I am beyond ecstatic. I was just awarded "Lawyer of the Year" for Franchise Law by Corporate LiveWire!

Every year, the research team of Corporate LiveWire looks for lawyers from all over the world who have demonstrated consistency, excellence and success in their jurisdiction and field of expertise. After four months of screening, online voting/feedback, and judging of finalists, the winners are awarded "Lawyer of the Year." The winners are announced and recognized in a special online publication by Corporate LiveWire.

This year, I have the extreme honor of being named "Lawyer of the Year" for Franchise Law in the Philippines! Franchise Law as a field of law in the Philippines is practically at its infancy. The legislation is minimal and best practices are still being developed and refined. Because it is so raw, I find it quite exciting! To be recognized in this field is absolutely surreal, and I am so glad I got to represent my law firm, Bengzon Negre Untalan Intellectual Property Attorneys. BNU reprezent!

Thank you, Corporate LiveWire!

See the other winners here.

For work, I have been researching on how some popular trademarks lose their protection because they have gotten a little too popular to the point of becoming generic. You know how Pinoys are more used to saying "Pa-xerox nga po nito" instead of "Pa-photocopy nga po ito"? Well that's how the trademark "XEROX," which is used on photocopiers, might lose its protection. People no longer see it as a brand, but have come to perceive that it is the generic term for the good it applies to. In my case, I'm guilty of saying "Pentel pen" instead of permanent marker, and "Tupperware" instead of plastic food containers, mwehehe..

Over the few days that I have been researching on the topic, here are some of the brands/trademarks which I came across that have lost their protection because they have become genericized.

The Victims of Genericide (May They Rest In Peace) -

• Aspirin - Generic in the U.S. since 1921, but still a registered trademark of Bayer AG in other countries; Generic name is acetylsalisilic acid.
• Cellophane - A registered trademark of Innovia Films Ltd. but deemed generic in 1936
• Cola - A registered trademark of Coca-Cola Co. until it was deemed generic in 1946
• Dumpster - Dempster Brothers combined "Dempster" and "dump" and came up with the trademark "Dumpster" in 1936. But it has since been genericized, and Dempster Brothers now uses the registered trademark "Dempster Dumpster" to brand their dumpster.
• Escalator — Otis Elevator’s trademark for their moving stairway was deemed generic in 1950.
• Heroine - Originally trademarked by Bayer AG but became generic in 1919.
• Kerosene — Abraham Gesner's trademark for the combustible hydrocarbon liquid he invented.
• Laundromat - Westinghouse’s trademark for their coin-operated laundry shop.
• Lite Beer - Miller Brewing Co.'s registered trademark for it's low-calorie brew was deemed generic in 1978.
• Murphy Bed - Murphy Bed Co. Inc.'s brand for nifty beds that come out of a wall was deemed generic in 1989.
• Shredded Wheat - Kraft's trademark for its whole wheat cereal was deemed generic in 1938.
• Thermos - King-Seeley Thermos Co.’s trademark for its vacuum flask was deemed generic in 1963.
• Trampoline - George Nissen's trademark for the fun contraption was deemed generic in 1961.
• Yo-yo - A registered trademark of Donald F. Duncan, Inc., the Yo-Yo brand was deemed generic in the U.S. in 1965.
• Zipper - A registered trademark of B.F. Goodrich but was deemed generic sometime in the 1920s.

The Endangered Species (Words thought to be generic but are actually registered trademarks, at least so far) -

• Breathalyzer - Registered in U.S. in the name of Robert F. Borkenstein.
• Bubble Wrap - Registered trademark of Sealed Air Corporation in countries like U.S., Canada, Oman, Israel, Singapore for the best stress-relieving product ever invented.
• Crock-Pot - Registered trademark of Sunbeam Products, Inc. for their slow-cooking device.
• Frisbee - Registered trademark of Wham-O Inc. for their flying saucer.
• Hacky Sack - Registered trademark of Wham-O for its footbag used in a kicking game.
• Jacuzzi - Registered trademark of Jacuzzi, Inc. for their whirlpool bath tubs.
• Jet Ski - Registered trademark of Kawasaki Heavy Industries for their personal watercraft.
• Matchbox cars - Registered trademark of Mattel, Inc. for die cast toy cars.
• Memory Stick - Registered trademark of Sony Corporation for its portable digital storage device.
• Onesies - Gerber Childrenswear, Inc.'s registered mark for their infant bodysuit.
• Popsicle - First registered by Frank Epperson for his frozen dessert on a stick. In some countries, such as the Philippines, it is still a registered trademark of Unilever.
• Rollerblade - Registered trademark of Nordica S.P.A. for a kind of inline skates.
• Saran wrap - Registered trademark of The Dow Chemical Co. for their thin, clingy plastic wrap.
• Scotch tape - Registered trademark of 3M Company for their transparent adhesive.
• Styrofoam - Registered trademark of The Dow Chemical Company for their foam insulation, even in the Philippines.
• Tabasco - Registered trademark of McIlhenny Company for its hot sauce.
• Taser - Registered trademark of Taser International for its stun gun. 
• Velcro - Registered trademark of Velcro Industries BV for their fabric hook-and-loop fastener.
• Zamboni - Registered trademark of Frank Zamboni, who invented this ice resurfacer.

