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On 22 March 22 2017, in the case of Star Athletica LLC v. Varsity Brands, Inc., et al, No. 15-866, the Supreme Court of the United States ruled, in a 6-2 decision, that design elements of a cheerleading uniform may be protected under copyright law, even though the uniform has a utilitarian function.

It is a well-known tenet under United States copyright law that apparel is outside the scope of the Copyright Act of 1976, which bars protection for works of authorship that possess utilitarian functions.  However, §101 of the Copyright Act carves out a limited exception, namely that “pictorial, graphic or sculptural features” of the design of a useful article are entitled to copyright protection if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

Star Athletica v. Varsity Brands involves copyright infringement of cheerleading uniforms designed by Varsity Brands, considered to be the leader in the market, copied by its rival, Star Athletica.  The majority opinion, written by Justice Thomas, sided with Varsity Brands, and ruled that the two-dimensional pictorial design, consisting of chevron, zigzags, stripes and colorful shapes, applied to Varsity Brands’ uniforms was deserving of copyright protection under §101 of the Copyright Act.

This case has elicited microscopic scrutiny by the fashion industry.

The Ruling

This case was heard by the Supreme Court on writ of certiorari to the United States Court of Appeals for the 6th Circuit.  The District Court had granted summary judgment to Star Athletica, holding that Varsity Brands’ designs were not eligible for copyright protection because they served the function of identifying the garments as cheerleading uniforms.  The 6th Circuit reversed, holding that the graphic designs applied to the uniforms, in accordance with §101 of the Copyright Act, were eligible for copyright protection because the graphics could be “identified separately” and were “capable of existing independently” of the uniforms.  The Supreme Court granted certiorari to resolve the long-standing discord between the lower courts over statutory interpretation, namely: What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act.?

In deciding this case, the Court set forth a simplified two part test, “A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”  Looking to the facts of the case at hand, the Court held that the designs on the surface of the Varsity Brands uniforms satisfy the foregoing requirements.

The Conundrum of the Separability Doctrine

For decades, there has been disagreement between the circuits, which have struggled with articulating a consistent test to determine the extent to which designs applied to useful objects might be protected by copyright. While the statutory language of the separability doctrine is consistently invoked, the determination of when a design element is separable has lead to a plethora of standards and tests. Indeed, the 6th Circuit’s decision used 9 factors to determine that Varsity Brands’ graphic designs as applied to cheerleader uniforms were conceptually separable from the utilitarian aspects of the garment, and judicial analysis of separability have included such things as the design intention of the author and the marketability of the functional object if the applied art were to be removed.

Impact upon the Fashion Industry

The fashion industry anxiously awaited the decision in Star Athletica v. Varsity Brands – design companies expressing concern that the decision might undermine the already extremely limited protection afforded to fashion designs, while retailers were concerned that the decision might enhance copyright protection in a way that would expose them to new liabilities. Although, as noted in the dissenting opinion by Justice Breyer, designers often look to trademark law, and occasionally patent law, as a means of protection, these laws do not readily apply to graphic designs applied to apparel.  Although the Court’s decision provides some clarity and guidance with regard to statutory interpretation, it unequivocally adhered to what has been the status quo for fashion items, characteristically denied protection under the Copyright Act.  As the majority wrote,  “the only feature of [Varsity Brands’] cheerleading uniform eligible for a copyright is the two-dimensional applied art on the surface of the uniforms” and the company “has no right to prevent anyone from manufacturing a cheerleading uniform that is identical in shape, cut or dimensions to the uniforms at issue here”.

The result in Star Athletica v. Varsity Brands will in all likelihood have little impact on the fashion industry, as it breaks no new ground.  What it does is eliminate the myriad of tests and issues that have plagued and distracted lawyers for both plaintiffs and defendants in proving and arguing many factual issues that the opinion now makes clear are irrelevant.

