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Prince is a practitioner of what has come to be known as “appropriation art,” that is, art – mainly visual art – that incorporates and utilizes third-party images and photographs, which are often the subject of copyright.

In 2008, Prince created thirty works of art that comprised a series he called Canal Zone. The works in Canal Zone made use of a number of images from Patrick Cariou’s photography book on Rastafarians in Jamaica called “Yes Rasta”. In the Canal Zone works, Prince had enlarged, cut up, and painted over Cariou’s images, as well as placed them with other images. While not directly a factor in the Court’s infringement analysis but certainly a motivating factor behind Cariou’s lawsuit, while Cariou had little commercial success with his book, Yes Rasta, Prince sold eight of the Canal Zone works for a total of over $10 million.

Cariou initially won on summary judgment at the district court level, and obtained a permanent injunction compelling Prince to turn over all of the unsold Canal Zone works for sale, disposal or destruction. In its ruling, the United States District Court for the Southern District of New York held that Prince’s works did not qualify as a “fair use” because, among other things, they were not transformative in that they did not “comment on” Cariou’s photographs or the subjects of the photographs, and Prince himself did not articulate any transformative intent in connection with the use of the images.

On appeal, Prince challenged the lower court’s analysis of the first fair use factor, the purpose and character of the use. The purpose of this factor is to test whether the allegedly infringing work is “transformative”. A work is transformative when it adds something new to the work allegedly infringed, with a further purpose or different character, altering the original work with new expression, meaning, or message. A work is transformative if it does something more than repackage or republish the original copyrighted work. A transformative work is one that serves a new and different function from the original work and is not a substitute for it. As the Supreme Court noted in Campbell v. Acuff-Rose Music, Inc., “the more transformative the new work, the less will be the significance of other factors, … that may weigh against a finding of fair use.”

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A U.S. patent is “presumed” valid. That means a patent owner does not need to prove the patent is valid in a suit for infringement. And, as the U.S. Supreme Court just explained in Commil United States, LLC v. Cisco Systems, Inc., 2015 U.S. LEXIS 3406 (May 26, 2015), a defendant’s belief that the patent is invalid is not a defense to infringement.

Commil owned a patent that covered a method for increasing the speed of wireless networks. Commil sued Cisco for patent infringement, alleging that Cisco directly infringed the patent by making and using certain network equipment. Commil also alleged that Cisco indirectly infringed the patent by inducing infringement, that is, by selling the equipment to others and instructing them how to use the equipment, causing them to thereby infringe the patent.

At trial, the jury found that Cisco had directly infringed the patent. With respect to the claim of indirect infringement, Cisco contended that it did not have the required specific intent to induce infringement because it believed in good faith that the patent was invalid. The district court for the Eastern District of Texas ruled that Cisco’s evidence of its good faith belief was not admissible as a defense to infringement. The jury found Cisco liable to Commil and awarded Commil $63.7 million in damages.

Cisco appealed to the Federal Circuit Court of Appeals, arguing that the district court’s ruling was erroneous. The appellate court reversed the district court, holding that a good faith belief that a patent is invalid is sufficient to negate the required specific intent to induce infringement.

The Supreme Court reversed the Federal Circuit. The court explained that infringement and validity are two different issues. To prove that a defendant induced infringement, a plaintiff must show that the defendant knew that the induced acts constituted patent infringement.

The Court held that infringement and invalidity are independent of each other. A defendant may successfully defend against a claim of patent infringement by defending against the infringement allegation or by proving that the patent is invalid. A defendant may assert either noninfringement or invalidity or it may assert both.

The Court further explained its rationale in stating that allowing a good faith belief in invalidity to be a defense to infringement would undermine the statutory presumption that a patent is valid. Because of the presumption, a plaintiff does not have to prove its patent is valid. The defendant must prove invalidity by clear and convincing evidence. If the defendant could defend against infringement simply by showing a belief in invalidity, then that would weaken the presumption of validity by lowering the burden of proof needed to overcome it.

