IP LAW 101™

Trademark Registration Costs: Is It Worth It?

2011-09-09T10:47:00.000-07:00

Hello everyone,

I receive dozens of calls per week from individuals wanting to register a trademark with the USPTO. However, once I give a potential client an average price quote to begin and complete the trademark process, many are hesitant to proceed. They state, "well this company only charges X amount of dollar to file a trademark" or "I can just file the application myself and save on the legal fees."

The trademark process is very complex and unless you know what you are doing, it can become very difficult or near impossible to do without assistance. As I have said many times before, a large percentage of clients I receive have attempted to do it alone or hired a company such a Legal Zoom and the USPTO has sent them an office action they can not understand. Common reasons the USPTO will reject an application are: 1) there is a conflicting priority trademark or 2) the specimen is insufficient.

Trademark registration costs

On average a good trademark attorney charges between $2000 and $3000 to initiate and complete the federal trademark registration process. Why? Here is a breakdown of costs:

Comprehensive Search

If you have a logo and a name that needs protection, trademark search companies such as Corsearch, charge around $1000.00 to deliver a comprehensive search. A comprehensive search results in a nationwide search of various state and federal databases such as company names, DBAs, state trademark databases, USPTO and Library of Congress databases to discover any competing or priority trademarks. They will also search Dun and Bradstreet and Internet domain names.

Trademark registration companies will not do a comprehensive search and will simply do an Internet search and proceed with registration. What can you expect for only $299? I am always adamant my clients do a comprehensive search because an Internet search will not find the mom and pop store with a priority trademark that has been operating for 40 years and does not have an Internet presence.

Legal Fees

Legal fees to review the results of a comprehensive search; draft a search opinion letter regarding your priority trademark rights; and to complete the USPTO application range between $1000-$1500. Of course these fees depend on the attorney's hourly rate and whether there is a junior attorney working on the application and a partner needs to review it. In that situation, the legal fees could be significantly more.

USPTO filing fees

Registration fees per trademark are between $275 and $325. However, this amount depends on how many classifications are chosen in the registration process. Classifications are based on what goods or services the trademark will protect. I always like to use the BBQ restaurant as an example. If you want to trademark ZZZ BBQ restaurant and also sell bottled ZZZ BBQ sauce and t-shirts, you would register the mark under three classifications: restaurant services, sauces, and t-shirts.

As you can see, the actual legal fees made on a trademark registration is on average 50% of the actual trademark registration fee. The above process works for me and I have been very successful in registering clients' marks.

I always tell potential clients the following when considering federal trademark registration: you will either pay $2500-$3000 now or pay thousands more in fighting a trademark infringement action; fighting for your trademark; or rebranding because you spent funds on branding materials and you suddenly discover you have to choose another trademark.

I hope this information was helpful.

Trademark Misappropriated? What Are Your Next Steps?

2011-09-01T12:06:00.000-07:00

Hello:

Sorry for the long hiatus. I have thankfully been very busy with clients. Finding the time to write on this blog has been a chore. Through my work experiences for the past 6 months, I have some helpful intellectual property law tips I would like to share.

Here is the scenario. You wake up one morning and you find out that a major brand, publication, or celebrity is using your trademark. You have been using it for 5 years before this brand recently starting using it, but you have never went through the formal trademark registration process with the USPTO. You wonder, do I have any trademark rights without USPTO registration? & How can I reclaim my trademark from this larger more powerful company?

1. Trademark Rights.

There are two types of trademark rights: common law and federal.

Common law right.

Any person or business entity that is first to use a unique name, logo or phrase (trademark) that identifies a product or service available for public consumption, has a common law trademark right. This right attaches regardless if the trademark is registered with the USPTO. There are limitations to this right. A common law trademark right only is applicable to the region where the trademark originates or is sold.

Federal trademark right.

A federal trademark right is granted by the USPTO and there is a registration process. Once a trademark receives an official registration, it is valid in all 50 states.

Conclusion: Owners who are first to use non-registered trademarks do have priority to use those marks exclusively in their state or region.

2. How Do I Assert My Common Law Trademark Rights Against the Larger Company?

The most effective way to assert your trademark rights against any infringer is to put them on notice they are infringing your mark. I have settled 90% of my client's trademark disputes through a cease and desist letter. Although a common law trademark right only gives the owner priority to use the mark in the owner's region, a common law right can stop the company from selling an infringing product or providing a service in that region. Also if the larger company attempts to register the mark with the USPTO, the USPTO can bar registration if they find the competing priority common law trademark. Unless the larger company can prove the common law trademark owner agreed to allow the company to use the mark or the common law trademark owner abandoned the mark, the USPTO will be very hesitant to allow registration.

