Tag Archives: Attorney Intellectual property protection Miami Florida Trademark Copyright Patent

SCOTUS: Register Your Copyrights to Sue


Artists across the United States that wanted to sue to protect their mental expressions (copyrights) have had to figure out if a copyright registration was required to file a lawsuit, or if simply applying forregistration was enough.   In the Eleventh Circuit, which includes Florida, a plaintiff is required to secure a copyright registration from the U.S. Copyright Office before filing a copyright lawsuit.

On March 4, 2019, in a long-awaited decision, Justice Ginsberg delivered the unanimous opinion of the Supreme Court of the United States (SCOTUS) in Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, et al, No. 17-571, 586 U.S. ____ (March 4, 2019).    The question before the Court was whether registration is secured under Title 17 of the Copyright code by simply filing the application, depositing the copies of the work, and required fee, or if registration occurs once the Copyright Office reviews and registers the copyright.  SCOTUS agreed with the Eleventh Circuit and affirmed that “registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.”  SCOTUS also held that a copyright owner can recover damages for infringement that occurred both before and after registration.

The Fourth Estate decision notes the increased time by the Copyright Office in progressing copyright applications.  Registration processing times have steadily increased from 1-2 weeks in 1956 to numerous months today.  Depending on the type of work, it may take a year.  While the delays are largely attributable to staffing and budgetary shortages that Congress could resolve, it is not within the purview of the courts to cure.

While the average pendency of a copyright application has increased significantly, there is an option to secure a copyright registration faster.  When filing a copyright application, the applicant can select to file the application on an expedited basis.  This often results in the Copyright Office, if appropriate, registering the copyright within 1-2 weeks.  One of the reasons to apply on an expedited basis is the representation that litigation is forthcoming.  However, the filing fees for applying on an expedited basis is over 10 times the normal filing fees, which can be quite costly.

Instead of dealing with expedited filing fees, it is in the interest of copyright holders to apply for protection as early as possible.  If the claimant applies for copyright protection within 90 days from publication, the claimant preserves their ability to seek statutory damages and attorneys’ fees in the event of infringement.  It is important that copyright holders routinely speak with an Intellectual Property attorney to review their portfolio and decide the best ways to protect their mental creations.

For any questions about copyrights, trademarks, or patents, contact Greg Popowitz.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation


213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com


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Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law, Trust & Estates, Probate and Guardianship

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Copyright Law – Supreme Court to Address Recoverable Costs

The Supreme Court of the United States has granted a petition for certiorari in the case styled as Rimini Street, Inc. v. Oracle USA Inc. in order to address split between the circuits as to the types of “costs” that may be recovered under the Copyright Act. 

As framed by the briefs in the case, Question Presented by the petitioner is: Whether the Copyright Act’s allowance of “full costs,” 17 U.S.C. § 505, to a prevailing party, is limited to taxable costs under 28 U.S.C. §§ 1920 and 1821, as the U.S. Courts of Appeals for the 8th and 11th Circuits, have held, or whether the Act also authorizes non-taxable costs, as the U.S. Court of Appeals for the 9th Circuit held.

Currently, there are three (out of twelve) federal circuit courts of appeal which allow certain costs to be recovered.  Those circuits are the First, the Sixth, and the Ninth.  The federal circuit courts of appeal that do not allow recovery of these costs are the eighth and the eleventh (which controls all cases filed in Florida). 

The result of this decision may change the law in the Eleventh Circuit, as to what costs are recoverable under the Copyright Act.




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SCOTUS ALERT: Trademarks and Bankruptcy

On Friday, the United States Supreme Court (SCOTUS) granted a petition for certiorari in the case called Mission Product v. Tempnology, in order to hear a case involving trademark law and bankruptcy law.  The issue that is to be heard relates to what happens to a trademark license when the owner of the brand files for bankruptcy.

Currently, the different Circuit Courts of Appeal are not all in agreement as to what should happen.  In certain particular Circuit Courts of Appeal, the licensor that files bankruptcy can use a particular bankruptcy code provision, identified as Section 363 under the Bankruptcy Code, in order to cancel the right of a licensee to use the bankrupt company’s trademark.  However, in certain other Circuit Court’s of Appeal, the courts have been allowing the trademark licensee the right to continue using the bankrupt’s trademark.

The issue is as much a question of trademark law as it is bankruptcy law.  Under the Bankruptcy Code, the law allows a bankrupt the right to accept or reject a contract, wherein both sides still have obligations.  This is known as an executory contract.  However, Section 363 contains an exemption for certain forms of intellectual property, but it currently does not include trademarks.