Accordingly, the protection of designs applied to apparel has neither been eroded nor enhanced; they are protected by copyright to the extent they would have been protected had they been fixed in a medium of expression other than a garment.  Similarly, retailers and designers of “knock-offs” do not appear to  face any new risk of liability that wasn’t present prior to the Supreme Court’s opinion.

Looking Forward

We have yet to see how the Supreme Court’s new separability test will be applied, but its application may significantly simplify and harmonize the analysis in the lower courts.  Congress, despite years of lobbying efforts by the fashion industry, has consistently failed to adopt the sort of “design right” that many European countries apply to apparel, and the debate continues as to whether fashion design is under-protected or, as some argue, the current “light” protection of fashion design is actually part of the engine that drives the industry.

There is no doubt that the Varsity Brands opinion vividly confirms that the Copyright Act today affords no protection at all to the overall design (e.g., the combined shape, cut, fit, color, drape, neckline, etc.) of an item of apparel.  On the other hand, it makes equally clear that the copyright protection afforded to any pictorial, graphic or sculptural work is in no way undermined when it is first fixed in, or later applied to, an item of apparel. Varsity achieved what it set out to do, but the ruling in this case has not significantly changed the landscape.

Women's running shoes and dumbbells for trainingThe question of whether a sequence of exercises, such as yoga poses or dance moves, can be copyrighted has occupied the attention of international courts, scholars and copyright offices for some time. In late 2015, the issue received some media attention when yoga guru Bikram Choudhur tried to gain a US copyright in a signature sequence of yoga poses but failed before the Court of Appeals for the Ninth Curcuit. Despite the effort of international copyright conventions, the question of copyrightability essentially remains a matter of national law.

On 2 February 2007, the Higher Regional Court of Cologne (Case 6 U 117/06), Germany, ruled that an acrobatic dance performance could, in principle, be considered a “work of dance art” subject to copyright protection under Sec. 2 para. 1 No. 3 of the German Copyright Act. The required threshold of originality could, however, only be achieved, if the performance went beyond a sequence of physical movements and conveyed a particular artistic message. Whether this ruling can, by analogy, be extended to yoga and exercise routines is not clear. Simple routines are, however, not likely to constitute “personal intellectual creations” within the meaning of Sec. 2 para. 2 of the German Copyright Act.

An Integrated, Coherent, and Expressive Whole

In a further example, in a Statement of Policy from 18 June 2012, the US Copyright Office took the position that “a selection, coordination, or arrangement of functional physical movements such as sports movements, exercises, and other ordinary motor activities” did not represent the type of authorship intended to be protected under the US Copyright Act as choreographic works. However, a “composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive whole” could rise to the level of original choreographic authorship.

A Look Ahead

Even if simple yoga or exercise routines will likely not meet the minimum threshold of originality in most jurisdictions, a film or description of such routine may be copyrightable, as may a compilation of photographs of the routine’s individual movements. Additionally, exercise brands can make a profit from teaching their routines to others („train the trainer“) or from licensing their brand to fitness centers so that people familiar with the brand’s program know what to expect of the centers’ workout sessions.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Romantic DiningAccording to the code of ethics of the International Association of Culinary Professionals, a culinary professional must not knowingly “appropriate […] any recipe or other intellectual property belonging to another without the proper recognition.” And, in addition to the ethical, there are legal issues. While copying culinary creations might not sound like a big deal to millennial food bloggers and vloggers, lawsuits—sometimes with high stakes—have been filed over (mis)appropriated recipes. But whether claims to a signature dish will hold up in court is a different question and will likely depend on the scope of protection of the applicable copyright law(s).

