Author Archives: Joshua Graubart

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About Joshua Graubart

Joshua Graubart is an Intellectual Property Attorney; owner of the Law Offices of Joshua Graubart, P.C. in New York, New York.
EMAIL: jggraubart@graubartlaw.com
BIO: About Joshua
PHONE: 646-781-9321

Another Aspect of Design: Trade Dress
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Authored by , re: Intellectual Property, LAW RELATED ARTICLES, on .
Another Aspect of Design: Trade Dress | Joshua Graubart

{4:30 minutes to read} In my last post, I discussed the design patent, a form of protection available under the Patent Act to protect designs that are “primarily ornamental” rather than those which – like most inventions one normally thinks of in connection with the Patent Act – are “primarily functional.” Design patent protection can coexist simultaneously with copyright protection for the design as a graphic or sculptural work. In addition to patent and copyright law, non-functional designs can also be protected under the federal Trademark Act (also known as the Lanham Act), and under state trademark and unfair competition law. As discussed previously on this blog (see “What is Intellectual Property?”), trademark law serves to protect non-functional features of a product which identify to consumers the product’s source, and distinguish the product from similar products supplied by competitors. Marks are frequently words (e.g., “Nike”) or logos (e.g., the Nike “swoosh”); in certain circumstances, even colors and scents have been registered as marks by the U.S. Patent & Trademark Office.[1] (More on these sorts of outré marks in a future post.)

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Copyright and Patents
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Authored by , re: Intellectual Property, LAW RELATED ARTICLES, on .

{3:06 minutes to read} As discussed previously, in the United States, copyright and patent law are explicitly anticipated in Article I, section 8, clause 8 of the U.S. Constitution, which accords to Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” It is worth pointing out that the words “science” and “useful arts” were understood somewhat differently in the 18th Century than they might be today. “Science,” in the parlance of the era, had a meaning closer to “knowledge”[1]; the “useful arts” were what we might now call “technology.”[2] Accordingly, the references to “science” and “writings” underpin the present copyright law; the references to “useful arts” and “discoveries” underpin the present patent law.

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Termination Rights Update: The (British) Empire Strikes Back
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Authored by , re: Business Law, LAW RELATED ARTICLES, on .

{7:12 minutes to read} OK, the U.K. isn’t the British Empire of yore, but I couldn’t resist the title. In a prior post, we discussed a perennial problem faced by copyright legislators. Creators often have little bargaining power at the outset of their careers, and neither creators nor production companies (here meaning the industry gatekeepers: publishers, production companies, record companies, etc.) have a reliable method for measuring the commercial success of a work before it’s published. Consequently, if copyright legislation allows irrevocable transfer of the copyright in a work, creators will inevitably grant to production companies for a pittance masterpieces with massive commercial upsides, in which they rarely share.

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Copyright and Trademark: Titles, Words & Short Phrases
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Authored by , re: Intellectual Property, LAW RELATED ARTICLES, on .

{4:12 minutes to read} It is a truism among intellectual property lawyers that no matter how often one may encounter discussion of a “copyrighted word” or a “copyrighted phrase”—and this notion appears frequently in media—copyright law generally does not protect titles, words, slogans or phrases.[1]

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The Blurry Boundaries of Copyright
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Authored by , re: Intellectual Property, LAW RELATED ARTICLES, on .

{3:54 minutes to read} My practice—and accordingly this blog—focuses on copyright, or at least on what we call  “copyright” in the United States. However, “copyright” is only one segment of a broader spectrum called “intellectual property,” and—as is often the case with segments of a spectrum—the boundaries are somewhat arbitrary, and the subject matter can bleed across from one segment into the next. Just so with intellectual property. Indeed—and just to illustrate the fuzziness of even the concept of “copyright”—what we commonly describe as “copyright” subject matter in the United States encompasses segments which much of the rest of the world labels “authors’ rights” (i) and “neighboring rights” or “related rights.” Copyright in the Anglophone world begins with literary property: books and pamphlets. Over time, the realm of copyright expanded to cover maps, charts, graphic art, and more, as technology and culture required. The current definition of works covered by the Berne Convention, the oldest and largest multilateral treaty on copyright protection, includes:

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What is Intellectual Property?
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Authored by , re: Intellectual Property, LAW RELATED ARTICLES, on .

