” Compilation on the Downloads page.

Photo credit: Doru Lupeanu via FreeImages

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Monthly Missives Compilation Now Available appeared first on The High-touch Legal Services® Blog...for Startups!.

Until recently, trade secrets were solely a matter of state law.  However, on May 11, 2016, President Obama signed the DTSA, the Defend Trade Secrets Act of 2016.

Because of the DTSA, trade secret misappropriation suits with an interstate component now can be filed in federal court. For more information about civil and criminal enforcement, please see Trade Secrets Receive Federal Protection.

DTSA Protection of Whistleblowers

The purpose of this post, however, is to explain how the DTSA protects employee and independent contractor whistleblowers who want to disclose companies’ trade secrets!

The DTSA specifies that employees, contractors and consultants have immunity from liability for trade secret disclosure under any of the following circumstances.

• In confidence to government officials or attorneys solely for the purpose of reporting or investigating a suspected violation of law.
• In a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal.
• Subject to certain limitations, in a lawsuit alleging company retaliation, to an attorney and in court proceedings.

Obligation to Provide Notice

Furthermore, companies are obligated to notify employees, contractors and consultants concerning that immunity in new or amended agreements that govern the use of trade secrets. A company that fails to provide such notice will not be able to recover exemplary damages or attorney fees in a suit against such individual.

Implication: If your company enters into a new agreement or amends any agreement with an employee, contractor or consultant, you should ensure that the contract provides notice of the immunity discussed above.

Photo credit: Wikipedia

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post DTSA (Defend Trade Secrets Act) Requires Notice to Employees appeared first on The High-touch Legal Services® Blog...for Startups!.

This post discusses the civil and criminal protections for trade secrets available since May 12, 2016 under the federal Defend Trade Secrets Act (DTSA).

Relevant definitions in the DTSA roughly follow – with numerous modest differences – those in the Uniform Trade Secrets Act , which has been adopted, with various modifications, by almost all states.

Definitions – Trade Secrets and More

Definitions are set forth in 18 USC Section 1839, as amended. The most important, for the purposes of this post, include the following (emphasis added).

[T]he term “trade secret” means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if—

(A) the owner thereof has taken reasonable measures to keep such information secret; and

(B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information[.]

[T]he term “misappropriation” means—

(A) acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or

(B) disclosure or use of a trade secret of another without express or implied consent by a person who—

(i) used improper means to acquire knowledge of the trade secret;

(ii) at the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret was—

(I) derived from or through a person who had used improper means to acquire the trade secret;

(II) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or

(III) derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade secret; or

(iii) before a material change of the position of the person, knew or had reason to know that—

(I) the trade secret was a trade secret; and

(II) knowledge of the trade secret had been acquired by accident or mistake[.]

[T]he term “improper means”—

(A) includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means; and

(B) does not include reverse engineering, independent derivation, or any other lawful means of acquisition[.]

Civil and Criminal Enforcement

Under the DTSA, “[a]n owner of a trade secret that is misappropriated may bring a civil action under this subsection if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce.”

Civil remedies under 18 USC Section 1836, as amended, include:

• Injunctive relief.
• In extraordinary cases, civil seizure to prevent propagation or dissemination of the trade secret .
• An award of damages for actual loss, or damages for unjust enrichment, or a reasonable royalty.
• In the event of willful and malicious misappropriation, exemplary damages in an amount up to twice the damages awarded as specified above.
• Under certain circumstances, and award of attorneys’ fees to the prevailing party.

Criminal penalties under 18 USC Section 1832(b), as amended, include a fine of not more than the greater of $5,000,000 or three times the value of the stolen trade secret as well as criminal forfeiture of related goods.

Photo credit: Wikipedia

Related post: DTSA (Defend Trade Secrets Act) Requires Notice to Employees

Dana H. Shultz, Attorney at Law  +1 510-547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Trade Secrets Receive Federal Protection appeared first on The High-touch Legal Services® Blog...for Startups!.

Novelty and non-obviousness are requirements for a utility patent to be granted in the United States.

This post explains the meaning of novelty and non-obviousness. I have based this on my answer to a Quora question. Please see What exactly defines novelty and non-obvious in regards to patenting?

USPTO on Novelty and Non-obviousness

I have copied, below (emphasis added), portions of what the U.S. Patent and Trademark Office says about these criteria. For more information, please see General information concerning patents.

