A recent case in the Southern District of New York calls into serious question the ubiquitous practice of embedding photographs on a content creator’s website.

An embedded photo is one that is not hosted on the website’s own server, but instead is linked to a third-party server like a social media site.  Instead of the photo being permanently available on the website, the website pulls the photo from the third-party site live when the website is accessed by a user.  Platforms like Twitter, Instagram, and TikTok make it extremely easy for websites to embed user posts, and provide website designers with tools specifically meant to make embedding seamless for the user.

In a recent case (Sinclair v. Ziff Davis, LLC, 1:18-cv-00790, S.D.N.Y.), a professional photographer posted a photo to Instagram that was later embedded by Mashable in an article on its website.  In its original ruling, the court held that Instagram’s terms of service (which every user, including Sinclair, accepts when signing up) permitted the embedding on links on third party websites.  The court ruled that Instagram had the right to relicense Sinclair’s image to Mashable, and granted Mashable a dismissal of Sinclair’s claims. Continue Reading Recent Case Demonstrates the Need for Caution When Embedding Links to Social Media Posts

The answer is “Yes” because the U.S. government has waived sovereign immunity for claims of patent infringement.  This means the U.S. government can be sued for patent infringement in at least some instances.  However, special rules and certain limitations apply as explained in 28 U.S.C. § 1498, which states, in part:

(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture.

As a result, patent infringement lawsuits against the United States government, are not brought in Federal district courts but rather in the Court of Federal Claims, which is a special court “authorized to hear primarily money claims founded upon the Constitution, federal statutes, executive regulations, or contracts, express or implied in fact, with the United States.”  See https://www.uscfc.uscourts.gov/.  Further, a patent owner cannot sue a federal contractor who made the allegedly infringing product or performed the allegedly infringing method, but instead, must sue the U.S. government.  Note, however, the U.S. government’s contract with the federal contractor may require the contractor to indemnify the government for liability and costs. Continue Reading Can the U.S. Government Be Liable for Patent Infringement?

Under the Copyright Act, an owner of a copyright suing for infringement may elect to seek statutory damages instead of actual damages.  The amount of statutory damages under the Copyright Act are limited to $30,000 for innocent infringement and up to $150,000 for willful infringement.  In Desire, LLC v. Manna Textiles, Inc., et al. (decided February 2, 2021), the Ninth Circuit was confronted with the issue of whether a plaintiff is entitled to multiple statutory damage awards where some of the defendants are found to be jointly and severally liable with each other.

Desire is a fabric supplier that had obtained and registered with the Copyright office “a two dimensional floral print textile design.”  Shortly thereafter, a woman’s clothing manufacturing, Top Fashion, purchased a couple of yards of the fabric from Desire in order to secure a clothing order with Ashley Stewart, Inc., a woman’s clothing retailer.  Unfortunately, Top Fashion and Desire had a dispute over the fabric’s price.  Top Fashion then showed the design to Manna, a fabric designer, who in turn used a Chinese textile design firm to modify the design.  That designer changed approximately 30-40% of the original design, and Manna subsequently registered the “new” design with the Copyright Office. Continue Reading The Interplay Between Statutory Damages and Joint and Several Liability in a Copyright Infringement Action

Join Josh Escovedo and Jessica Corpuz in this one-hour webinar about Intellectual Property Law and will specifically address The Consolidated Appropriations Act of 2021.

Program Summary:
The Consolidated Appropriations Act of 2021—arising from the December 2020 stimulus bill—made significant changes to intellectual property law, unbeknownst to many practitioners. This webinar will focus on the changes to copyright and trademark law, and will give an overview of how those changes might affect you and your clients.

The webinar will specifically address the Copyright Alternative in Small-Claims Enforcement Act of 2019, which establishes a small-claims-court-type system through the U.S. Copyright Office for copyright holders to pursue low-value claims of infringement. The webinar will likewise address the Trademark Modernization Act, which is intended to better protect the public from confusion regarding the source of goods and services, and to implement procedures that the USPTO and trademark owners and applicants can use to more efficiently address fraudulent trademark filings.

Related Content:
Josh discusses this topic with Scott Hervey on an episode of The Briefing by the IP Law Blog. You can watch the episode here. Jessica also wrote a recent blog on the IP Law Blog about the topic. You can read her blog here.

Date & Time:
Thursday, February 25
12:00 PM – 1:00 PM PST

MCLE Credits:
This presentation will qualify for one hour of MCLE.

To register, please click here.


Is it possible to legally protect an idea?  The answer is: not really.