In sum.....

As I have discussed before cease and desist letters are very important in policing and maintaining your trademark whether it is registered or not. Trademark owners can lose their trademark rights if they allow others to use or infringe the mark without defending it. How does this happen? A company that really wants to own the mark and register it with the USPTO can petition the USPTO and submit evidence the mark was abandoned through non-activity (when an owner ceases using a mark) or non-defense of infringement (not expressly putting others on notice of their infringement and demanding they cease).

Trademarks are valuable intellectual property. Defend and protect them wisely.

Join Me for a Webinar: Policing and Protecting Copyrights on the Internet

2011-04-17T15:10:00.000-07:00

Hello there!

I know long time no hear. I have been so busy working and the time I previously had to update this blog as been next to zero. But I did want to let you guys know that I am co-presenting a very timely and informative Webinar entitled, "Policing and Protecting Copyrights on the Internet." My co-presenter and I will share information on the following:

1. Unprecedented theories of secondary liability that seek to hold banks, credit card companies, advertisers and search engines liable for copyright infringement—even if the underlying infringement is based on user-generated or unrelated third party content.

2. Battles over the meaning of "display" under 17 U.S.C. sec. 106 in the Internet context.

3. Fair use as a doctrine, an affirmative defense or a substantive limit on the scope of a copyright-holder's right to exclude.

4. Technological solutions to copyright infringement and the rise of digital rights management.

I will specifically discuss the Fair Use exception to the Copyright law. I will also discuss Digital Rights Management (DRM) software and open source software as it relates to copyright infringement and protection. I am thrilled to share my knowledge on these pressing issues.

If you are interested in listening in on this Webinar, the host company, Strafford Publishing is offering a 50% discount to all of my colleagues, readers, and affiliates. Simply click the following link to register: https://www.straffordpub.com/store/cart

I hope you can attend!

Edouard Lambelet Founder of Paper.li discusses Copyright Infringement and Fair Use with IPLAW101

2011-01-10T19:01:00.000-08:00

Happy New Year!

I hope your New Year started off awesome and wonderful things happen for you in 2011.

Have you heard of the service Paper.li? Well it is the new rage on Twitter and it is beginning to take off. Paper.li allows users to organize links shared on Twitter and now Facebook into a newsletter style format. For example, a Twitter user can create a free paper.li account and designate specific Twitter users' links, usually based on subject or topic, into their own online newspaper. Sounds like a pretty amazing service. However, I observed that the newspaper does not only post the links to the content but a portion of the content published in those links. Sometimes the amount of content is a sentence or two. However, other times the service may publish a portion of content that equals a small paragraph.

I had an opportunity to interview one of the founder's of Paper.Li, Edouard Lambelet, regarding how the service works; benefits of paper.li; and possible copyright challenges. Below is what he had to say:

IPLAW101: Mr. Lambelet thank you so much for taking time out of your busy day to talk to IPLAW101 about paper.li.

Edouard: No problem. We enjoy talking to content producers. Content producers are the leaders in social curation and this is what our service is about.

IPLAW101: How did you come up with the concept of Paper.Li?

Edouard: We just wrote a blog post on this very question. On the blog we gave an in depth analysis of the need for paper.li. Paper.Li was created to fill the void in content curation. Basically, there is so much information being shared on Social Media platforms and it can be overwhelming. Paper.Li acts as a filter and organizes content by semantics and ranking. Through this system we are able to arrange content via topics and relevancy to the user.

IPLAW101: I have used the service and had my content re-published in other newsletters. I was a bit concerned about the amount of content that was published in the newsletter. The service re-publishes links but also a portion of content from those links. What is your reasoning behind re-publishing content and not just links to content? Are you concerned about Copyright challenges?

Edouard: Well the re-publishing of a small portion of the content contained in the links makes it easier for users to read and discern what content to read and in what order relevant to them. Also the re-posting of a snippet of the content provided by links is pretty much the standard now in social networking platforms. Twitter and Facebook are currently providing the same type of service to their users.

In addition, we do not re-publish links from private accounts on either Twitter or Facebook. We only re-publish links from public accounts.

IPLAW101: I think the difference in paper.li's service is that the user is able to create their own newspaper and acts as a publisher of the content whereas on Twitter and Facebook the user is freely sharing their content and links. So initially it seems as if the user may be publishing content without the owner's permission. I had a Twitter debate regarding paper.li and a fellow Twitter user suggested maybe your service can require users to send a link to content creators asking their permission to re-publish portions of their content. Have you ever considered making this an option with your service?