Novelty:

In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:

“(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or

“(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”

Non-obviousness:

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post What are Novelty and Non-obviousness? appeared first on The High-touch Legal Services® Blog...for Startups!.

The U.S. Copyright Office maintains designated agent records under the Digital Millennium Copyright Act (DMCA). The Office recently announced that will be moving from paper to an online system.

DMCA Background

The DMCA protects online service providers against liability for user-provided content that infringes third parties’ copyrights. (Please see Terms of Use and the Digital Millennium Copyright Act (DMCA) .) However, there are several requirements for that protection to exist.

One of the requirements is that the service provider must designate an agent that will receive notifications of claimed infringement.

Until now, service providers have identified the designated agent via a paper form. (Please see the Interim Designation of Agent to Receive Notification of Claimed Infringement.)

Designated Agent Records Going Online

However, on November 1, 2016 the Copyright Office issued a final rule pertaining to designation of agents under the DMCA. The Copyright Office’s announcement included the following information:

To modernize its practices, the Office has created a new fully-electronic online system through which service providers can more efficiently submit and update, and the public can more easily search for and find, designated agent information. The adopted final rule governs service provider use of the new system and updates what is required of service providers to remain compliant with section 512(c)(2).

The new regulations are effective as of December 1, 2016, the same date that the new electronic system and directory will be launched. Any service provider that has previously designated an agent with the Office will have until December 31, 2017 to submit a new designation electronically through the new online registration system.

As part of the transition to the new system, the Office’s present public directory of designated agents, generated by service providers’ paper filings, will be phased out on December 31, 2017. Until that time, an accurate designation in the old paper-generated directory will continue to satisfy the service provider’s obligations under section 512(c)(2), and the public will need to continue to search the paper-generated directory if the service provider is not yet listed in the new electronically-generated directory.

Implications for Service Providers

As a result, the most important implications for service providers who want DMCA protection are as follows.

• Beginning December 1, 2016, service providers need to use the new online system to designate agents. (The link to that system in the preceding sentence will not be effective until that date.)
• Any existing (paper) designations must be replaced by by online designations by December 31, 2017.
• Perhaps most significantly, designations will expire after three years. Accordingly, to keep designations effective, they will need to be renewed every three years.

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

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Creativity is important socially and aesthetically. It also is required for a work to be copyrightable.

The Compendium of U.S. Copyright Office Practices is the administrative manual of the Register of Copyrights. The Compendium concerns Title 17 of the United States Code and Chapter 37 of the Code of Federal Regulations.

Copyrightability – Compendium Section 302

Section 302 of the Compendium discusses the requirements for a work to be copyrightable (emphasis added).

In determining whether a work is copyrightable, the Office analyzes questions such as:

• Is the work eligible for copyright protection in the United States?
• Has the work been fixed in a tangible medium of expression?
• Was the work created by a human author?
• Does the work constitute copyrightable subject matter?
• Is the work sufficiently original?
  • Was the work independently created?
  • Does the work possess at least some minimal degree of creativity?

If the answer to all of these questions is “yes,” the work is copyrightable and the claim may be registered, as long as there are no other issues in the registration materials that raise questions concerning the claim and as long as the other legal and formal requirements have been met.

Creativity – Compendium Section 308.2

Section 308.2 of the Compendium cites various cases to explain the creativity requirement (citations omitted below).

A work of authorship must possess “some minimal degree of creativity” to sustain a copyright claim.

“[T]he requisite level of creativity is extremely low.” Even a “slight amount” of creative expression will suffice. “The vast majority of works make the grade quite easily, as they possess some creative spark, ‘no matter how crude, humble or obvious it might be.’”

An author’s expression does not need to “be presented in an innovative or surprising way,” but it “cannot be so mechanical or routine as to require no creativity whatsoever.” A work that it is “entirely typical,” “garden-variety,” or “devoid of even the slightest traces of creativity” does not satisfy the originality requirement. “[T]here is nothing remotely creative” about a work that merely reflects “an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course.” Likewise, a work “does not possess the minimal creative spark required by the Copyright Act” if the author’s expression is “obvious” or “practically inevitable.”

Although the creativity standard is low, it is not limitless. “There remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent. Such works are incapable of sustaining a valid copyright.”

Creativity – Real-world Examples

I have answered several Quora questions that pertain to creativity and copyright.

