March 2020

Cislo & Thomas and COVID-19

During these unpredictable times, Cislo & Thomas has taken the necessary precautions to put its employees first, while also ensuring that all matters are maintained. Many of our staff and attorneys are safely working remotely to provide clients with seamless service. Our office locations are still open for any phone calls and mail that comes in.

Nonetheless, in unpredictable times like these, we need to become more comfortable with uncertainty. Uncertainty teaches us how to maintain quality despite unpredictability and that our most valuable asset is our health and well-being. No one can predict the future, but we can always aim to be as prepared as possible.

Uncertainty also provides opportunities for new innovations and improvements, like life-changing vaccines and protective health measures or new processes and streamlined operations during changing working conditions.

Don’t let uncertainty stifle creativity. Instead, let it fuel new ideas, and when you’ve hit that life-changing idea, Cislo & Thomas will be here to support your intellectual property goals.

Stay healthy and safe everyone!

EPO and EUIPO Extend Deadlines Amidst Health Crisis

Takeaway: If you have a trademark or patent with the EPO or EUIPO, deadlines are being extended due to COVID-19.

In light of the recent health crisis surrounding COVID-19, the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO) have decided to extend deadlines for patent applications. The EPO extended all periods between March 15 and April 16, 2020 to April 17, 2020. This extension also applies to international patent applications. If the virus outbreak continues the period may also be extended further upon notification. The EUIPO has extended all deadlines expiring between March 9 and April 3, 2020 to May 1, 2020. This extension in light of the COVID-19 outbreak is to aid those with European Trademarks and Community Designs.

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The Ninth Circuit Just Made It a Little Safer to Create Music

Takeaway: Any artist that received a music copyright under the 1909 Act should immediately register a sound recording of the music under the 1972 Copyright Act.

The Ninth Circuit issued its highly anticipated Skidmore v. Led Zeppelin en banc decision on Monday. Skidmore had claimed the introductory guitar riff in “Stairway to Heaven” was a copy of his original work of authorship. After a trial, however, the jury found that Led Zeppelin had not infringed.

Initially, a Ninth Circuit panel reversed the trial court and jury verdict on the grounds that certain jury instructions were erroneous under Ninth Circuit law. The en banc Court disagreed with the panel decision and instead held that the trial court was not wrong to instruct the jury that, “Copyright … does not protect ideas, themes or common musical elements, such as descending chromatic scales, arpeggios or short sequences of three notes.” That is, it is now Ninth Circuit law that a short sequence of three notes is not protectable, by itself at least, nor are descending chromatic scales or arpeggios for that matter.

Additionally, the en banc Court held that the trial court was not wrong to instruct the jury that “any elements from prior works or the public domain are not considered original parts and not protected by copyright“ and to refuse to instruct the jury that, “In copyright law, the ‘original element’ of a work need not be new or novel.”

Lastly, the en banc Court affirmed that the trial court was correct to limit the infringement comparison to Skidmore’s sheet music because Skidmore had asserted only his sheet music registration under the 1909 Act, not any registrations of any sound recordings of his original, such as under the 1972 Act.

Of course, also, (1) the inverse ratio rule is now rejected for good; (2) the Ninth Circuit approved of limiting the infringement comparison to Skidmore’s sheet music where Skidmore did not timely file any sound recordings of his original under the 1972 Act to buttress his sheet music registration under the 1909 Act; and (3) Skidmore cannot complain of the omission of a selection and arrangement jury instruction because he failed to timely object to the trial court’s refusal to include it.

The Ninth Circuit’s Skidmore v. Led Zeppelin en banc decision can be found at:


Change in Fees Effective March 20, 2020 for Copyright Registration

Takeaway: The Copyright Office amended its fee schedule, which will go into effect March 20, 2020.

The Copyright Office announced just this month that it is changing its fees for copyright registration and other services. The new amended fees are in response to public comments, studies, and budget requirements. A number of fees have increased to allow the Copyright Office to recoup expenses, some have decreased, and many remain the same including the group application for photographs.

The fee for online filing for standard registrations will be $65, the filing fee for registering a work by a single author with the same claimant, not for hire, will be $45. Other changes as to the amended fees can be found here:

Image Credit: www. diyphotography .net/us-copyright-fees-will-increase-this-week-by-up-to-six-times-the-current-cos


Federal Circuit Reaffirms Importance of Patent Marking

Takeaway: You must mark your products to recover past damages from an infringer.

Federal patent law allows for the recovery of up to six years of past damages in a patent infringement action. To be eligible for past damages, a patentee, or a patentee’s licensee, must mark its products with the words “patented” or “pat.”, followed by either the patent number or an internet address where the applicable patent numbers may be found. These long standing principles were recently reaffirmed by the Federal Circuit Court of Appeals in Arctic Cat Inc. v. Bombardier Recreational Products Inc., Case No. 17-1475 (Feb. 2020) (denying patentee recovery for past infringing sales where patentee’s licensee failed to mark the patented product).

Patentees must ensure proper marking. Proper marking provides constructive notice to consumers and competitors of the existence of a patent, and is often an important issue in patent infringement actions. A failure to mark a patented product limits a patentee to damages only for sales that occur after an infringer has actual notice of the patent. Actual notice typically occurs upon receipt by an infringer of a cease and desist letter or the date a suit is filed. Relying upon actual notice, while sufficient for injunctive actions, typically precludes a patentee from any meaningful recovery of money damages.

At Cislo & Thomas, in a recent matter we were able to prevent a threatened patent infringement action where investigation revealed that the patentee’s subsidiary failed to mark the patented products and therefore precluded the patentee from recovering money damages for the alleged infringer’s past sales.


Cislo & Thomas LLP Spotlight

Cislo & Thomas Attorneys Obtain a Temporary Restraining Order and Subsequent Injunction Protecting STELLA ROSA wine

The Honorable Judge Robert N. Scola of the Southern District of Florida issued a Temporary Restraining Order (TRO) enjoining a company called Enovation Brands from selling a wine that infringes the STELLA ROSA® wine trade dress. STELLA ROSA is the number one imported Italian wine in the United States and is produced by San Antonio Winery. Due to its enormous success, it has been a target for knock-offs and copycats.

TAttorneys Jeffrey Sheldon and Katherine Bond of Cislo & Thomas successfully obtained a temporary restraining order prohibiting Enovation’s BELLA ROSA wine from being distributed to the mass retailer where it was going to be offered to consumers side-by-side with STELLA ROSA wine. According to the TRO, Plaintiffs were likely to succeed on the merits that the BELLA ROSA wine infringed San Antonio Winery’s distinctive STELLA ROSA trade dress.

TThe infringer subsequently stipulated to a preliminary injunction.


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