Edouard: Actually no. We have never received any complaints about the re-publishing of a portion of content via links. As a matter of fact, users have raved about the service because it boosts blog traffic. Users generally experience a tremendous boost in blog traffic.

IPLAW101: Yes, I have heard this from other Paper.Li users and they all are amazed about the jump in blog traffic.

Edouard: In addition, if a content producer does not want their content included in a paper.li newspaper, we do give them the option to opt-out of the service. Our goal is to be the leader in social curation and help users of share and consume content in an highly organized fashion.

IPLAW101: Thank you for your time.

Edouard: Thank you.

I really did appreciate Edouard giving me this interview at 10pm Paris time. He was very open to discussing the platform. Essentially his view is that the benefits of paper.li outweighs any possible copyright issues.

My take:

As I have previously discussed on this blog, copyright infringement occurs when:

Copyright Infringement occurs when another unlawfully copies, sells, displays or performs a copyright owner's work without their express permission. However, in some instances, copying a copyright owner's work without their permission is allowed. This is called the Fair Use exception. Specifically, an infringer of a copyright can argue Fair Use if they meet one of the following criteria:

1. the purpose and character of the use is for non-profit or non-commercial purposes;
2. the nature of the copyrighted work is artistic and benefits the public;
3. the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole; and
4. the effect of the copying upon the potential market for or value of the copyrighted work is minimal.

Paper.li's publishing of a portion of the copyright owner's work without their permission arguably falls under number 3 of the Fair Use exception, the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole. To be fair to paper.li, re-publishing only a couple of sentences may very well qualify as Fair Use. Plus the U.S. Courts have not been very definitive about what portion of a copyright work is Fair Use or Copyright Infringement. These cases are usually decided on a case by case basis. For example, a few sentences of an article may be copyright infringement if it contains the heart of the work. Harper & Row, Publishers, Inc. v. Nation Enters, 471 U.S. 539 (1985). In the alternative, a substantial portion of a work may be Fair Use if the use is a parody or criticism. Campbell v. Acuff-Rose Music, INc., 510 US 569 (1994).

So far the service has not received any challenges and user's find it beneficial to their blogs. Paper.li has over 2 million users and has just raised another $2.1 million in financing to expand the service globally. So paper.li is having a great deal of success. I will be watching to see how the service grows and deals with issues as they arise.

What is Fair Use and Intellectual Property 101

2010-12-01T07:17:00.000-08:00

Hello:

I hope everyone had a wonderful Thanksgiving Holiday. This time of year is always busy for me because clients want to wrap up legal issues before the end of the year and I have a family that demands my attention with all the Holiday hoopla!

Currently, I am working on a very interesting story about what does copyright case law say about proper linking and quoting in regards to copyright infringement. What is Fair Use and what is not? As copyright owners, we do not want individuals quoting our work without our permission. However, service providers and news organization want to be able to provide 'snippets' or a portion of copyright protected material and links without always having to go to the copyright owner for permission. So I will explore in my article what does the law say about this delicate balance between copyright infringement and Fair use? Stay tuned, it will be a very informative and interesting piece.

Also, next week I am speaking to a momprenuer networking group about Intellectual Property 101! Yes, these ladies have some pretty genius products and business ideas and they want to know how to protect them. So I will explain the difference between patents, trademarks, trade secrets and copyrights; how to properly protect these types of intellectual property and the benefits of licensing and royalty income. I love educating individuals on Intellectual Property and am I am looking forward to it.

Thanks for reading!

Twitter's New Trademark Guidelines: Why Trademark Guidelines are Important

2010-11-02T20:19:00.000-07:00

Hello Everyone:

Recently, Twitter revealed its new trademark guidelines regarding the proper use of the Twitter name and trademarks.

Some key terms of the new trademark guidelines are as follows:

1. When users promote their own Twitter accounts, they need to use the proper Twitter logo and ensure the letter "T" in Twitter is capitalized.

2. When mentioning Twitter on TV or any other public forum, users should refer to the company as Twitter and messages as Tweets. Also unless expressly given permission to do so, do not imply an endorsement or relationship with Twitter.

3. Users must not ever manipulate or change the Twitter logo. Furthermore, ensure the Twitter logo is not next to your logo to imply an association.

4. When developing Twitter applications, developers are now forbidden to use Twitter or Tweet in the name of the app.

5. Developers are also forbidden from copying the look and feel of the Twitter website in developing applications and websites.