The two most well-recognized opinions where the courts’ position diverge is the Seventh Circuit and the First Circuit, which is where the Mission Product case is pending.  In essence, the Mission Product appellate court has held that courts should not impose upon a bankrupt the obligation to continue to monitor how its trademark was being used, which goes to the essence and policy of bankruptcy law.

Never a dull moment in intellectual property and bankruptcy law.




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Protect Your Intellectual Property – Corporate Counsel’s Concern


Over the years, the Firm’s corporate clients have come to us complaining about infringements upon their intellectual property (“IP”). Many times, to their dismay, these clients have found themselves under protected, because the company did little to protect the key ingredients to their corporate success.00089752
At Assouline & Berlowe, we have found that even as IP becomes more accepted as an ingredient in valuing corporate worth, we observe frequent instances of:
• Companies using logos and slogans without obtaining registered trademarks;
• Companies drafting significant amounts of text without obtaining copyright registrations (e.g., websites, instruction manuals, handbooks, brochures, etc.);
• Companies employing and contracting with artists, authors, musicians, web-designers with no clear understanding to who will own the works created;
• Companies creating products without obtaining patents; and,
• Companies creating massive customer lists and proprietary information and taking no action to protect these trade secrets from their former employees and others.
We encourage our clients to protect their IP with a safe and methodical manner. This methodology requires that our clients implement and maintain an Intellectual Property Management Program. An IP Management Program consists of a team of employees focused on developing and performing a set of procedures that (1) recognizes the corporate IP, secures the corporate IP, and maintains corporate IP; (2) exploits the IP; (3) prosecutes IP infringements; and, (4) respects the IP of others.
Step 1: Recognizing, Securing and Maintaining IP’sInitially, a company must designate a person or team charged with the responsibility of creating and enforcing the policies and procedures associated with its IP’s. This person or team must recognize those IP’s that it can patent, copyright, trademark, as well as those IP’s that the company alone considers trade secret, confidential or proprietary.
Products and inventions must be evaluated for patentability, and if so, patented the with the USPTO. Logos, slogans, and trade-names should be trademarked by applying with the USPTO and any State Office. Written, Artistic, and Audio Works should be registered for copyright protection with the US Copyright Office.
Customer lists, designs, formulas, patterns, processes, and strategic and marketing plans must be kept in a secure location and exposed only on a need to know basis. Employment agreements containing trade secret and non-compete provisions must be executed with all employees, with copies in both an individual’s employment file and in a master file for all employees.
Ownership of IP’s must be determined from the start. This means: (i) having employment agreements with employees clearly defining that the fruits of their labor is the intellectual property of the company; (ii) having work-for-hire agreements with vendors that state that the IP’s they create are owned by the company; (iii) having written licensing agreements with anyone who the company allows to use the IP’s.
Once a company has obtained registration of its IP’s, it should use the appropriate recognized symbols on its IP’s, such a ® for Registered Trademark and © for Registered Copyrights.
Step 2: Exploiting IP’s
Companies must look for ways to market and use its IP. This can include contracting for exclusive and non-exclusive licensing of copyrights, trademarks, and patents and franchising of trademark usage. Trademarks and service marks should be used prominently and frequently to establish brand recognition and customer goodwill. Advertising the fact that you maintain Trade secrets can also have a strong affect on branding or the uniqueness of a product. . . for instance a tasty secret recipe. These are just a few of the ways a company can exploit its IP’s
Step 3: Prosecuting IP Infringement
When the companies’ IP are infringed, the company should immediately send out cease and desist letters. If the cease and desist letters are ineffective, lawsuits should be commenced immediately. Where appropriate, injunctions should be sought. This is the case when a former employee steals customer lists or trade secret and proprietary information. In the context of competing patents, trademarks, and copyrights, commencing administrative actions in the appropriate federal or state agency should be considered.
Step 4: Demonstrate and Insist on Respect of the IP Rights of Other Companies
Educate all employees as to what constitutes an IP and what the penalties are for infringement. Companies should perform patent, copyright and trademark searches to see if there IP may be infringing upon another’s IP. Written works should be evaluated for providing proper attribution to other authors. Companies should obtain licenses to use the works or inventions of others when expanding upon already existing IP. Furthermore, companies should not conduct espionage on its competition, and they should carefully scrutinize the intake procedure of new employees that are hired away from the competition.
Costs/Benefits of an Intellectual Property Management Program
While IP Management programs can cost significant amounts of time and money, the attorneys fees of one lawsuit alone can far exceed the cost of implementation. In today’s competitive marketplace, no company should be without an Intellectual Property Management Program. Call us to discuss starting an IP Management Program for your company.

Peter E. Berlowe, Esq.
Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, and Corporate Law
Miami · Ft. Lauderdale · Boca Raton

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January 25, 2013 · 11:15 pm