The Court noted that accused infringers can assert invalidity as an affirmative defense or as a counterclaim. They can also challenge a patent’s validity in a declaratory judgment action in federal court or in an inter parties review proceeding before the Patent Trial and Appeal Board.

Another rationale raised by the Court was the procedural difficulty and burden of litigating a defense of a belief in invalidity. Defendants would be incentivized to allege a belief in invalidity, which would be easier to prove than noninfringement. Moreover, patent infringement cases would become much more complex as juries might have to decide the defense of the defendant’s good faith belief in invalidity and the defense of actual invalidity.

In concluding, the Court took a shot at patent trolls (now referred to as non-practicing entities) and prodded the district courts to more aggressively stop them, stating:

“The Court is well aware that an ‘industry has developed in which firms use patents not as a basis for producing and selling goods, but, instead, primarily for obtaining licensing fees.’ . . . Some companies may use patents as a sword to go after defendants for money, even when their claims are frivolous. . . .

[I]t is still necessary and proper to stress that district courts have the authority and responsibility to ensure frivolous cases are dissuaded. If frivolous cases are filed in federal court, it is within the power of the court to sanction attorneys for bringing such suits. . . . It is also within the district court’s discretion to award attorney’s fees to prevailing parties in ‘exceptional cases.’”

The Court’s decision is not new ground – it just restates existing law: you cannot avoid liability for inducing infringement on the grounds that you thought the patent was invalid.

At a time when the world is reading about Bruce Jenner’s gender transition to Caitlyn Jenner, the federal Occupational Safety and Health Association (OSHA) has issued its best practices guidelines regarding providing restroom access for transgender employees.

In summary, here is what OSHA says:

The employee should determine the most appropriate and safest option for him- or herself.

The best policies also provide additional options, which employees may choose, but are not required, to use. These include:

• Single-occupancy gender-neutral (unisex) facilities; and
• Use of multiple-occupant, gender-neutral restroom facilities with lockable single occupant stalls.

Regardless of the physical layout of a worksite, all employers need to find solutions that are safe and convenient and respect transgender employees.

You can obtain a copy of OSHA’s best practices guidelines at http://www.dol.gov/asp/policy-development/TransgenderBathroomAccessBestPractices.pdf.

Abercrombie & Fitch (AF) refused to hire Samantha Elauf, a practicing Muslim, on the basis that the headscarf she wore during her interview conflicted with AF’s “Look Policy” which prohibits employees from wearing “caps” (a term that the Policy did not define). The Equal Employment Opportunity Commission (EEOC) filed suit on Elauf’s behalf, alleging a violation of Title VII of the Civil Rights Act of 1964, which, inter alia, prohibits a prospective employer from refusing to hire an applicant because of the applicant’s religious prac­tice when the practice could be accommodated without undue hard­ship. Elauf wore the headscarf as part of her religious practice as a Muslim but she did not communicate this to the manager who interviewed her nor did she ask for an accommodation in order to wear the headscarf.

The EEOC prevailed in the District Court, but the Tenth Cir­cuit reversed, awarding AF summary judgment on the ground that failure-to-accommodate liability attaches only when the applicant provides the employer with actual knowledge of his/her need for an accommodation. The U.S. Supreme Court granted review of the case and held that to prevail in a disparate-treatment claim under Title VII, an applicant need show only that his/her need for an accommodation was a “motivating fac­tor” in the employer’s decision, not that the employer had knowledge of his/her need.

The Supreme Court said that Title VII’s disparate-treatment provision requires Elauf to show that AF: (1) “fail[ed] . . . to hire” her (2) “because of” (3) “[her] religion” (including a religious practice). And Title VII’s “because of” standard is understood to mean that the protected characteristic cannot be a “motivating factor” in an employment decision. Thus, rather than imposing a “knowledge standard,” Title VII prohibits certain motives, re­gardless of the state of the actor’s knowledge.  According to the Supreme Court “[a]n employer may not make an applicant’s religious practice, confirmed or otherwise, a fac­tor in employment decisions. Title VII contains no knowledge re­quirement.”