Twitter's new trademark guidelines were necessary in order for Twitter to protect and manage its brand. Remember a trademark owner can lose trademark rights if the trademark is not controlled and managed. Specifically, a trademark owners has to:

1. Ensure the mark does not become generic (a common name for the goods or services and ceases to function as a source for the goods);

2. Ensure trademark infringers are prosecuted effectively and swiftly. A trademark owner that allows anyone to use their trademark without prosecuting infringers, has a weak trademark. A weak trademark is one that is no longer considered unique to the trademark owner's product or service.

Trademark Guidelines Assist in Brand Management

Trademark guidelines are first steps in alerting the public to the proper use of a company's trademarks and ultimately brand. They ensure the trademark is used properly; forbids impermissable uses or as Twitter states "the lawyers get involved"; and clearly gives direction as to when express permission or a license is needed for use.

Trademark Guidelines are especially important if your brand is entering a partnership with another brand or if your brand is used by multitudes of people.

Does your brand have trademark guidelines in place?

Facebook vs. Faceporn: Trademark Infringement or Copyright Infringement

2010-10-27T08:48:00.000-07:00

Hello!

Recently, Facebook filed a lawsuit against the pornographic social networking site, Faceporn, alleging trademark infringement of its trademark, Facebook. Specifically, Facebook alleges the use of the mark, Faceporn, is "confusingly similar" to the mark Facebook and the use of the mark, Faceporn, is causing dilution of the Facebook brand.

Dilution

Dilution is a trademark infringement legal claim that can be asserted by famous brands. I have previously discussed Dilution here. Dilution occurs when a lesser known brand uses the mark of a famous trademark owner, and the use of the more famous mark by the lesser known brand, dilutes the distinctiveness of the famous trademark. Dilution can be asserted by famous trademarks even if the products or services are totally unrelated.

Although, Facebook is claiming the use of the Faceporn mark is diluting its brand via tarnishing its reputation, with the revision of the Dilution statute, the only thing Facebook has to prove is the use of the Faceporn mark will cause a likelihood of confusion between the two trademark among the relevant consuming public.

Likelihood of Confusion

The courts determine whether likelihood of confusion exists by balancing 8 factors. Those factors are: if the marks are similar in sight, sound, and meaning; the similarity of the goods and services sold; the similarity of the distribution channels and customers for the goods or services at issue; the sophistication of purchasers and the expense of the product or service at issue; the similarity of means and methods of advertising and promoting the goods or services at issue; whether there is evidence of actual confusion of consumers or other relevant groups; the strength of the mark; and was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark?

I think Facebook would have a hard time proving the trademarks were similar in sight, sound, and meaning. Facebook and Faceporn clearly do not have the same meaning. Furthermore, they really do not sound the same...book and porn. The only thing Facebook could possible claim is similar is the word "face" in both trademarks. But I do not believe that is similar enough. Next, Faceporn could certainly refute that Facebook and Faceporn have the same customers and/or distribution channels. Individuals looking for porn are not going to go to Facebook to find it. At least I don't think so. In addition, Facebook users seems to be very sophisticated consumers and would have enough intellect not to go to Facebook looking for or expecting to see the contents of Faceporn. Also, I am sure Facebook and Faceporn are not promoting their services through the same advertising and/or marketing channels. Lastly, I do not believe Facebook can prove actual confusion between both sites among their and Faceporn's consumers. Like I said earlier, people looking for porn are not going to visit Facebook attempting to find it and vice-versa.

However, I do believe the strength of Facebook's lawsuit against Faceporn lies in the last two factors. Clearly, Facebook, has a strong trademark. It is a unique term created by Facebook and was created to brand the number one social networking site. Also, Facebook could easily prove Faceporn created the trademark and site with the intent to copy the famous Facebook trademark. Specifically, Faceporn's site did have the same look and feel as Facebook. The logo was in the same type and font, the color scheme was the same and the layout was identical to Facebook's. I believe Facebook would have a stronger copyright infringement claim than a trademark claim. Clearly, Faceporn copied the layout and style of Facebook's site.

You can view a screen shot of the Faceporn site here. It has since been changed. But what do you think?

Speaking About FTC Rules and Ethical Blogging At Lavish!

2010-10-18T07:26:00.000-07:00

Hello!

I have been neglecting this blog because I am so busy these days. Which is a good thing and I am not complaining.

So here is an update on my activities for the last month. I attended another social media conference, Blogalicious. It was a good time and of course I learned a few things. Most importantly, individuals are using social media in such creative and business savvy ways. It is amazing. There is a lot of intellectual property being created through social media and individuals have to become educated about protecting their intellectual property.