Cases:

Dupont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75 (2d Cir.), cert. denied, 299 U.S. 601 (1936)

Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938)

Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977), cert. denied, 434 U.S. 1025 (1978)

Donald F. Duncan, Inc. v. Royal Tops Mfg. Co., 343 F.2d 655 (7th Cir. 1965)

Dixi-Cola Laboratories, Inc., v. Coca-Cola Co., 4 Cir., 117 F.2d 352 (4th Cir. 1941), certiorari denied 314 U.S. 629, 62 S.Ct. 60, 86 L.Ed. 505 (1946)

Nissen Trampoline Co. v. American Trampoline Co., 193 F. Supp. 745 (S.D. Iowa 1961)

Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921)
Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (Comm'r. Pat. 1950).

Here's another reminder that, in general, the copyright over a work belongs to the author of the work.

A couple of days ago, the iCloud brought a different kind of rain that flooded the cyberspace, one made of pictures of famous celebrities in compromising positions. Among the victims are Jennifer Lawrence, Kate Upton and Kirsten Dunst.

Credits to Jenn Deering Davis, via Wikimedia Commons.

Of course, the immediate goal of the compromised celebrities was to take down the photos. JLaw's lawyers took the IP route. They demanded that the photos be removed because the uploaded photos are illegal reproductions of a JLaw's copyrighted photo, and thus infringed JLaw's copyright.

The porn websites were not swayed. They pointed out that not all of the leaked photos were taken by JLaw, and so under the general rule of copyright ownership, she did not own the copyright to the photos that were not selfies. Now the copyright claim of JLaw's lawyers became a double-edged sword. In order to sustain their takedown request, they would have to reveal the identity of the JLaw's errr.. photographer.

Pays to know something about copyrights, especially if you are running a porn site.

In a previous post, I wrote about the tiff between wildlife photographer David Slater and Wikimedia Foundation over the monkey selfies taken using Slater's camera that Wikimedia has made freely available at Wikimedia Commons.

The U.S. Copyright Office appears to be of the same position as Wikimedia that monkey selfies are not protected by copyright.

Last 19 August 2014, the public draft of the Compendium of U.S. Copyright Office Practices (3rd ed.) was released.

Notably, the public draft states, viz:

The copyright law only protects “the fruits of intellectual labor” that “are founded in the creative powers of the mind.” Trade-Mark Cases, 100 U.S. 82, 94 (1879). Because copyright law is limited to “original intellectual conceptions of the author,” the Office will refuse to register a claim if it determines that a human being did not create the work. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884). The Office will not register works produced by nature, animals, or plants. Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy(ies) state that the work was inspired by a divine spirit.

• A photograph taken by a monkey.

• A mural painted by an elephant.

• A claim based on the appearance of actual animal skin.

• A claim based on driftwood that has been shaped and smoothed by the ocean.

• A claim based on cut marks, defects, and other qualities found in natural stone

• An application for a song naming the Holy Spirit as the author of the work.

The draft will still be reviewed, but shall take effect in mid-December.

In the Philippines, I expect the treatment of monkey selfies to be the same. Our Intellectual Property Code (R.A. No. 8293, §172.1) states:

Literary and artistic works, hereinafter referred to as “works”, are original intellectual creations in the literary and artistic domain protected from the moment of their creation xxx

Applying the same logic as the U.S. Copyright Office, the Philippine copyright law only protects “original intellectual creations,” and excludes works that are not created by a human being.

Seems like a sure-win for Wikimedia, but I think Slater will still try to make his case. The issue here is not really whether a work created by a monkey is the subject of copyright protection. As far as Slater is concerned, the monkey is NOT the author of the selfies to begin with. Slater argues that, since it was he who worked out the settings, he should be credited as the author of the photographs, while the monkey was like an assistant.

If you ask me, I don’t buy it. After all, aren’t selfies exactly that—self-portraits?

The general rule in copyright ownership is that the copyright over a work belongs to the author of the work.

But what happens when a monkey grabs a photographer's camera to take a selfie?

From Wikimedia Commons

Can the photographer claim copyright over the work? Wildlife photographer, David Slater, sure hopes so.

In 2011, while Slater was traipsing through Indonesia to take pictures of the crested black macaque, one of the monkeys filched Slater's camera and started taking perhaps the awesomest self-portraits I have seen in a while. Definitely better than those GGSS (Gandang Ganda Sa Sarili) shots that have invaded cyberspace. Here is another one:

From Wikimedia Commons

Awesome, ei?

The monkey's selfies have since gone viral, and have been made available for free under Wikimedia Foundation's Wikimedia Commons. This prompted Slater to send a takedown request to Wikimedia, claiming that he is the copyright owner and that Wikimedia is costing him royalties. Wikimedia denied the takedown request, arguing that the monkey's selfies are part of the public domain. Undaunted, Slater turned to the U.S. Copyright Office for redress.

Now the ball is in the U.S. Copyright Office's court.

[EDIT: Looks like the U.S. Copyright Office weighed in on the monkey selfies. See here.]