The Court gave the following example to illustrate its point:  “[S]uppose that an employer thinks (though he does not know for certain) that a job applicant may be an orthodox Jew who will observe the Sabbath, and thus be unable to work on Saturdays. If the applicant actually requires an accommodation of that religious practice, and the employer’s desire to avoid the prospec­tive accommodation is a motivating factor in its decision [not to hire the applicant], the employer violates Title VII.”

Furthermore, the Court held that Title VII’s definition of religion clearly dictates that failure-to-accommodate challenges can be brought as disparate-treatment [aka intentional discrimination] claims. In doing so, the Court rejected AF’s argument that a neutral policy [against headwear at work] cannot constitute intentional discrimination. According to the Court, Title VII does not demand mere neutrality with regard to religious practices (e.g. that they be treated no worse than other practices). Instead, the law gives religious practices favored treatment, affirmatively obligating employers not “to fail or refuse to hire or discharge any individual . . . because of such individual’s religious observance and practice.”

The Take Away:

The Supreme Court concluded that an employer is surely entitled to have, for example, a no­ headwear policy as an ordinary matter. But when an applicant requires an accommodation as an “aspec[t] of religious . . . practice,” it is no response that the sub­sequent “fail[ure] . . . to hire” was due to an otherwise-neutral policy. Title VII requires otherwise-neutral policies to give way to the need for an accommodation.

But, how is an employer to know when the accommodation may be needed?

Unfortunately that question is not clearly answered by the Court’s decision.  In a footnote, the Court states that “[w]hile a knowledge requirement cannot be added to the motive requirement, it is arguable that the motive requirement itself is not met unless the employer at least suspects that the practice in question is a religious practice—i.e., that [it] cannot discriminate ‘because of’ a ‘religious practice’ unless he knows or suspects it to be a religious practice.”  However, as the Court explained, that issue was not presented in the case, since AF knew (or at least suspected) that the scarf was worn for religious reasons. The Court said that since the question was not discussed or briefed by either side, it is inappropriate to resolve it.

Let’s face it, we live in a progressive era. Many things that were once taboo in the eyes of the law have become not only socially acceptable, but legal. For example, twenty years ago, if a California state police officer saw you walking down the street smoking what he knew to be marijuana, you were unlikely to walk away without at least a citation. Now, that same officer would have to think twice before jumping to a conclusion and writing you a citation for possession of marijuana, because it is now legal to possess cannabis for medically related purposes in this state. In fact, as of the date of this article, 23 states and the District of Columbia have legalized the possession of marijuana in some form. Four states have even legalized it for recreational use.

At this point, you are likely wondering why I am yammering on about the legalization of marijuana in an intellectual property article. Not only is it unrelated, but honestly, its old news. However, the booming business that is emanating from the legalization of marijuana is not old news. That is exactly what I am here to discuss. If you have read any of my previous articles, you know that I am a strong proponent of protecting the goodwill in your brand through the federal trademark laws. This should not come as a surprise; it is more beneficial and less costly for my clients to retain my services for preventative intellectual property counseling than it is for litigation, or to lose goodwill in their brand.

Unfortunately, the typical avenues for protection are largely unavailable for individuals and entities in the marijuana business. The United States Patent and Trademark Office only registers marks that would be in lawful use in interstate commerce. It has even gone as far as refusing to register a mark such as MARIJUANA COOLERS for herbal food beverages on the ground that the wording in the mark “plainly indicates” that the goods include a substance prohibited by the Controlled Substance Act.