I was invited to speak at the Lavish Experience Conference. It is a conference conceived and produced by Shameeka Ayers of The Broke Socialite and focuses on the Lifestyle blogger. Lifestyle blogging is Big Big Business and mainstream media and corporations are taking note! I will discuss how to navigate offers of paid income to blog or advertise on beauty and fashion blogs while also adhering to the revised Federal Trade Commissions Regulations regarding disclosure of paid advertising and product endorsement on social media platforms. Yes disclosure is required on all blogs, Facebook updates, Twitter feeds, etc.

The conference will take place here in Atlanta, GA at Mansion Hotel from December 10-12.

If you can not attend, please follow my tweets on that day. My tweets will include all the good information you need!

Senate Bill Cracks Down On Online Infringement

2010-09-30T07:57:00.000-07:00

Hello!

Last week, Senator Leahy along with a host of other co-sponsors, introduced SB 3804: Combating Online Infringement and Counterfeits Act. This Bill gives the Attorney General authority to seize domains of infringing websites if it is proven the sites are totally dedicated to Intellectual Property infringing activity. The Bill defines infringing activity as: websites that provide access or offer for sale unauthorized copies of copyright protected material or any website that sells or distributes good or services bearing a counterfeit mark in violation of a trademark's owner exclusive right to use the mark. Specifically this Bill is targeted to websites that sell counterfeit goods for luxury items such as designer purses, watches, jewelry and shoes.

This Bill also gives Internet Service Providers (hosting companies, domain registrar, etc.) the right to shut down the infringing site and provides immunity to the ISPs for doing so. The Bill also allows the Attorney General to prevent a website that is non-domestic from conducting business in the U.S. and prevent the importation of infringing goods and services. The Attorney General will also keep a list of infringing websites or domains available to the public via online.

Results?

As evidenced, Intellectual Property Infringement is rampant on the Internet. Intellectual Property owners spend considerable amounts of money defending their Intellectual Property through DMCA take down requests, cease and desist demand letters, TROs and IP Internet Monitoring Services. However, sometimes these efforts may stop infringers for a moment, but if they are highly organized, they re-group and infringe again. This is particularly relevant when it comes to counterfeit goods. This bill allows the Attorney General to combat online infringement at the source.

The Bill has been referred to Committe and should be up for a vote soon.

Do you think this is a step in the right direction in stopping online Intellectual Property Infringement?

Are Recording Contracts Works Made for Hire?

2010-09-19T19:10:00.000-07:00

Hello:

In light of the recent decision in the Fifth-Six Hope Road Music Ltd (Estate of Bob Marley) vs. UMG Recordings, many Artist are worried that all of their sounds recordings are going to be classified as "works made for hire." Basically, the judge ruled in the Bob Marley case that all of his recordings with Island Records from 1973-1977 were "works made for hire" and Universal Music Group is the rightful owner of the copyrights to five recordings Marley recorded. Specifically, the judge determined that despite Marley's artistic control over the recordings, both parties had a contractual agreement that clearly indicated the Marley sound recordings were "works made for hire."

A work made for hire is defined as a work created by an employee within the scope of the employee's employment. A work made for hire can also be created by a contractual agreement between two parties. Because most recording contracts are classified as independent contractor relationships and not employer-employee relationships, recording contracts are not usually deemed as works made for hires. However, record labels are now adding work made for hire clauses into recording contracts and artists and artists rights organizations are up in arms.

Work made for hire clauses in recording contracts have serious legal implications for artists. If the sound recording is classified as a work made for hire, the record label can retain the copyright to the work and the Masters in the recording. As a general rule, the Artists retains the right to have the Masters returned after a ten year period. This gives the Artist control over licensing and other revenue that can be obtained from the Masters. In addition, there is also "termination of copyrights" to consider. Termination of copyrights assists artists who may have signed away their copyrights. After 56 years, the artist can recapture the copyright for the last 39 years of the 56 years. For example, a contract signing away copyrights entered into in 1950 can be terminated in 2006 and the copyright can revert (artist has to give proper notice of termination) back to the artist or original author of the work. However, termination of copyrights is not applicable if the work is specifically a "work made for hire."

It is evident that both record labels and artists have a lot of stake when it comes to work made for hire clauses. Artists should hire good legal representation to ensure their works are not classified as works made for hire. Especially if the artist has created the work indepedently and not as an employee.

I welcome your thoughts.

Twitter TOS: Does It Apply To Celebrities?

