Brooke Penrose


Brooke Penrose

Nearly two years since many professionals gathered in-person and on-site, the prospect of return-to-office en mass is picking up pace.

The U.S. Bureau of Labor Statistics reports that the percentage of people telecommuting due to the pandemic dropped from 23.2% in January of 2021 to 13.4% in August of 2021. While this trend is met with mixed emotions by some, there is broad consensus that in-person gatherings, including return-to-office initiatives, are planned with the safety of all individuals in mind.

Given the rapidly evolving landscape surrounding COVID, a popular safeguard employers consider is requiring employees to provide proof of vaccination status before physically returning to the office. Any request for employee health records rightfully raises concerns about privacy and the legality – to request.

In most cases, businesses requesting an employee provide proof of vaccination will not violate the Health Insurance Portability and Accountability Act of 1996 (HIPAA), but requiring the employer-provided insurance policy to confirm status may-. In general, HIPAA only applies to a patient’s healthcare providers, healthcare clearinghouse, and insurance companies (called “covered entities”) and the businesses that process patient health information on behalf of covered entities (called “business associate”). If an employee directly provides their health … Keep reading

Brooke Penrose and Deb Peckham


Brooke Penrose and Deb Peckham

In a recent decision, the Trademark Trial and Appeal Board (TTAB or Board) considered whether an application based upon an “intent to use” a mark in commerce may be predicated on proposed use with currently unlawful goods that may become lawful in the future.

In In re Joy Tea Inc., the applicant proposed to use its mark with, among other items, “tea-based beverages also containing CBD.” The Examiner refused to register the mark on the grounds that applicant’s claim of proposed use of a mark “in lawful commerce” was invalid due to not complying with the Food, Drug and Cosmetic Act at the time the application was filed.

On appeal to the Board, the narrow question became: “[D]oes a trademark applicant’s belief that the cannabis goods specified in its trademark application will become federally lawful in the future provide a sufficient basis upon which to predicate its claimed ‘intent to use’ the mark in lawful U.S. commerce?”

The TTAB’s answer was “no.”

The TTAB upheld the Examiner’s refusal to register the applicant’s mark based on the longstanding prohibition against attempting to reserve a right in a mark, rather than having the ability to use the mark in commerce.… Keep reading

Navigating the New Standard Contractual Clauses


The European Commission published its implementing decision for the new Standard Contractual Clauses (“SCCs”) in June of 2021.  On September 27, 2021, the old SCCs that had been adopted prior to the General Data Protection Regulation (“GDPR”) going into effect were officially repealed and all new data transfers relying on the SCCs as its cross-border transfer safeguard mechanism under the GDPR will need to adopt the “new” SCCs.  (For more on SCCs generally, see our post here.)

Unlike the old SCCs, the new SCCs require the parties to engage in some thought about the nature of their cross-border data transfer relationship and customize the SCCs to fit such.  Specifically, the new SCCs outline four categories of relationships that may be covered by the new SCCs under different “modules” within the SCCs:

  • Module 1: controller to controller
  • Module 2: controller to processor
  • Module 3: processor to processor
  • Module 4: processor to controller

Once the parties understand the nature of their relationship, the new SCCs can be pulled together following the modular format put forth by the European Commission, with about half the new SCC provisions containing unmodifiable language applicable to all relationships and half of the new SCC provisions … Keep reading

My Friends Call Me Murphy … You Call Me RoboCall


Pesky telemarketing calls that plagued consumers in the 1990s were severely reined in through a combination of technology, such as caller ID, and legislation, such as the Telephone Consumer Protection Act of 1991 (“TCPA”). The TCPA regulates unsolicited marketing activities directed at residential telephones, including land lines and mobile phones by voice call or text. Among other things, the TCPA, as amended over the years:

  1. Established the national Do Not Call registry whereby consumers may register their numbers and organizations may be fined for directing unsolicited marketing activities to those registrants’ phones;
  2. Restricts the time periods during which unsolicited marketing calls and texts may be sent;
  3. Prohibits the use of pre-recorded phone contacts, such as robocalls and robotexts; and
  4. Prohibits the use of automated dialing technologies, such as autodialers.

Importantly, there are several phone and text activities that are exempt from TCPA regulation. Unsolicited marketing contact by phone from charities, political groups, debt collectors, surveys, and companies the recipient has either recently done business with or has given written permission may be exempted from certain TCPA regulations. In addition, if the nature of the unsolicited contact is not to market goods and services to consumers, it would not run … Keep reading

Less Than Two Months Until New Chinese Data Security Law Goes Into Effect


Earlier this June, China passed the Data Security Law (“DSL”), which will go into effect on September 1, 2021. Unlike many international data security laws, the DSL is not restricted to personal information and instead regulates data broadly to include any record of information in electronic or other forms. However, consistent with many international privacy and data security laws passed post-GDPR, the DSL will have extraterritorial reach.