The Literary Work

The written expression of a recipe (explanations and directions) is likely to be protected as a “literary work” in most jurisdictions. For example, the Court of Justice of the European Union (Case No. C‑5/08) held that even an 11-word newspaper article extract may be protected subject matter under the Copyright Directive (2001/29/EC), provided that it is original in the sense that it is the author’s own intellectual creation. One can, therefore, safely assume that quite a few recipes that were published online or in print could be considered literary works subject to copyright protection. However, the copyright in a literary recipe only prevents unlicensed copying of the text, not the functional means for achieving a culinary result. Whether the recipe itself could be eligible for protection is another matter entirely: ideas like the ingredients necessary to the preparation of a particular dish are generally not copyrightable.

The Mere Listings of Ingredients

The US Copyright Office, for example, issued a factsheet that “copyright law does not protect recipes that are mere listings of ingredients.” This view was backed by the US Court of Appeals for the Sixth Circuit in the non-precedential case Tomaydo-Tomahhdo, LLC v. Vozary, 629 F. App’x 658 (6th Cir. 2015). The court held that while there can be a copyright in the arrangement and creative expression contained in a recipe book, protection did not extend to the recipes themselves. A list of ingredients was “merely a factual statement, and […] not copyrightable.” However, a compilation of such facts could be eligible for protection, if it was an original selection. For example, on 28 March 2012, the Regional Court of Frankfurt am Main (Case No. 2-06 O 387/11), Germany, held that a selection of recipes suitable for certain pieces of cooking equipment was a “personal intellectual creation” within the meaning of sec. 2 para. 2 of the German Copyright Act. The US Copyright Office likewise stated that copyright protection could “extend to […] a combination of recipes, as in a cookbook.”

The Visuals and Other Things

Copyright law might also apply to photographs that accompany a recipe in a cookbook or to an elaborate food arrangement if it comprises elements that do not contribute to the utilitarian aspects of how food appears on a plate like coloring, textures and placement. There are, however, other avenues than copyright law that culinary professionals can pursue to protect their creations, such as secrecy or non-disclosure agreements.

Happy Valentine’s Day to all food and IP lovers!

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Close up on microchip catching with tweezers on circuit board.On 2 December 2016, President Obama issued an administrative order to prohibit the proposed acquisition of a controlling interest in Aixtron SE (Aixtron) by Grand Chip Investment GmbH (GCI), a German company partially owned by Fuijan Grand Chip Investment Fund LP, a Chinese partnership with some Chinese government ownership. It was only the third time in history that a US president has formally blocked a proposed foreign acquisition of a US business due to national security concerns identified during the review process by the Committee on Foreign Investment in the United States (CFIUS).

Aixtron is a German semiconductor equipment maker; its US business (Aixtron US) accounts for about 20 percent of the company’s workforce and a similar percentage of the company’s global sales in 2015. The €670 million (approximately US$720 million) transaction was to have been financed by Sino IC Leasing Co. Ltd., which belongs to the Chinese government-established and -supported China IC Industry Investment Fund.

Though CFIUS’s national security reviews are not public, it appears that the CFIUS concerns centered around Aixtron’s work to manufacture equipment for Metal-Organic Chemical Vapor Deposition (MOCVD) systems. These systems are used to produce the multilayer crystalline films necessary for semiconductor production. The US Treasury Department (Treasury), acting in its capacity as the chair of CFIUS, said in its statement regarding the decision that “[t]he national security risk posed by the transaction relates, among other things, to the military applications of the overall technical body of knowledge and experience of Aixtron […] and the contribution of Aixtron’s U.S. business to that body of knowledge and experience.”

When faced with concerns from CFIUS, most parties to a transaction under review seek to mitigate those concerns under agreements with CFIUS or choose to abandon or restructure the transaction. That was not the case here; apparently CFIUS did not believe that its concerns could be mitigated, and the parties were unwilling to abandon or unable to restructure the transaction. Consequently, the transaction was referred by CFIUS to the president, who blocked the transaction, stating, “The proposed acquisition of Aixtron US by the Purchasers is hereby prohibited, and any substantially equivalent transaction, whether effected directly or indirectly through the Purchasers’ shareholders, partners, subsidiaries, or affiliates is prohibited.” The administrative order defined the US business broadly, including any Aixtron US assets such as patents and patent applications.