2010-09-13T19:30:00.000-07:00

Hello Everyone!

I hope all is well.

A couple of weeks ago, I wrote a post on Black Web 2.0 about Twitter's Terms of Service Agreement and whether it applied to Celebrity Twitters. The article spread like wildfire on the web and I was kind of surprised. Read the full article below and tell me what do you think.

Over the past week Hip-Hop artist, 50 Cent, took control of his Twitter account and went on a tweet rampage. He threatened to kill people, posted pornographic images, issued defamatory statements against other artists, and also made racist statements. His Twitpic account was suspended due to the pornographic images. But his Twitter account is still up and running.

If that weren’t enough, last Sunday, Denver Nuggets forward, Carmelo Anthony and his wife Lala got into a Twitter fight with exhibitionist Kat Stacks. Allegedly, Carmelo offered $5000 cash to anyone who would physically harm Kat Stacks. He also allegedly threatened her with physical harm. As a result Stacks has filed charges against Anthony.

Is Twitter becoming the wild, wild west of social networks? Twitter does have “Twitter Rules” in their Terms of Service Agreement that outlines Rules of Content for posted content. Specifically Twitter prohibits:

1. Impersonation

2. Trademark Infringement

3. Violation of Privacy

4. Violence and Threats

5. Copyright Infringement

6. Promotion of Illegal Activities

7. Spam Abuse

But considering 50 Cent’s Twitter account is still up and running and other Tweeters are also guilty of violating Twitter’s Rules of Conduct, does Twitter actually enforce these rules? Twitter states “we do not actively monitor user’s content and will not censor user content, except in the above limited circumstances.” Twitter basically covers themselves with this statement and considering the millions of users on Twitters, it makes sense. But is Twitter motivated to take action against violaters, especially if they are celebrities and have millions of followers like 50 Cent? The rapper even bragged that @ev (Evan Williams), co-founder of Twitter, gave him a call and said he was the best thing that happened to Twitter. This may or may not be true, but it is an interesting statement.

Carmelo Antony’s Twitter account was deleted but we don’t know if Twitter deleted his account or the NBA forced him to delete his account. His statements to Kat Stacks are a federal crime and if proven he did in fact make the statements from his computer or mobile device, he could potentially face jail time and suspension from the NBA. Carmelo and his wife are now claiming his Twitter account was hacked and he did not send the criminal tweets.

Whether Twitter enforces its Rules of Conduct are debatable. However, when Tweets are written and sent, they are forever in cyberspace regardless of whether the user deletes the tweet or their Twitter Account. Tweets are public records and can be used as evidence in any civil or criminal litigation. I previously wrote a post on the Do’s and Dont’s of Twitter. Many of those Do’s and Dont’s included several of the above Twitter Rules. But regardless if Twitter kicks violators off Twitter or not, engaging in “Dont’s” can get you sued, jail time, and fines.

So be careful what you tweet. When in doubt, just don’t.
Category: Featured, Social Networking | Tags: 50 Cent, black web 2.0, Civil Litigations, Criminal conduct, Defamation, Federal Crimes, IPLAW101, Kat Stacks, La La and Carmelo Anthony, NBA, Phillips Givenslaw, Pornography, terms of service agreements, Threats, twitter, Twitter Rules of Conduct, Violence

Madonna Sued for Trademark Infringement for Material Girl Collection

2010-08-23T20:32:00.000-07:00

Hello Everyone!

Trademark infringement lawsuits are plentiful. Pop Icon, Madonna, is currently being sued by apparel manufacturer, LA Triumph, over the use of the trademark "Material Girl", the name of Madonna's new teen clothing line. L.A. Triumph claims it has used the "Material Girl" trademark in commerce since 1997. The company further stated, it has used the trademark in the same classification as Madonna, which is junior clothing. Apparently, both lines offer similarly styled clothing which is reflective of the 80s era.

Who Has Priority Trademark Rights

I did a search for Material Girl on the USPTO Trademark database website and Madonna's company, Material Girl Brand, LLC, filed for the trademark "Material Girl" in the clothing and accessory classifications based on intent to use. The application was published for Opposition (meaning another company can assert priority trademark rights and have the application denied) on July 20, 2010. Then there is L.A. Triumph, which does not have a registered trademark or pending trademark application with the USPTO, claiming it has been using the mark in commerce (offering goods for sale to the public) since 1997.