• Is there a Copyright on single lines of a song? – Each line of a song must be examined to determine whether there is sufficient creativity to merit copyright protection.
• Are example sentences in dictionaries copyrighted? – Similarly, each example sentence in a dictionary would need to be examined.
• If someone were to create a computer program that generated every possible combination of musical notes, would they own the copyright to all that music (aside from music already composed)? – Here, the answer is clear. Computer production of every note combination would be purely mechanical, thus the work would not be copyrightable.

See all posts about copyright.

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Creativity and Copyright appeared first on The High-touch Legal Services® Blog...for Startups!.

This post explains why the various types of intellectual property (“IP”) cannot protect a mere idea. However, IP may protect items that one creates based on such an idea.

I first wrote about this subject on Quora. Please see Which types of intellectual property protection can I receive for my idea?

In the U.S., it is not possible to receive intellectual property protection for an idea, per se. However, as is discussed further below, it may be possible to to use an idea as the inspiration to create something that can receive IP protection.

Types of Intellectual Property Protection

The most important types of intellectual property protection include utility patents, copyrights, trademarks, and trade secrets.

Utility patent: You cannot obtain a patent on an idea. However, if the idea leads to a novel, non-obvious, useful invention, then you may be able to obtain a patent for that invention.

Copyright: An idea is not subject to copyright protection. However, if that idea leads to a work of authorship (such as a document, software, or art), then a copyright will attach to that work as soon as it is fixed in a tangible medium.

Trademark: An idea is not subject to trademark protection. However, if the idea leads to a unique name for a product, then you may be able to obtain a trademark registration for that name.

Trade secret: An idea, by itself, is not subject to trade secret protection. However, if that idea leads to information that has economic value because it is not generally known and you take reasonable efforts to maintain that information in confidence, then that information may be subject to trade secret protection.

The Bottom Line

In summary, there is no point asking about IP protection for an idea. However, if that idea leads to one or more suitable creations, then those creations may be eligible for IP protection.

This is part of Dana Shultz’s Canonical Questions on the Law series of questions and answers about legal issues, concepts and terminology.

See all posts about intellectual property.

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Which Types of Intellectual Property Can Protect an Idea? appeared first on The High-touch Legal Services® Blog...for Startups!.

This post discusses how much one company’s product can look like another company’s product without creating intellectual property problems. It largely copies a Quora answer that I wrote recently. Please see How much can my product look like another company’s product without infringing the other company’s intellectual property rights in that product?

Product Look: Trade Dress

As concerns one company’s product looking like another company’s product, the relevant intellectual property right is trade dress, which is a type of trademark right.

Wikipedia explains trade dress as follows:

Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products; to prevent a consumer from buying one product under the belief that it is another.

Here is the heart of the answer to this question: Your product can be similar enough to let the consumer know that it fills the same niche as the other company’s product, but it can’t be so similar that the consumer thinks your product came from the other company.

Product Look: An Example

Major retailers such as Costco, CVS and Safeway are great at creating competing products that are sufficiently similar, but not too similar, to other companies’ products.

Consider this example:

The name brand product, Vita Coco, is on the right. Costco’s competing (Kirkland Signature brand) coconut water is on the left. Here is how Kirkland made its product sufficiently similar, but not too similar:

• Both packages have blue backgrounds, but Costco’s blue is darker.
• Both packages have coconut palm trees, but they are of different sizes and have different positions.
• Vita Coco’s package says ”hydrate naturally”, whereas Costco’s says “Naturally Hydrating!”
• Vita Coco’s package says “never from concentrate”, whereas Costco’s says “Not from Concentrate”.
• Costco uses fonts that are different than those used by Vita Coco.
• Costco’s text includes horizontal and vertical elements, whereas Vita Coco’s is entirely horizontal.

In summary, if a consumer sees these two products next to one another, s/he will know right away that (a) these are similar products, but (b) they are produced by different companies. Accordingly, Costco has not infringed Vita Coco’s trade dress rights.

This is part of Dana Shultz’s Canonical Questions on the Law series of questions and answers about legal issues, concepts and terminology.

Check out all posts about trade dress.

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post How Much Can My Product Look Like Another Company’s Product? appeared first on The High-touch Legal Services® Blog...for Startups!.

Many people are familiar with copyrights for literary and musical works, movies, and the like. This post is about a different type of copyright, the design copyright.

Title 17, Chapter 13 of the United States Code contains the relevant statutes.

Design Copyright Elements

17 USC Section 1301(a)(1) identifies the basic elements of a design copyright (emphasis added):

The designer or other owner of an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public may secure the protection provided by this chapter upon complying with and subject to this chapter.