Specifically, the DSL applies not only to processing personal data within China but also to any personal data processing activities that occur outside of China that threaten Chinese national security, public interest, or the lawful interests of its citizens or organizations. If this describes something your organization engages in, here are the top operational requirements covered by the DSL:

  1. Establish a data security management system across the organization. This should include providing data security training, implementing appropriate measures to safeguard data, and designating a data security officer if the organization processes important data.
  2. Actively monitor data security risks. When a risk is discovered, such as data security defects or leaks, the organization must take immediate remedial actions. When a data security incident occurs, the organization must immediately take responsive measures, notify users,
… Keep reading
State of US State Comprehensive Privacy Laws


Following the lead of California and then Virginia, Colorado recently became the third U.S. state to pass a comprehensive law providing its residents with personal data privacy rights. While there is significant overlap between how each of these state laws defines who it applies to and what consumer rights are granted, there are several key differences, including the scope of consumers’ opt-out rights:

These states make up a combined 16% of the U.S. population, making it increasingly difficult for even strictly U.S.-focused organizations to fall out of scope of comprehensive data security and privacy laws requiring, for example, the use of data protection assessments.

The U.S. regulatory landscape continues to evolve on a nearly weekly basis. Indeed, similar comprehensive bills have already been introduced in Massachusetts, New York, and Illinois. As more states pass legislation related to collecting personal information, it remains imperative for businesses to stay updated on how each state regulates this activity.… Keep reading

EU’s New Standard Contractual Clauses Go into Effect This Week


A year ago, the Court of Justice of the European Union invalidated the U.S. Privacy Shield framework as an adequate safeguard under the General Data Protection Regulation (GDPR), which had previously been a popular safeguard mechanism to cover the export of personal data from the EU to the U.S. While the same decision also held that another GDPR-sanctioned cross-border transfer safeguard mechanism – Standard Contractual Clauses (SCCs) – remained valid, the Court took the opportunity to note in its decision that the then-current SCCs may not go far enough to safeguard the rights of European data subjects.

SCCs are pre-approved contractual terms between an EU controller or processor to a non-EU processor or sub-processor. By adopting them into a contractual arrangement where an EU party is transferring personal information to another country, the international transfer is said to have adopted “adequate safeguards” under Article 46 and should avoid running afoul of the GDPR’s restriction on such transfers. The SCCs the Court opined on pre-dated the GDPR, and there has been a push to update them since the GDPR went into effect on May 25, 2018. On June 4, 2021, the European Commission announced it had finally approved new versions … Keep reading

Supreme Court Ruling Limits CFAA Application for “Insider” Authorization Misuse


Does the Computer Fraud and Abuse Act (CFAA) and its harsh penalties apply to employees who exceed their authorized access to computer systems for personal reasons? The Supreme Court has now said no.

The Supreme Court issued a 6-3 decision this week limiting the application of the CFAA against company “insiders” who exceed the scope of their authorization to access company data. The CFAA, generally speaking, provides both civil relief and criminal penalties against individuals who “access a computer with authorization and to use such access to obtain or alter information in the computer that the accesser is not entitled so to obtain or alter.” Prior to this decision, there was a circuit split where some courts interpreted “unauthorized access” as including access to data that exceeded a limited scope of authorization provided to an individual, and other courts interpreted “unauthorized access” more narrowly to mean that the CFAA only applied to individuals who had no scope of authorized access.

In Van Buren vs. U.S., police sergeant Nathan Van Buren accessed a law enforcement database through his police-issued laptop to provide license plate information to a third-party for non-law enforcement purposes for money. The transaction was part of a … Keep reading

Spilling the Tea on Lawful Use According to the Trademark Office


Does a trademark applicant’s belief that the cannabis goods specified in its trademark application will become federally lawful in the future provide a sufficient basis upon which to predicate its claimed  “intent to use” the mark in lawful U.S. commerce? This was the question recently presented at the Trademark Trial and Appeal Board (TTAB) – the administrative body tasked with hearing appeals of refusal to register marks by the U.S. Patent and Trademark Office (USPTO).

Overview of Federal Trademark Lawful “Use” Requirement

In general, federal trademark rights provide the owner with national, exclusive rights to use a mark in connection with a specific set of goods and services. Unlike most other countries, the USPTO has a “use based” trademark system, meaning it requires trademark owners to demonstrate actual use of their marks in lawful U.S. commerce in order to register and/or maintain their trademark rights.

A federal trademark application must include a description of goods and services described with sufficient particularity to be understandable to the average person. The application can be based either on current use of the trademark in connection with the claimed goods and services in U.S. commerce or based on its future intent … Keep reading

Florida Gone Wild: Back-to-Back “Breaking News” on Privacy Law Leads to No News


Breaking news out of Florida: On April 21, 2021, the Florida House, in a near unanimous vote, passed the Florida Privacy Protection Act (FPPA). Largely modeled after the California Consumer Privacy Act (CCPA), the FPPA would have made Florida the third state to pass a comprehensive privacy and data security law, following Virginia’s passage of its Consumer Data Protection Act (CDPA).

Just as quickly as it passed the Florida House, though, it was killed by the Senate on April 30, 2021, after disagreement between the House and Senate as to whether the bill should give individuals a private right of action to sue companies that violate their privacy rights under the FPPA. The pro-private-right-of-action camp believes a privacy act without a private right of action is an impotent law, while the anti-private-right-of-action camp believes the right unduly burdens businesses with costly compliance obligations.

Washington’s version of the CCPA, the Washington Privacy Act, suffered a similar fate a month ago after a similar fallout over the same private right of action question.

The failure of both Washington and Florida to pass comprehensive privacy laws – along with California’s and Virginia’s passage of comprehensive privacy laws that include a private right … Keep reading