As I have previously discussed on this blog, an unregistered trademark, has priority rights, if the mark is used first in the region the mark originated. If it is proven L.A. Triumph did actually have a viable junior clothing line using the trademark "Material Girl" since 1997, then L.A. Triumph can assert trademark infringement in its region: the West Coast. Madonna could possibly still use the mark in other parts of the country, but of course that would be near impossible as the clothing is offered nationwide in Macy's stores.

Did Madonna's team do a thorough trademark search?

The answer to that question is not known. Either her legal team did not perform a good comprehensive trademark search and did not discover L.A. Triumph's prior use of the "Material Girl" mark. Or the search was valid and because of L.A. Triumph's non-use of the mark, could not be found. We just do not know the answer to that question yet.

Resolution

Madonna could fight L.A. Triumph regarding the use of the "Material Girl" trademark or she could settle. I predict she will settle because millions of dollars have already been spent manufacturing, marketing the clothes, and distributing the line. So a quick resolution is in the best interest of Material Girl Brand, LLC. A settlement could include either the purchase of the trademark rights outright or an agreement to some type of licensing fee.

I am looking forward to the outcome of this case.

Pillsbury Doughboy vs. My Dough Girl: Is it trademark infrigement?

2010-08-16T18:22:00.000-07:00

Hello Everyone:

Have you heard about Pillsbury Doughboy vs. My Dough Girl. Pillsbury sent a cease and desist letter to Tami Cromar owner of My Dough Girl cookie bakery asserting her "My Dough Girl" trademark was too similar to the trademarked "Doughboy." Apparently, Ms. Cromar applied for registration of the mark with the USPTO and Pillsbury immediately sent her a cease and desist. As I have discussed previously, trademark infringement occurs if 1) a trademark owner can assert priority to use the mark (1st to use the mark in commerce) and 2) there is a likliehood of confusion between the priority mark and the subsequent mark. Pillsbury stated "the application was for categories in which we operate, including cookies and refrigerated dough products nationally. We needed to protect our trademarks — and we did." Ms. Cromar sells fresh baked cookies and refrigerated dough cookies.

Are the marks too similar?

Well that is debatable. There are many factors that are assessed to determined if two marks are likely to cause confusion in the marketplace because they are too similar. One is are the marks similar in sight, sound, and meaning. One could argue that because "Doughboy" and "My Dough Girl" have the same meaning as both companies are in the cookie and refrigerated cookie dough business. Also, one could argue "Dough Girl" is too similar in sight and sound to "Doughboy." However, I could also argue the three words "My Dough Girl" together are unique enough not to infringe "Doughboy" and they are not similar in sight and sound. But I believe because the classifications and products are the same, Pillsbury did not want to take any chances.

Similar Doughboy registered trademarks

Ms.Cromar stated she did not understand why Pilsbury was picking on her as there are several companies with the "Doughboy" trademark. I did review registered "Doughboy" trademarks with the USPTO and either they were established well before Pillsbury's "Doughboy" trademark or the marks are in unrelated categories. Two similar trademarks can co-exist if the product or services are unrelated and are categorized in entirely different classifications. The only instance a company can prevent registration of a similar trademark in an unrelated classification is when the company has a very famous trademark and they can assert Dilution, i.e., the similar trademark is diluting the famous brand.

What is next for My Dough Girl

Ms. Cromar agreed to select another trademark rather than fight Pillsbury. But all is not lost. The considerable amount of publicity she has received from the media coverage will no doubt boost her sales at her physical bakery and her online business. She does have a Facebook Fan Page of supporters who want her to fight Pillsbury. I did visit her website and her cookies are indeed unique and look very tasty. If this controversy had not surfaced, she would just be a locally known bakery in Utah..Now her business is a nationally known and famous bakery. Not a bad trade off.

Blogher 2010: Mastering Intellectual Propery Law on the Internet Session Recap

2010-08-12T10:35:00.000-07:00

Hello Everyone:

As some of you know, I co-presented a presentation at Blogher 2010 entitled Mastering Intellectual Property Law on the Internet and other legal issues in cyberspace. My co-presenter was Wendy Seltzer of the blog ChillingEffects.org. She is a Berkman fellow and law school professor. She specializes in copyright, fair use, and other legal issues in cyberspace such as first amendment and privacy issues.

We covered four main topic areas. They were: Protecting your own Intellectual Property, Respecting others Intellectual Property, Privacy, and Defamation on the Internet. We tag teamed all topics and had so many detailed questions we actually ran over our allotted time. Apparently this is a much needed topic for social media enthusiasts.

When discussing protecting intellectual property, we specifically covered how to protect copyrights, trademarks, and trade secrets. We also discussed why owners of these types of intellectual property should protect them. One reason is because owners of intellectual property can lose out on valuable royalty or licensing income if not protected. No one wants to lose money!