Intellectual property is intangible personal property.  There are four types of intellectual property that are protected by law:  patents, copyrights, trademarks, and trade secrets.  A separate set of laws governs each one.  Although ideas may be intangible personal property, ideas do not fit in any one of the types of intellectual property.

Patents protect inventions.  A utility patent covers a functional invention that is a machine, article of manufacture, composition of matter (such as a chemical or an isolated gene), or a process (a method of doing something).  A design patent covers an ornamental design for an article of manufacture.  A plant patent covers a new type of plant.  Some things cannot be patented: laws of nature, natural phenomena, and abstract ideas.

In order to get a patent a patent application must be filed in the United States Patent and Trademark Office.  A patent examiner reviews the application.  If the application satisfies certain requirements, a patent is granted.  First, the invention must be novel (new).  Second, the invention must be a nonobvious difference over what has been done before in the technological field.  From the time the application is filed, it may take several years before the applicant is granted a patent or the application is finally rejected.

The owner of a patent has the right to exclude others in the U.S. from making, using, selling, offering to sell, or importing the patented invention.  A patent is good from 20 years from its filing date.  If someone violates the rights of the patent owner, the owner may sue for patent infringement.  Patents are governed by federal law.

Copyrights cover original forms of authorship or expression fixed in a tangible medium.  They include books, film, computer programs or software, songs, plays, dance, photographs, sculpture, and other types of artwork.  Certain types of expression cannot be copyrighted.  For example, works that are not original because there is only way of expressing the work (such as phone books, forms, and instructions) cannot be copyrighted.  In addition, ideas, concepts, and discoveries are not protectable by copyright.

A copyright exists as soon as the work is created and fixed in a tangible medium.  The work can be registered in the U.S. Copyright Office.  The owner of a copyright has the exclusive rights to: reproduce and make copies of the work, distribute copies of the work, publicly perform and display the work, and create derivative works.  In general, a copyright is good for the life of the author plus 70 years.  If someone violates the copyright owner’s rights, the owner may sue for copyright infringement.  Like patents, copyrights are governed by federal law.

Trademarks are words, phrases, symbols, or designs used in commerce to identify the source of goods or services and to distinguish them from those of others.  A trademark (sometimes called a brand) provides the consumer with the knowledge the product or service they are purchasing comes from the source they associate with that mark.  Certain words cannot be trademarked, in particular, marks that are “merely descriptive” (i.e., marks that simply describe the product or service or its characteristics).  Ideas cannot be trademarked.

A person who uses a trademark in commerce has some common law rights.  A mark may also be federally registered in the PTO.  Some states also offer their own trademark registration systems, although federal registration provides the most protection.  In order to federally register a mark, an application must be filed in the PTO.  The application must contain a sample of the mark in use in commerce (unless the application is an “intent to use” application which reserves future rights), identify the goods or services for which the mark is being used, and list the date of first use of the mark in commerce.  The trademark examiner will review the application to see if certain requirements are met, including whether the mark is likely to be confused with other registered marks for the same or similar goods or services.  The registration process may take up to a year or possibly longer before the mark is granted registration or is finally rejected.

A trademark owner has the rights to prevent others from using the same or a similar mark in connection with the sale of the same or similar goods or services if the other mark is likely to confuse consumers as to the source of the goods or services.  If a trademark owner’s rights are violated, the trademark owner may sue for trademark infringement in federal court under the Lanham Act or in state court.  A federal registration for a trademark may be renewed every 10 years if the mark is in continuous use.

The fourth type of intellectual property is a trade secret.  Trade secrets are different from the other three types of intellectual property in that there is no federal registration system and the owner does not obtain any “monopoly” rights.  A trade secret is information that has economic value from being kept secret and that is the subject of reasonable efforts to keep it secret.  The owner of a trade secret may sue anyone who misappropriates (wrongfully acquires, discloses, or uses) the trade secret.

Trade secrets are governed by state law, although there are some federal statutes that also protect trade secrets.  Trade secret protection lasts as long as the information is kept secret.

Thus, none of the four areas of intellectual property law directly protects an idea.  While it may be possible to further develop an idea to make it into a patentable invention or to use the idea to create a copyrightable expression, trademark, or a valuable trade secret, the pure idea itself is not protected by these areas of law.

So, is there anything one can do to protect an idea?  If one wants to disclose an idea to someone else, the best choice is to enter into a nondisclosure agreement with the party to whom the idea will be disclosed.  A nondisclosure agreement prevents the receiving party from disclosing or using the idea without the discloser’s consent.  Of course, a nondisclosure agreement is only as good as the receiving party can be trusted.  If the receiving party breaches the nondisclosure agreement by disclosing the idea, the discloser has remedies for the breach, but cannot regain the idea’s secrecy.