The Controlled Substance Act is the primary reason that proprietors in the marijuana business are unable to register their marks. The act renders the possession, sale, and use of marijuana illegal under federal law. This may sound familiar because the conflict between federal and state law is often discussed with respect to states that have legalized marijuana use in one form or another. Thus, in the eyes of the federal government, regardless of the state’s marijuana laws, the activity is illegal. The United States Patent and Trademark Office is a branch of the federal government. So, in the eyes of the United States Patent and Trademark Office, the activity, whether use, distribution, or something else, is illegal and it will likely deny any attempt to register a mark for marijuana itself. However, one may be able to register their desired mark on tangentially related items such as t-shirts or hats bearing the strain of marijuana’s name. This provides no protection at all for sale of the actual marijuana, but at least it provides some protection to tangentially related goods.

So, what else can you do? Well, just because the United States Government refuses to register the mark, it does not mean that the state government will refuse to register the mark as well. In fact, presently, this may be the most viable source of trademark protection for the marijuana itself. If the state, let’s say Colorado for example, has legalized the use, distribution, and sale of marijuana, it is not likely to refuse a trademark registration for such goods. It is not illegal so there does not seem to be a justifiable reason to refuse registration. However, this solution is not without downside. In contrast to its federal counterpart, the registration only provides protection in that state. Thus, the owner of the mark Ghost Train Haze with regard to marijuana in Colorado could not use his state trademark registration to sue a marijuana distributor in California, who is also marketing a strain that he calls Ghost Train Haze. It is unclear at this time whether the holder of the mark in Colorado could bring suit under common law, but such rights are typically narrowly construed and restricted to the geographic region where the product has historically been sold.

Thus, it would obviously be best for the holder of the mark if they were able to simply obtain a federal trademark registration, but that is not currently an option. Again, this does not mean that the marijuana proprietor is without some protection for his brand; a state trademark registration is a reasonable alternative. However, individuals in the business should keep tabs on the evolving state of the law and pounce on the opportunity to obtain a federal registration, if the federal government position ever happens to go…up in smoke.

By: Intellectual Property Group

Cindy Lee Garcia thought she was playing a bit part in “Desert Warrior,” an adventure film being made by an amateur film maker. The film was never completed. Instead, Ms. Garcia’s performance was re-purposed, and her physical on screen appearance was used in a film titled “Innocence of Muslims,” with her voice redubbed, changing her speaking part so that she appeared to being asking, “Is your Mohammed a child molester?” The film was uploaded to YouTube. An outraged Muslim cleric saw the video and thereafter issued a fatwa directing his followers to kill everyone involved with the film. Ms. Garcia was nonplussed.

Garcia filed suit seeking, among other things, a restraining order directing Google to remove the film from YouTube. Primarily, Garcia claimed that the video infringed a copyright which gave her the exclusive right to control the use of her performance. Granting the injunction, the district court ruled that Garcia was likely to succeed on her copyright claim because it believed she held a valid copyright interest in her performance, and that the film maker had exceeded the terms of a license granted by plaintiff when she was misled into acting in “Innocent Muslim,” under the false pretense that she was playing in “Desert Warrior.” The court also determined that Garcia faced irreparable harm because Garcia had been receiving death threats. Google appealed to the Ninth Circuit. Initially the Ninth Circuit agreed with Garcia, however on May 18^th, sitting en banc, the Ninth Circuit reversed.

Writing for the majority, Circuit Judge M. Margaret McKeown stated that, “The appeal teaches a simple lesson — a weak copyright claim cannot justify censorship in the guise of authorship…Nonetheless, the claim against Google is grounded in copyright law, not privacy, emotional distress, or tort law, and Garcia seeks to impose speech restrictions under copyright laws meant to foster rather than repress free expression.” Judge Kozinski drafted a dissenting opinion stating, “Actors usually sign away their rights when contracting to do a movie, but Garcia didn’t and she wasn’t Youssef’s employee. I’d therefore find that Garcia acquired a copyright in her performance the moment it was fixed.” Kozinski then concluded “that Garcia’s copyright claim is likely to succeed. I’d also find that Garcia has made an ample showing of irreparable harm. It’s her life that’s at stake.”