Click here to read the full Mayer Brown Legal Update.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

HomeopathyOn 15 November 2016, the US Federal Trade Commission (“FTC” or the “Commission”) issued an “Enforcement Policy Statement” (“Policy Statement”) to provide guidance about its enforcement policy on marketing claims for over-the-counter (“OTC”) homeopathic remedies. The FTC concluded that marketing claims that OTC homeopathic products have a therapeutic effect (beyond placebo) lack a scientific basis. Consumers were therefore likely to be deceived by labels that do not disclose the lack of “adequately substantiated evidence” that ‎those products have the claimed treatment effects.

Unlike, for example, US Food and Drug Administration (FDA) regulations that govern prescription drug labels, the FTC’s Policy Statement does not constitute binding regulatory action. However, it lays out the governing principles that the FTC will apply in evaluating whether OTC homeopathic advertising and labeling is deceptive.

The Concept of Homeopathy

The concept of homeopathy was developed at the beginning of the 19th century by German physician and pharmacist Samuel Hahnemann. The therapeutic method is based on the belief that disease symptoms can be treated by minute doses of substances that are capable of producing in healthy people symptoms like those of the disease. In its Policy Statement, the FTC was especially critical of the fact that many homeopathic remedies were diluted to such an extent that they no longer contained detectable levels of active ingredient. Still, the homeopathic drug market has become a multimillion dollar industry with many faithful adherents.

The Commission’s Reasoning

The Policy Statement was informed by a one-day public workshop and related public comments on how homeopathic remedies are marketed to consumers. In its “Staff Report on the Homeopathic Medicine & Advertising Workshop,” the Commission concluded that efficacy claims for traditional OTC homeopathic products were not valid. They were only supported by theories that are not accepted by most modern medical experts and provings that did not constitute “competent and reliable scientific evidence” that these products have the claimed therapeutic effects. The FTC further concluded that no convincing reasons were brought forward as to “why […] OTC homeopathic drugs should not be held to the same truth […] as other products claiming health benefits.”

Notably, the Commission stressed the inherent contradiction that underlies the assertion that a product is effective while at the same time disclosing that there is no scientific evidence for the efficacy claim. Therefore, depending on how the disclaimers were presented, many of them could be insufficient to adequately convey the “extremely limited nature of the health claim being asserted.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Stage costume and Halloween bowl with trick or treat candiesWhen cobwebs and tombstones start to show up in your neighborhood, probably something wicked is coming your way—except that one night of the year, on Halloween. Even though Halloween involves frightening things—haunted houses, the undead, tricks in response to no treats—it is ultimately about carefree fun. And there’s candy! But if you are in a Halloween-related business, there is a genuinely scary side to the holiday—IP issues that, if ignored, could lead to a wicked lawsuit.

For example, in 2005, in the case Chosun International, Inc. v. Chrisha Creations, Ltd., the US Court of Appeals for the Second Circuit declared that elements of a (not very scary) Halloween costume could be copyrightable. Under the US Copyright Act, protection does not, in principle, extend to utilitarian or functional elements of the artist’s original work and, therefore, does not extend to elements that enhance a costume’s functionality qua clothing. However, in the case of Chosun’s plush sculpted animal costumes, the court held that certain elements might be separable from the overall design of the costume, and hence eligible for copyright protection. For example, Chosun might be able to show that the sculpted “heads” and “hands” of its costume design are physically separable from the overall costume in that they could be removed from the costume “without adversely impacting the wearer’s ability to cover his or her body.”

