The Prince George’s County School Board in Maryland is considering a proposal that would allow the school district to claim copyright ownership in works produced by students and teachers. The policy takes an extreme position under the copyright “work for hire” doctrine and raises worrisome legal questions about how it would apply to students’ works in particular.
Copyrights typically are owned by the work’s creator, unless the book, picture, video, website or other creative work was made under a “work for hire” agreement. Generally a “work for hire” is something either made by an employee within the scope of her employment or specially commissioned in writing. In that case, the work would actually be owned by the employer or the firm, organization, or individual who requested the work.
The policy under consideration in Prince George’s County specifies that the school district owns works created by both school employees and students even if they are created outside of school time and using the employee’s or student’s own materials. This proposal has raised red flags for reaching beyond lesson plans created by teachers for classroom use to also cover projects, artwork, and papers created by students. It also has spawned a petition site protesting the precedent that would be set by adopting the proposal.
Policies for how to treat teachers’ works vary by school and school district. Universities will treat works differently depending on how much university resources are used to create the work and whether the work was created within the scope of employment.
The challenge with applying the “work for hire” doctrine to student works is that the students are not public school employees. They must legally attend school and cannot negotiate the terms of their attendance and the future use of their work product. No other school district in the Washington, D.C., area has included students under their copyright policies, according to the “Washington Post.”
The school board has taken the policy off of their agenda to rework the language, and at the minimum, they should reconsider including student work within the district’s copyright policy. A broader-than-necessary copyright policy sets the wrong tone for classrooms trying to inspire student creativity.
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You may recall our last blog post titled “Trimming the ‘Deadwood:’ Should Evidence of Continued Trademark Use Be Required Sooner?” This earlier post explained that the U.S. Patent and Trademark Office (PTO) sought public comment on whether it should shorten the post-registration deadline for trademark owners to show use (or excusable nonuse) of their marks. Based on the comments it received, the PTO has decided not to make any changes at this time, which leaves the current deadline in place for filing between the fifth and sixth year after a mark registers.
Proponents of shortening the post-registration evidentiary timeline suggested that the move would trim the “deadwood” off of the Principal Register. Some feel that “deadwood” – unused marks – can be bumps on the road to registration for a new mark, since these “dead” marks can be cited by the PTO against attempted registration by a “live” applicant. However, some raised concerns about whether the change would have required burdensome adjustments to docketing systems that firms use to keep track of trademark maintenance deadlines or would have impacted U.S. treaty obligations.
The PTO’s explanation for maintaining the status quo was, in part, as follows:
“…although many commenters expressed concern regarding registrations that are no longer in use in connection with some or all of the goods/services listed, the predominant sentiment was that
the deadline should not be shortened. Several commenters also noted that further research and data were necessary to support a legislative change to the deadline. To that end, the USPTO notes
that it is currently conducting a post-registration pilot program to gather information regarding the accuracy of identification of goods/services for registered marks.” (77 FR 30197 (May 22, 2012))
Given the possible ramifications that commenters noted and the divergence of opinions on the subject, it makes sense for the PTO to study the issue further. While the goal of increasing the accuracy of the Principal Register is commendable, it doesn’t appear – at least at first blush – as though the positives outweigh the potential negatives in making the suggested change.
© 2013 Dunner Law PLLC
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The U.S. Patent and Trademark Office (“PTO”) is seeking comments from the public on whether to pursue a change in trademark law to shorten the deadline for owners to demonstrate continued use (or excusable nonuse) of their marks.
Currently, trademark owners must file a sworn statement that their registered mark continues to be used in commerce – or that there has been an excusable nonuse of the mark – between the fifth and sixth years after the date of registration. Failure to file this document, known as a Section 8 or 71 affidavit, means that the PTO will cancel the mark’s federal registration.
The PTO is considering whether to shorten this deadline to show use. Under the PTO’s current proposal, trademark owners would have to show use of their mark between the third and fourth years after the registration date (such a change in the law would require Congressional action, so the PTO is simply testing the waters with this idea).
The PTO’s thinking behind a shortened continued use time period is to clean up a register that has a tendency to get bogged down with “dead” marks. It is not unusual for a business to discontinue use of a mark either due to business failures or changes in product marketing strategies. Also, in the case of a foreign registrant, the mark may never have been used in the U.S., since foreign registrants are not required to demonstrate use in the U.S. prior to registration like U.S. owners are.
The accuracy of the register would arguably improve if the PTO could remove marks that are not in use earlier than after the current five year filing deadline. This in turn could save trademark applicants time and money in clearing and registering potential marks since the “deadwood” on the register creates obstacles and conflicts for legitimate marks to pass through to registration.
However, if the deadline shifts earlier, trademark owners will not be able to jointly file their Section 8 affidavit of use along with the optional Declaration of Incontestability – a Section 15 affidavit that can only be filed after a mark has been used continuously for five years. Filing the two together is a simple process and can save on attorney’s fees. On the other hand, staggering the Section 8 and Section 15 filings over a two-year-period might also allow start-ups and small businesses with tighter cash flows to more easily manage the costs of maintaining their registrations.
What do you think? The PTO has extended the comment deadline to October 22. Comments can be sent to TMFRNotices@uspto.gov.
By Virginia Knapp Dorell, Law Clerk
© Dunner Law PLLC
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September 24, 2012 – 6:00 pm
Categories: dunnerlaw advisory, Trademark
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Tagged deadwood, intellectual property, Internet, IP, PTO, Section 15, Section 8, trademark, USPTO
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