Google, and other similarly situated companies, believed that Garcia’s claims would have established “unprecedented copyright protections for actors with even a bit role in every movie or video produced, at the same time allowing the courts to force companies such as YouTube to take down material protected by the First Amendment while vastly expanding their responsibility for policing web content.” Based on its ruling on Monday, the Ninth Circuit Court of Appeal agrees.

The word that comes after the period in a domain name is referred to as a top level domain (“TLD”) and there seems to be a TLD for everything. There are TLDs that reflect geographic regions such as “.ASIA” for the Asia-Pacific region and .IRISH for the global Irish community. There are numerous other TLDs that reflect a wide variety of interests, including professions (“.ACTOR” for actors and “.ACCOUNTANTS” for accountants). Just when you think you have seen everything, along comes a proposed new TLD that causes a huge uproar among trademark owners.

Vox Populi Registry Inc. was granted the right to operate the registry for a “.SUCKS” TLD. The stated purpose of the .SUCKS TLD is to facilitate First Amendment criticism of companies, organizations or products.   Trademark owners say that Vox is a shakedown artist and the sole purpose of the .SUCKS registry is to cause trademark owners to purchase expensive domains in order to defend their brands. In support of this allegation, trademark owners point to the fact that Vox will charge trademark owners approximately $2500 and up to register a .SUCKS domain name during the Sunrise Period. (A Sunrise Period is a period of time during the rollout of a new TLD in which trademark owners have the right to register domain names which reflect their brands in the new TLD.) Trademark owners argue that when compared to the registration fee of $249 charged by Vox during the general availability period and when compared to the few hundred dollars charged by other TLD registrars during their Sunrise Period, it is obvious that this scheme is nothing more than “predatory, exploitative and coercive.”

In most circumstances, a third party may not use the trademark of another as part of a domain name.  This could give rise to a claim of cyber squatting. Under the policies that govern the registration of most domain names, whether an individual is engaged in cyber squatting is determined by analyzing the following factors:

(1) whether the disputed domain name is identical or confusingly similar to the complainant’s trademark;

(2) whether the domain-name holder lacks rights or a legitimate interest in the disputed domain name; and

(3) whether the disputed domain name was registered and is being used in bad faith.

In order to prevail on a cyber-squatting claim, the complainant must establish all three factors.

Often, the respondent will contend that it is making a legitimate noncommercial fair use of the disputed domain name through the operation of a gripe/complaint web site. Domain name dispute proceedings have held that First Amendment expressions of protected speech must be balanced against trademark rights.  The holder of a disputed domain name has extensive rights of free speech to provide a platform to criticize and the content of a web site is a legitimate use of those rights. However, the domain name registrant cannot chose a domain name that is confusingly similar to the trademark of the subject matter of its complaints.  In cases where a domain holder has registered a domain name that incorporates a trademark and appends the word “sucks” prior to the .COM (i.e., “xyzsucks.com”) and the domain name points to a complaint or protest site, domain name dispute decisions have found legitimate interests based on the right of free speech and the fair use doctrine.

Vox claims that the purpose of the .SUCKS TLD is to give users an opportunity to express protected complaint speech online and register a domain name that indicates the nature of such speech. Trademark owners complain that they are compelled to register their trademarks in the .SUCKS TLD to defend against competitors and unfair criticism. Vox counters that if the competitive use or criticism is unfair, trademark owners have a full complement of remedies that they can seek, including domain name dispute proceedings.

Each side presents compelling arguments. Are trademark owners concerned about preventing illegitimate and legitimate complaint sites and are just upset because of the steep registration cost? Or, is Vox exploiting the trademark owners’ sensitivity and desire to protect their brands? ICANN, the organization responsible for the coordination of domain names – which entered into a contract with Vox to manage the .SUCKS registry – has asked the FTC to look into the allegations made by trademark owners.