{3:54 minutes to read} “Intellectual property” consists—as the name suggests—of “creations of the mind,” and more specifically, of commercially valuable aspects of those creations. As the name also suggests, “intellectual property” is a subcategory of “property.” Unlike, for example, real property (land) or chattel (other tangible property, such as a car or a horse), intellectual property is intangible: it can’t be seen or picked up, and it has no “natural” form or limits. Unlike land or livestock, it does not exist except to the extent it is created by law. Its boundaries, consequently, follow no “natural” form; rather, its boundaries are solely and precisely those described by law.

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Copyright Small Claims Court: The Devil is in Small Details
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Authored by , re: Business Law, LAW RELATED ARTICLES, on .

{5:24 minutes to read} In a prior post, I mentioned that in September 2013, the U.S. Copyright Office had proposed a copyright small claims court as an alternative to full-blown civil litigation. Almost three years later, the Copyright Office’s proposal has moved onto the legislative agenda as a bill (H.R. 5757) in the House of Representatives sponsored by Rep. Hakeem Jeffries (D-NY). H.R. 5757 largely follows the guidelines recommended by the Copyright Office. It would establish an optional, alternative forum for copyright infringement claims, employing a streamlined procedure and a cap on damages set at $15,000 per work infringed and $30,000 per action (for actions including more than one infringed work). The award of costs and attorney’s fees permitted under the Copyright Act would not be allowed except in cases of bad faith, and even then capped at $5,000.

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Termination Rights, Part 3: The British Commonwealth
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Authored by , re: Business Law, LAW RELATED ARTICLES, on .

{4:18 minutes to read} In a prior post, Termination of Transfer – Part 1, I talked about Congress’s implementation of a two-term copyright structure, of 28 years each, in the US Copyright Act of 1909 (the act which governs copyright in works dated before 1978). The stated purpose was to permit authors a “second bite at the apple,” whereby they could profit anew from the exploitation of their works once the first term expired. As noted in that post, the structure failed to achieve its purpose. However, while Congress went out of its way to justify its 1909 Act structure, the structure certainly wasn’t novel. It was, in fact, the same structure that had been used in prior American copyright acts, and it can be traced back ultimately to the Statute of Anne, [1] the 1709 British statute celebrated as the forebear of modern copyright legislation in the English-speaking world.

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Termination of Transfer Part 2: Clearing the Flaming Hoops
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Authored by , re: Intellectual Property, on .
Termination of Transfer Part 2: Clearing the Flaming Hoops | Joshua Graubart

{3:30 minutes to read} Terminating a transfer of copyright is far more technically complicated than one might expect. As discussed in my last post, the termination of transfer provisions in the current Copyright Act of 1976 are embodied in sections 203 and 304:

  • Section 203 addresses works that were created or transferred on or after January 1, 1978;
  • Section 304 addresses works that were assigned or licensed before January 1, 1978 (the day the 1976 Act went into effect).

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Termination of Transfer – Part 1
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Authored by , re: Intellectual Property, on .
Termination of Transfer – Part 1 | Joshua Graubart

{5:24 minutes to read} It takes money to make money. For most of modern history, artists seeking mass-market success have had to partner with “production companies”—record labels, publishers, and film studios—in order to get their work in front of the public. Though technology has in recent years reduced the burden of that requirement a bit, that very easing has also unleashed a flood of creative work in the market (much of it of indifferent quality) and mainstream success still—perhaps now more than ever—requires funds and expertise in production and promotion. It is instructive, for example, to note that in the past 20 years, only one record—Macklemore & Ryan Lewis’s 2013 Thrift Shop—has topped the Billboard Hot 100 without the backing of a major record label.

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Copyright Class Actions Part 3 – The Class Representative
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Copyright Class Actions Part 3 – The Class Representative | Joshua Graubart

{4:42 minutes to read} In my last post, I discussed the first set of criteria which a court must consider in certifying a potential class action: is a class the most efficient way to serve justice? If the court determines that a class is appropriate, it must then turn to the second set of criteria: whether the claimant(s) initiating the suit—the “representative plaintiffs”—are suitable to represent the class members. Again, it must satisfy itself as to two questions:

  1. Typicality: Are the claims made by the proposed class representatives typical of the claims of the class members as a whole?
  2. Adequacy: Will the proposed class representatives fairly and adequately protect the interests of other class members?

