Another Aspect of Design: Trade Dress

{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.

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Copyright and Patents

Copyright and Patents by Joshua Graubart{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.”

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Copyright and Trademark: Titles, Words & Short Phrases

Copyright and Trademark: Titles, Words & Short Phrases by Josh Graubart

{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]

In the United States, the Code of Federal Regulations specifically lists “[w]ords and short phrases such as names, titles and slogans” as examples of works not subject to copyright, and directs the Copyright Office not to register them.[2] However, U.S. courts have occasionally suggested that copyright claims in short phrases might be viable in exceptional cases, provided that the phrase “exhibits sufficient creativity.”[3] Read more

The Blurry Boundaries of Copyright


{3:54 minutes to read} My practice—and accordingly this blog—focuses on copyright, or at least on what we call The Blurry Boundaries of Copyright by Joshua Graubart “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:

… every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.(ii)

This definition—which is also incorporated into the TRIPS Agreement, the general intellectual property treaty to which countries who wish to enter the World Trade Organization (WTO) must adhere—more or less covers the “authors’ rights” subsegment. The keen-eyed, however, will note what is not covered: sound recordings; live performances of actors or musicians; computer programs; database compilations, to name a few examples. Many of these are covered under the rubric of “neighboring rights” or “related rights” in other countries’ laws, or are absorbed into “copyright” under US law.

But certain other categories do not easily fit in either the “authors’ rights” or the “neighboring/related rights” boxes. Among the most ambiguous is “industrial design,” a category which can include—among other things—fashion design, vehicle design, and furniture design. In a future post, I will discuss the difficulties of intellectual property protection for industrial design.

Joshua GraubartJoshua Graubart





(i) “Authors’ rights,” incidentally, usually includes a subsegment called “moral rights,” which in the United States is so restrictive in scope as to raise the question whether it exists at all except with respect to certain works of “fine art.”
(ii) Berne Convention, Art. 2(1).



Copyright Small Claims Court: The Devil is in Small Details

{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: The Devil is in the Small Details by Joshua Graubart 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

Termination Rights, Part 3: The British Commonwealth by Joshua Graubart{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 Cont’d: Clearing the Flaming Hoops

Termination of Transfer Part 2 Cont’d: Clearing the Flaming Hoops By Joshua Graubart{4:48 minutes to read} As discussed in the last post, terminating a transfer of copyright is far more technically complicated than one might expect. This blog continues that discussion by outlining who can terminate and when.

Who can terminate?

Only a limited set of people can terminate a transfer:

  • If the author is still alive, only he/she can terminate any transfer.
  • If the author is dead, only certain combinations of the author’s widow(er), children, and grandchildren can effect a termination.
  • If there are no such heirs or they all die before the author, the author’s executor or a trustee of his estate can effect a termination.

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Termination of Transfer Part 2: Clearing the Flaming Hoops

Termination of Transfer Part 2: Clearing the Flaming Hoops By 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

Termination of Transfer - Part 1 by 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 Shophas topped the Billboard Hot 100 without the backing of a major record label. Read more

Copyright Class Actions Part 3 – The Class Representative

Copyright Class Actions Part 3 - The Class Representative By 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?


The first question is similar to the second question discussed in the last post—do the potential class members’ claims have one or more particular questions of law or facts in common? But here the question is focused on the “averageness” of the representative plaintiffs. Do the representative plaintiffs’ claims look like the claims which the bulk of the class members would make if they participated as individuals, or is there something unusual about these claims? Read more