Thinking of creating a costume based on something less cuddly—say a fictional serial killer, such as Michael Myers, Hannibal Lecter or Dexter Morgan? Think again. In principle, fictional characters within an original work of authorship (e.g. a book or a movie) are presumed to be simply ideas not worthy of copyright protection on their own. However, fictional characters may be protected independently of their underlying works, provided that they are sufficiently unique and distinctive. In US law, the consensus seems to be that a well-defined serial killer may be copyrightable. Perhaps the most famous comment on the copyrightability of fictional characters comes from Second Circuit Judge Learned Hand in the 1930 case of Nichols v. Universal Pictures Corp. where he wrote that “the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.”

Happy Halloween!

Finally, you have to be mindful that many trademarks include the term “Halloween” in their mark. And there is a significant number of patent applications relating to Halloween-ish things like coffins, pumpkins or even, in PCs, “zombie process detection.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Tampon versus PadOn 11 July 2016, the US Court of Appeals for the Federal Circuit issued a unanimous en banc ruling in The Medicines Company v. Hospira Inc. that a sale of manufacturing services by a contract manufacturer to an inventor to create embodiments of a patented product for the inventor does not trigger the on-sale bar of 35 U.S.C. § 102.

In US patent law, the on-sale bar is a limitation on patentability providing that an invention cannot be patented if it has been sold or offered for sale more than one year before the effective filing date of the patent application. At issue in Hospira was an old version of § 102, which stated that “[a] person shall be entitled to a patent unless,” inter alia, “the invention was […] in public use or on sale in this country, more than one year prior to the date of the application for patent.”

The Federal Circuit concluded that “to be ‘on sale’ under § 102(b), a product must be the subject of a commercial sale […] that bears the general hallmarks of a sale pursuant to Section 2-106 of the Uniform Commercial Code.” In the case at hand, however, only contract manufacturing services were sold to the inventor. Thus, the inventor maintained control over the patented product. The seller of manufacturing services was not free to use or sell the claimed products or to deliver the patented products to anyone other than the buyer. The court agreed with amici who argued that applying the on-sale bar to the type of manufacturing services presented in this case “would only make the drug development process more costly, punish efficient use of resources, and deter future investments in innovation.” Additionally, doing so would result in “penalizing a company for relying, by choice or by necessity, on the confidential services of a contract manufacturer” instead of manufacturing in-house.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Concert guitar on stage

On 23 June 2016, a US federal jury concluded that Led Zeppelin’s Jimmy Page and Robert Plant did not copy the opening guitar riff in “Stairway to Heaven” from the song “Taurus,” an earlier tune by US rock band Spirit. The latter song, a 2-minute 27-second instrumental, was recorded nearly four years before “Stairway,” and was released on Spirit’s self-titled debut album in 1968.

The conclusion of the “Stairway” case comes a little more than a year after a federal jury in Los Angeles, California, awarded millions to R&B-soul singer Marvin Gaye’s family. The jury decided that recording stars Robin Thicke and Pharrell Williams had plagiarized Gaye’s “Got to Give It Up” in creating their hit single “Blurred Lines.”

Facts of the Case

The “Stairway” lawsuit had been brought by the estate of Randy Wolfe (aka “Randy California”), composer of “Taurus” and one of Spirit’s founding members. It alleged that the arpeggiated guitar part in the introduction of “Stairway” was substantially similar to the signature guitar element in “Taurus” and that Led Zeppelin became familiar with the song when they opened for Spirit in various US concert dates in 1968. Guitarist Page, who co-wrote “Stairway” with singer Plant and composed the guitar riff in question, testified in court that he did not recall hearing “Taurus” until recently, after his son-in-law told him that comparisons were being made between the two songs.

After a brief debate, the jury found that, while Page and Plant may have indeed heard the song, there was no substantial similarity in the extrinsic elements of “Taurus” and “Stairway.” This was lucky for Page and Plant because otherwise they would have been liable for a whole lotta damages. Estimates suggest that “Stairway” has generated some $500 million in revenue since its release. When the jurors heard “Taurus,” however, it was only from the sheet music of Spirit’s composition as played by musical experts hired by each side. Until 1978, songwriters could submit only sheet music to copyright a song in the United States. Thus, only the composition—and not the sound recording—was at issue in the case.