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Copyright Class Actions Part 2
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Authored by , re: Intellectual Property, on .
Copyright Class Actions Part 2 | Joshua Graubart

{5:06 minutes to read} As discussed in myprior post, litigating a low-value copyright infringement claim is often simply not worth the time and expense required. However, such a claim can sometimes be made cost-effective by aggregating it with similar claims in a class action. A single copyright holder with a small claim can serve as a representative of a “class” of similarly affected rightsholders. The “class” in this example would be a large group of copyright holders, each of whom owns a work which has been infringed in the same way by the defendant(s). However, it is not enough for a copyright holder to determine that a class of similarly-situated defendants exists. The court must investigate and certify that a class is the most efficient way to obtain justice, and whether the copyright holder initiating the suit is a suitable person to represent the class. In this post, I will discuss how a court determines whether a class is an appropriate vehicle for obtaining justice.

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The Copyright Infringement Class Action: Cost-Effective Recovery for Low-Value Cases
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Authored by , re: Intellectual Property, on .
The Copyright Infringement Class Action: Cost-Effective Recovery for Low-Value Cases | Joshua Graubart

{3:54 minutes to read} No matter the value of an infringement claim, there is no way to enforce a copyright claim except – literally – to make a federal case of it. The federal courts have exclusive jurisdiction over copyright disputes,[1] so copyright infringement actions must be brought in the federal courts. Federal courts, unlike many state courts, do not have a “small claims” division.[2] Consequently, even a low-value copyright infringement claim is processed using the same rules as a multi-billion dollar commercial dispute. The cost of prosecuting a low-value copyright action may be more than the rightsholder can expect to receive in damages.

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Valuing a Copyright Infringement Claim
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Authored by , re: Intellectual Property, on .
Valuing a Copyright Infringement Claim | Joshua Graubart

{4:12 minutes to read} “How much is my claim worth?” This vexing question returns every time I consider a client’s copyright infringement claim. Attempting to predict a court verdict is a fool’s game, but there are some basic markers to guide us in valuing a claim. Section 504 of the US Copyright Act provides 2 alternative methods of calculating damages.

  1. “Actual damages” – familiar to litigators the world over
  2. “Statutory damages” – an unusual method, often intriguing to non-U.S. claimants – that can be quite valuable to copyright holders

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Public Performance, Communication & Display: What Is “Public”?
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Public Performance, Communication & Display: What Is “Public”| Joshua Graubart

{3:06 minutes to read} As discussed in earlier posts, among the exclusive rights accorded to copyright holders is the right to perform or display their works publicly, or to authorize others to do so. Consequently, copyright law generally limits the exclusive rights of the copyright holder, and thus permits certain private uses of a protected work without the rightsholder’s permission, whereas public exploitation requires permission and/or payment. It follows that the definition of “public” is of great importance and varies from jurisdiction to jurisdiction.

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Public Performance of Music: Dramatic, or Non-Dramatic?
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Public Performance of Music Dramatic, or Non-Dramatic | Joshua Graubart

“On entering an opera or concert hall in Paris you come face to face with a long counter, presided over by three gentlemanly-looking individuals in evening dress, to whom your ticket is given, they replacing it with another, by which you are seated.” — New York Musical Courier, Oct. 1894. {4:06 minutes to read} Two of these Parisian gentlemen were representatives of two different French performing rights societies (PROs). (The third, incidentally, was a representative of the Parisian public hospital system, which was then supported by a performance tax.)

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The Right of Public Performance
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The Right of Public Performance | Joshua Graubart

Among the exclusive rights accorded to copyright holders is the right to perform their works publicly, or to permit others to do so. Generally, a public performance includes not only a “live” performance, such as a concert or play, but also the public exhibition or playback of a recording (such as a film or sound recording), and the public transmission or broadcast of live or recorded performances (such as by radio and television).

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Copyright Registration – Fact and Myth
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Copyright Registration – Fact and Myth | Joshua Graubart

Generally speaking, works published in the US before January 1st, 1978, were only protected by copyright if they were registered at or before publication. Under the current Act, all works are subject to copyright protection from the moment of their creation, regardless of registration.

Unfortunately, this change has made creators complacent about registration. Why register if the work is protected without registration?

Facts about Copyright Registration

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