Periscope (owned by Twitter) and Meerkat are two new “live streaming” apps which allow users to live stream videos from their phones.  These applications could potentially change the way live sporting or music events are broadcast or change the way news footage is gathered.  They can also be used by a viewer to re-broadcast copyrighted content.  HBO was recently on the receiving end of that lesson when it found out that dozens of viewers were live streaming the season premiere of Game of Thrones.

HBO said that Periscope was responsive to its take down notices, but also added “We feel developers should have tools which proactively prevent mass copyright infringement from occurring on their apps and not be solely reliant upon notification.”   This sounds very similar to the argument Viacom initially made in its protracted copyright infringement litigation against YouTube.  However, in 2010 U.S. District Court Judge Louis Stanton rejected this argument when he found that the Digital Millennium Copyright Act (the “DMCA”) insulated YouTube/Google from Viacom’s infringement claims and granted YouTube’s motion for summary judgment.

Under the DMCA, a “Service Provider” may be entitled to immunity from claims of copyright infringement in four areas: 1) transitory communications; 2) system caching; 3) storage of information on systems or networks at direction of users; and 4) information location tools. While each area would appear to have some application to Periscope and Meerkat’s business, the information storage category is of primary focus.

Under the information storage safe harbor, the Service Provider: (i) must not have actual knowledge that the material is infringing; (ii) must not be aware of facts or circumstances from which infringing activity is apparent; and (iii) upon becoming aware of the existence of such infringement material, acts promptly to remove or disable access to the infringing material. In addition, in order to be entitled to copyright infringement immunity under this provision, the Service Provider must not receive a financial benefit directly attributable to the infringing material where it has the right and ability to control it. Additionally, the Service Provider must, upon notification of a claim of infringement, quickly remove or disable access to the infringing material.

Under the DMCA, Periscope and Meerkat cannot refuse or fail to take action when infringement is brought to their attention, but they have no legal obligation to take affirmative steps to screen content or build new technology that prevents the use of their application to infringe the copyright of third parties.

Clearly HBO has the right to pursue the Periscope users that live stream Game of Thrones (or any other HBO program).  But what about streaming live events – such as the “Fight of the Century” between Floyd Mayweather and Manny Pacquiao.   HBO (and Showtime) paid handsomely for the live broadcast rights to the fight and prior to the fight, were taking aggressive steps to prevent free live streaming.  HBO, Showtime and fight promoter Top Rank, Inc. filed suit against two livestream websites, boxinghd.net and sportship.org, claiming that they would livestream the TV broadcast of the fight for free.  A Federal District court granted HBO’s injunction.

But what about Periscope users that stream directly from the fight?  Apparently numerous Periscope and Meerkat users streamed live from the fight.  HBO, Showtime and Top Rank were none too pleased; Top Rank promised legal action.  However, if Top Rank follows through with its threat and sues either Periscope or Meerkat, it may face an early TKO.  As long as Periscope and Meerkat respond promptly to take down requests, the DMCA will protect them from copyright infringement claims. If Top Rank sued the Periscope or Meerkat users that filmed and streamed the fight from their seats at the arena, it would have to be on grounds other than copyright infringement.

For the full article, click here.

With so many new microbreweries popping up in Sacramento, the Bay Area, and the Greater San Diego area, I felt compelled to write the present piece for the benefit of the aspiring, as well as the established, microbrew entrepreneur. These individuals undoubtedly pour (excuse the pun) their hearts, souls, and hard-earned money into the development of their breweries and their attempts to formulate the perfect brew. However, from my own research and analysis it seems clear that these entrepreneurs are regularly overlooking one thing in particular—their intellectual property rights.

