Tag Archives: Intellectual Property

Florida has Trademarks? Yes, and it was just revised!

Trademark Registration

On June 7, 2019, Governor DeSantis approved HB 445, a bill that revised the classification system of Florida’s Registration and Protection of Trademarks Act (see Chapter 495 of the Florida Statutes).  The purpose of the revision was to align the Florida trademark classification of goods and services to that of the United States Patent and Trademark Office (USPTO), which is the federal trademark authority.  The new changes revise most of Florida’s 45 trademark classifications.  A copy of the changes can be found here.

The USPTO breaks up the 45 classes into two groups.  There are 34 classes for products and 11 classes for services.  When applying for a trademark, at the USPTO or in Florida, the owner must select the class or classes where the brand is being used.  For example, if the business uses a brand in the real estate business, then they likely fit in one of the service-based classes.  If the business also brands their real estate business in related apparel, they may also want to apply for a product-based class.  It is important to select these appropriate class and word the description accurately because you will have to submit evidence of your use of the brand in the applied for classes at the beginning or end of the trademark process.

While federal trademark registrations secured with the USPTO are more commonplace, there are reasons to secure a Florida trademark to protect your brand.  For some business owners, their entire business is focused in Florida and does not extend outside the state.  If there are no plans to expand out of Florida in the future, a Florida trademark may be all the business owner needs.  While a federal trademark registration is often litigated in federal court, a Florida trademark owner may have the ability to file an infringement action in Florida state court, which is relatively rare.

There are pros and cons to litigation in federal court compared to state court.  The business owner should assess the cost/benefit of securing  a Florida trademark and/or a federal trademark as they build their trademark portfolio to protect their valuable branding.  Often overlooked, branding is in important part of your business and steps should be taken to protect your brands.  Otherwise, you may have limited options to enforce your rights should someone copy your branding in a related market.

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

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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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

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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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.

 

ERIC N. ASSOULINE, ESQ.

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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.

 

ERIC N. ASSOULINE, ESQ.

PLEASE NOTE OUR NEW MIAMI ADDRESS

Miami Tower, 100 SE 2nd Street, Suite 3105, Miami, Florida 33131

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The Intersection of IP and Technology

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Registered Patent Attorney Greg Popowitz recently filmed a CLE focused on Understanding Intellectual Property (IP) and Attorneys’ use of Technology.  Greg discussed the important distinctions between patents, trademarks, copyrights, and trade secrets, along with the key considerations when attempting to secure protection for your IP.

The second part of the course is directed at what attorneys should look out for as they use technology. Greg discusses attorneys using efiling, the need to redact sensitive information, ediscovery, social media and websites, and cloud computing (confidentiality). The CLE goes over relevant portions of the Florida Rules of Civil Procedure and Florida Rules of Judicial Administration.

To learn more about the CLE and what CLE credits are available in your state, please visit the National Academy of Continuing Legal Education (NACLE) here.  NACLE is seeking technology credit in Florida as the new technology CLE requirement starts January 1 2017.

For any questions about patents, trademarks, and copyrights, or IP generally, please contact Greg Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Protect Your Tech: Florida Bar CLE Edition

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Earlier this month, I had the distinct pleasure to present at the Florida Bar Basic Technology CLE about how businesses, and their lawyers, can protect technology using Intellectual Property.  This was the first time a Florida Bar Basic CLE was focused on technology.  To keep the CLE interactive, the presentations included live tweeting using the #CLEHistory hashtag, interactive polls with the audience, and post presentation video outtakes.  The interactive nature of the CLE was perfect for a technology focused CLE.

My portion of the CLE focused on how technology is used protect intellectual property, with the focus on patents.  There are several options when determining how to use patent law to protect technology, from design patents to provisional and non-provisional utility patents.  There are key timetables and strategic considerations to assess when protecting your technology, both before and after the technology is finalized.

One of the interactive questions, pictured below,  I posted to the live audience was whether someone could put “patent pending” on a product as soon as a patent application was filed.  The question was posted during my presentation and the audience texted their results to get an immediate response to the question.  36% of the audience correctly chose the right answer of A – Yes.  Meaning you can put patent pending on a product as soon as you file a patent application.  However, the application must remain active, i.e. not abandoned, to continue marking the product as “patent pending.”  Notably, 44% of the audience thought patent pending depended on what type of patent application was filed.  This is not accurate as it does not matter if the patent application is design, provisional, or non-provisional.

assouline & belrlowe, interactive polling

There are many misconceptions about patent law and it is important to consult with a registered patent attorney to review your technology and plan to maximize your protection.  It was an honor to speak at the first Florida Bar Basic Technology CLE and I enjoyed the interactive nature of the CLE.  Check the Florida Bar CLE page as the Technology CLE will be available for download in the near future.

For questions about Intellectual Property matters involving Technology, contact  Greg Popowitz below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

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PANAMA PAPERS – Subpoena Issued to Mossack Fonseca Regarding Daddy Yankee Assets

Miami Attorneys Issued a Subpoena to Mossack Fonseca, of the Panama Papers, regarding Daddy Yankee Assetsassouliene-vielleville-berlowe-2
4/12/16- Eric Assouline, Daniel Vielleville, and Peter Berlowe, with ASSOULINE & BERLOWE, P.A., Miami – Picture from Daily Business Review Article 4-14-2016 By AM Holt

 Keeping the whereabouts of your assets is ok, except when . . .

This is a burning question that has surfaced in light of the Panama Papers.  When is it ok to have off shore accounts?  The simple answer is when you do not owe anyone any money and after you have paid all the taxes that are due on the assets that you wish to keep secret.   See recent article by Real Estate and Corporate Law Partner David Blattner: Have the Panama Papers Taught Us Anything We Didn’t Already Know?

You cannot maintain a secret web of companies, with the intention of hiding this information from creditors to whom you owe money.  That is illegal.

You cannot transfer assets that would be subject to execution by a creditor to an off shore, or out of state company, in order to not pay debts that you owe.  That is illegal.

This is the basis of the investigation that has been opened up as to all the public figures mentioned in the Panama Papers.  Including noted celebrity Daddy Yankee.

In today’s Daily Business Review, South Florida’s prominent daily business paper, one of the headline stories regards Assouline & Berlowe, P.A.’s subpoena issued to Mossack Fonseca, the Panamanian law firm that has gained notoriety for opening off shore accounts for high profile individuals all over the world.

Through their subpoena, Assouline & Berlowe, on behalf of their clients, creditors of Daddy Yankee, are seeking financial information from Mossack Fonseca as to Daddy Yankee’s assets and financial affairs.

A link to the complete article is: http://www.dailybusinessreview.com/home/id=1202754983211/Panama-Papers-Reports-Show-Daddy-Yankee-Might-Have-a-Way-to-Pay-Millions-Owed?mcode=1202617073880&curindex=2

For more information regarding this case, please contact Daniel E. Vielleville, Peter E. Berlowe, or Eric N. Assouline.

assouliene-vielleville-berlowe-2

/12/16- Eric Assouline, Daniel Vielleville, and Peter Berlowe, with ASSOULINE & BERLOWE, P.A., Miami – Photo by Daily Business Review Photographer AM Holt 

 

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