The essential point is that a useful article must have an attractive or distinctive appearance. Example: A lamp with a base that looks like a sculpture.

17 USC Section 1308 sets forth the copyright holder’s exclusive rights:

The owner of a design protected under this chapter has the exclusive right to—

(1) make, have made, or import, for sale or for use in trade, any useful article embodying that design; and

(2) sell or distribute for sale or for use in trade any useful article embodying that design.

This illustrates the major difference between design copyright and other copyrights.

• Exclusive rights associated with traditional copyrights include the rights to (as applicable) reproduce, distribute, publicly perform, publicly display, and make derivative works of the copyrighted work.
• Exclusive rights associated with a design copyright focus on manufacture and sale of articles embodying the design. In this respect, a design copyright is similar to a design patent.

Remedies for Infringement

17 USC Section 1323 discusses amounts that a copyright holder may recover for infringement, which include:

• Compensation for the infringement, plus the greater to $50,000 or $1 per infringing copy.
• As an alternative to the foregoing, the infringer’s profits from the infringing activity.
• Reasonable attorney’s fees.

Furthermore, 17 USC Section 1322 permits a court to issue injunctions against infringement.

Related post: Copyright Protection in One Easy Lesson

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Design Copyright Explained appeared first on The High-touch Legal Services® Blog...for Startups!.

This post explains how to make sure that you own work product and intellectual property (IP) when you use a freelancer service. Most of the following first appeared on Quora. Please see How can I protect my source code and its Intellectual Property Right while working with a very large team of remote freelancers (Upwork and Fiverr etc)? Are freelancing platforms ensuring IP protection?

When you use a freelancing platform, you need to ensure that you have an agreement with each freelancer. And that agreement must assign to you all work product and all intellectual property rights.

I will explain this using Upwork as an example.

Create a Freelancer Contract

Section 3.1 of Upwork’s User Agreement states, in part, that the parties are responsible for putting such an agreement in place (emphasis added):

If a Client and Freelancer decide to enter into a Service Contract, the Service Contract is a contractual relationship directly between the Client and Freelancer. Client and Freelancer have complete discretion both with regard to whether to enter into a Service Contract with each other and with regard to the terms of any Service Contract. You acknowledge, agree, and understand that Upwork is not a party to any Service Contract, that the formation of a Service Contract between Users will not, under any circumstance, create an employment or other service relationship between Upwork and any Freelancer or a partnership or joint venture between Upwork and any User.

With respect to any Service Contract, Clients and Freelancers may enter into any written agreements that they deem appropriate (e.g., confidentiality agreements, invention assignment agreements, assignment of rights, etc.) provided that any such agreements do not conflict with, narrow, or expand Upwork’s rights and obligations under the Terms of Service, including this Agreement and the applicable Escrow Instructions.

You and the freelancer need to enter into such a contract. And the contract must ensure that you own the freelancer’s work product and IP!

Include the Right Contract Terms

Upwork provides Optional Service Contract Terms that the parties may use, if they wish. Section 6.4 of those Terms addresses this post’s central issue:

6.4 OWNERSHIP OF WORK PRODUCT AND INTELLECTUAL PROPERTY

Upon Freelancer’s receipt of full payment from Client, the Work Product (except for any Background Technology), including without limitation all Intellectual Property Rights in the Work Product (except for any Background Technology), will be the sole and exclusive property of Client, and Client will be deemed to be the author thereof. If Freelancer has any Intellectual Property Rights to the Work Product that are not owned by Client upon Freelancer’s receipt of payment from Client, Freelancer hereby automatically irrevocably assigns to Client all right, title and interest worldwide in and to such Intellectual Property Rights. Except as set forth above, Freelancer retains no rights to use, and will not challenge the validity of Client’s ownership in, such Intellectual Property Rights. Freelancer hereby waives any moral rights, rights of paternity, integrity, disclosure and withdrawal or inalienable rights under applicable law in and to the Work Product. If payment is made only for partial delivery of Work Product, the assignment described herein applies only to the portion of Work Product delivered and paid for.

In summary, the freelancer service will not automatically ensure that you own all work product and IP rights. Only you can make sure that you protect yourself!

Check out all posts about independent contractors.

Dana H. Shultz, Attorney at Law +1 510-547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Protect Your IP when You Hire a Freelancer appeared first on The High-touch Legal Services® Blog...for Startups!.