Copyright and Chord Progressions

The interesting question of law about whether and under what circumstances a four-chord progression itself could be copyrightable and whether similarities in instrumentation and orchestration could play a role in the answer was not addressed in this case.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

iStock_000057703720_FullOn May 11, 2016, President Barack Obama signed the Defend Trade Secrets Act of 2016 (“DTSA”), which creates a new federal private cause of action for trade secret misappropriation. The DTSA amends Chapter 90 of Title 18 of the US Code regarding the protection of trade secrets, which had previously only provided for criminal penalties.

Under the DTSA, the owner of a trade secret may bring a civil action for acts of misappropriation occurring on or after the date of enactment of the DTSA if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce. The remedies available include damages and injunctive relief, as well as seizure of “property necessary to prevent the propagation or dissemination of the trade secret” based on an ex parte application by the trade secret owner to a court. The DTSA also provides for security and protection of the subject trade secrets while in the custody of the court.

Misappropriation and Remedies Under the DTSA

The acts for which a person may be civilly liable for trade secret misappropriation under the DTSA are similar to those specified in the Uniform Trade Secrets Act (“UTSA”), as the DTSA’s added definition of “misappropriation” is virtually identical to that in the UTSA. Generally, acts of misappropriation include acquisition or disclosure of a trade secret that was acquired by improper means, or where there was a duty to maintain the secrecy of the trade secret, or where the trade secret was acquired by accident or mistake.

The remedies available under the DTSA include injunctions and various forms of damages. An injunction may prevent actual or threatened misappropriation, but may not prevent a person from entering into an employment relationship, and any conditions placed on employment may be based only on evidence of threatened misappropriation (and may not be based merely on the information the person knows—a deviation from the so-called “inevitable disclosure doctrine”). The injunction may also require affirmative actions to protect the trade secret or (in exceptional circumstances that render an injunction inequitable) condition future use of the trade secret upon payment of a reasonable royalty for a certain period of time.

The damages vary, and exemplary damages and recovery of attorney fees are available in certain circumstances.

Civil Seizure

The DTSA permits a court, based on an ex parte application in “extraordinary circumstances,” to issue an order seizing property “necessary to prevent the propagation or dissemination of the trade secret that is the subject of the action.” The applicant must provide an affidavit or verified complaint, and the requirements for issuing such an order are strict—including, among other things, that specific facts in the ex parte application demonstrate that “the party to which the order would be issued would evade, avoid, or otherwise not comply with such an order” and that the party named in the order misappropriated the trade secret or conspired to do so. In other words, ex parte orders may only be directed against wrongdoers, not against innocent third parties.

Any seizure order issued by a court also must comply with certain requirements, largely directed to ensuring that the seizure is narrow and minimally disruptive to legitimate business operations and protecting from disclosure the seized property until the parties have an opportunity to be heard in court. The order also must require the applicant who obtains the seizure order to provide security to cover damages for wrongful or excessive seizure or attempted seizure.

Security and Protection of Materials in the Custody of the Court

According to the DTSA, any materials seized pursuant to a court order must be taken into the custody of the court, and the court is required to secure the material from physical and electronic access. For example, if the materials are (or are stored on) a “storage medium,” the court is required to prohibit the medium from being connected to a network or the Internet, unless the parties otherwise consent. Further, a party who has an interest in the material seized may make a motion to encrypt the material. Such a motion may be heard ex parte.

Miscellaneous

In addition to creating the first federal private cause of action for trade secret misappropriation, the DTSA amends several aspects of the existing statutes related to criminal liability and addresses other issues. For example, it increases the fines available for criminal theft of trade secrets from not more than $5,000,000 to “not more than the greater of $5,000,000 or 3 times the value of the stolen trade secret to the [violating] organization, including expenses for research and design and other costs of reproducing the trade secret that the organization has thereby avoided.”