The thought first occurred to me when I was sitting in San Diego having an IPA with a couple of my friends. As I stared at the bottle on the table it occurred to me that despite my everyday involvement with intellectual property, I had never looked into whether some of these companies were properly safeguarding their intellectual property rights. I immediately went to the United States Patent and Trademark Office (“USPTO”) website on my cellphone and began searching for some of my favorite breweries and their assorted brews on the database. I quickly learned that some of the companies were prudently protecting their intellectual property in their company’s name, certain brews, and certain designs/graphics. However, I also learned that some of my favorite breweries were not doing anything to protect their intellectual property. I discussed the matter with my friends and express how I could not understand why these companies would not try to protect their intellectual property. Then, it occurred to me that some of them probably never thought about it, or were simply unaware what types of protection exist under the intellectual property laws. After all, prior to my involvement in the intellectual property world, I never thought about trademarks, trade dress, copyrights, or patents. Accordingly, I decide to draft this brief, non-exhaustive discussion of trademark law’s application to the microbrewery industry and suggest that breweries consider protecting their rights as they grow as businesses.

Federal Law, or the Lanham Act, defines “trademark” as any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. Thus, any words, symbols, or designs that consumers may use to identify the source of the product are trademarks. We see these everyday when we step outside of our homes. Common examples include McDonalds, Starbucks, or a more suitable example in the context of this article, West Coast IPA. The latter is a federally registered trademark by the Green Flash Brewing Co. It is a clear example of a trademark in that it is a series of words and/or a name that is used in commerce to identify and distinguish the goods of the manufacturer/seller. Unfortunately, I cannot take the credit for Green Flash Brewing Co.’s prudent protection of its intellectual property rights, but the up and coming microbreweries can certainly take a lesson from Green Flash Brewing Co.’s conduct and follow its lead.

In order to gain this type of protection under the federal trademark law, there cannot be any other mark that is “confusingly similar” to your mark such that it will create consumer confusion as to the product’s origin unless your use in commerce preceded that mark. On the other hand, if there are no marks that are confusingly similar to your own, priority of use does not come into play and the applicant seeking trademark registration can file what is known as an intent to use application. The latter essentially says that the registrant intends to begin using this product in commerce in the near future and seeks to register the mark in advance. This is an oversimplified explanation of the rules, but this article is intended to provide a general overview—not a detailed legal analysis.

Assuming the mark meets the requirements of the USPTO, and there are no successful challenges by other trademark owners, it will eventually be registered and the world will be deemed on constructive notice of its existence. The effect of this is that the registrant can then pursue anyone in the United States who uses a mark that is “confusingly similar” to the registrant’s duly registered mark. In the absence of such a registration, the party would be left with much less extensive trademark rights and remedies. Accordingly, it is prudent that up and coming microbreweries and established breweries that have yet to take action in protecting their intellectual property get in contact with an intellectual property attorney as soon as possible to develop a plan for protecting their intellectual property rights.

Although it is implicit in the discussion above regarding how a mark designates the product’s origin, it is important to completely understand why trademark protection is so important. Any entrepreneur I have ever met would tell you that they want to benefit in some form or another from the blood, sweat, and tears that they put into their work. One way that can be achieved is through building up goodwill in one’s mark and having consumers come to associate that mark with high quality. Ideally, a brewery would develop a brew that consumers associate with high quality microbrew. Specifically, they would come to associate the name of that brew with quality—for the sake of the example, let’s call it Weintraub California American Pale Ale. After developing such goodwill in the mark, it would be unfair if someone were allowed to benefit from the goodwill of the mark Weintraub California American Pale Ale by releasing Weintraub California India Pale Ale, thereby falsely indicating that the same brewery produced both products. Obviously, it would be fine if the same brewery created both products, but you can see how this creates a problem if the products are being produced by separate entities. That is exactly the type of problem that trademark protection seeks to prevent and that is exactly why it is imperative that new and established microbreweries immediately seek out intellectual property counseling if they have not already done so.

I’ve yet to encounter an area of the law where an inch of preventative measures would not have gone a mile later down the road. With that said, please drink and protect your intellectual property rights responsibly.