The DTSA also provides for immunity for certain confidential disclosure of a trade secrets, and employers are required to provide notice of such immunity in any contract or agreement (either new or updated after enactment of the DTSA) that governs the use by an employee (including contractors or consultants) of trade secrets or other confidential information. The penalty for an employer failing to provide the required notice is the unavailability of exemplary damages or attorney fees for certain actions against the employee to whom notice was not provided.

Conclusion

The DTSA will provide an important new tool for pursuing those who misappropriate trade secrets and may provide added incentive to use trade secret protection, where appropriate. Private causes of action for trade secret misappropriation currently vary state by state, and this new federal cause of action should enhance the ability of owners to enforce their trade secrets. The availability of a civil seizure, in addition to flexible injunctive relief and a variety of damages models, makes the DTSA a potentially powerful weapon. As with any new law, however, much will depend on its application in the courts. Moreover, considering the ongoing existence of state-based trade secret laws, trade secret owners will want to carefully consider the legal mechanism best suited to their needs in any particular case. Separately, employers should be aware of the new required notice that, under the DTSA, will need to accompany contracts and agreements with employees (and contractors and consultants) governing the use of trade secrets and other confidential Information.

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The Diary of a Young Girl, written by Anne Frank between 1940 and 1944 while she was in hiding, is widely considered a touchstone of both literature and history. Anne Frank and her family hid from the Nazis in the occupied city of Amsterdam during World War II. They were ultimately discovered, and Anne died of typhus in the concentration camp of Bergen-Belsen in 1945.

After the war ended, the pages of the diary were found in their hiding space and eventually given to Anne’s father, Otto, the lone surviving member of the family. Otto compiled the pages and edited the manuscript to remove certain material, and the manuscript was published in 1947. Additional editions have since been published that restored the edited material. Since its first publication, The Diary of a Young Girl has sold more than 30 million copies and has been translated into more than 70 languages.

Now, 70 years after Anne Frank’s death, her diaries have spawned some copyright controversy. Copyrights in Europe generally expire 70 years after the author’s death (cf. Art. 64 of the German Copyright Act; Art. 1 of Directive 2006/116/EC). Because Anne died in 1945, her work was expected to enter the public domain on 1 January 2016 – but it might not happen.

On 17 November 2014, the Anne Frank Foundation – a non-profit organization that administers the copyrights on all of Anne Frank’s writings – issued a statement that people would be “wrong to assume that the copyrights to Anne Frank’s Diaries would be due to expire in the near future, or that anyone would be free to use and publish them without permission.” The foundation claims that copyrights were earned by Otto Frank and Mirjam Pressler for two versions of the diaries that they edited and that were published in 1947 and 1991, respectively. Both editors significantly revised the original diaries and, thus, should each be considered a co-author of the work. The copyrights to the adaptations by Otto Frank and Mirjam Pressler, which are the property of the foundation, would not expire until much later: Otto Frank died in 1980 and Mirjam Pressler is still alive.

Final Remarks

It will be difficult to establish whether the editors contributed to Anne Frank’s diary in a way that was meaningful enough to make them each a co-author. The question of co-authorship will ultimately depend on the editors’ intellectual contribution to the diary, which can only be assessed by determining the full extent of their contributions to their respective editions.

In any event, the alleged co-authorship of Anne Frank’s father and Mirjam Pressler will have no bearing on the diary’s copyright term in the United States. Works originally copyrighted after 1922 and renewed before 1978 were given a copyright term of 95 years (a first term of 28 years plus a renewal term of 67 years) from the end of the year in which they were originally secured. Since the English version of the diary was registered (and published) in 1952, it will remain under copyright until 2047. The original Dutch version was registered (and published) in 1947 and its copyright term will expire in 2042.

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