Next we discussed how to respect others intellectual property and not infringe their works. We explained when it is permissible to copy without permission in certain Fair Use circumstances. Wendy explained in detail proper linking, the DMCA take down procedure, and creative common licenses.

I then gave a general overview of Privacy issues. I explained the need for every website or blog to have a basic privacy policy which is a disclosure document. A privacy policy protects the owner of the site and the user. Read my article on Privacy policies here.

Lastly, we both touch on Defamation and how to avoid defamation on the Internet. We also discussed the Communications Decency Act which states website owners or internet service providers are not liable for defamatory statements left by visitors.

If you are interested in seeing the notes or hearing the audio from this presentation, please click here.

Is Google Winning the Battle in Key Words Advertising Litigation?

2010-08-03T14:29:00.000-07:00

Google may have won the battle in Europe in regards to allowing advertisers to purchase trademarks as key words in their Google Ads program. Recently, the highest court in France found Google not liable for trademark infringement in the Google vs. LVMH case and referred the case back to the France Court of Appeals.

Previously, the lower court ruled Google was liable for trademark infringement for this practice. I previously wrote about this practice here. Basically Google allows a competitor of a company with a well established trademark like "Catepillar", to purchase the trademarked "Catepillar" as a key word. When a search is executed for the competitor company on Google, the competitor's link may show up before "Catepillar's" own link. Doesn't sound fair, does it? Many companies have either complained or sued Google for this practice and the courts have been split. In the U.S. one circuit agrees it is trademark infringement, while another circuit disagrees. However, in Europe, Google seemed to be having a harder time defending this practice as the courts have pretty much sided with the trademark owners.

The French lower court concluded a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products. I previously covered this ruling here. However, the higher court disagreed.

Where does this leave Google? Well Google feels like this decision was in their favor and believes and I quote "All cases which get ruled upon by the French Supreme Court go back to the French Court of Appeal as matter of course," Ben Novick, a Google spokesman said. Google further argues, "The French Court of Appeal will need to apply the law as laid down by the Cour de Cassation today. The Cour de Cassation has ruled that Google is not guilty of trade mark infringement, unfair competition or misleading advertising. All else is 'ifs' and 'buts."

However, LVMH feels differently. They welcome the case being remanded to the Court of Appeals and believes the French Court of Appeals "will enable the Paris Court of Appeals to rule on Google's civil liability when using trademarks without the trademark owner's authorization. The Court of Appeals will determine any potential wrongdoing committed by Google to the detriment of Louis Vuitton"

It will be an interesting outcome.

The Importance of a Website Compliance Program

2010-07-28T09:11:00.000-07:00

Hello Hello!

I have been somewhat absent on this blog but that is going to change. My goal is to recommit to posting weekly on this blog. Thank you for continuing to read and visit this blog.

Today I am going to discuss the importance of an effective website compliance program. Website owners should ensure employees and users of their websites are not exposing them or their companies to liability by posting items that are illegal, defamatory, or infringing. A perfect example of a website that did not have an effective website compliance program is Blogetery.com. Two weeks ago, web host, Burst.net, shut down the Blogetery website, a platform that hosted 70,000 blogs. Why? The FBI contacted Burst.net and informed the company that an FBI investigation revealed the site's server contained terrorist threats and Al-Queda activity. There was only one blog in the platform that engaged in the illegal activity, but Burst.net chose to shut down the entire site because it violated the Terms of Service Agreement. Blogetery.com could have avoided termination of its services/website if they were ensuring all blogs posted on the blog were complying with applicable laws and Terms of Service.

What does a website compliance program look like?

A website compliance program involves content scanning and analysis to help ensure compliance with privacy rules, industry regulations, (such as HIPAA) as well as internal Web quality standards such as defamatory statements and infringing activity. A company can hire one or two people dedicated to ensuring all content posted is in compliance or a company can purchase website compliance software that will do the job.

For example, a website such as Blogetery.com, which hosted 70,000 blogs, should install website compliance software to ensure compliance. It would take an army of individuals to effectively ensure a site that large was in compliance. However, a smaller website or blog, can simply have one person dedicated to identifying potential liable information and removing it immediately. This person may also have the authority to issue the offender a warning and/or permanently block the offender from the site.

There are several website compliance software programs available. They can be programmed and tailored to fit each website's needs. Here are a few:

IBM Rational Policy Tester

Trace Security, Website Compliance Audit

Does your website have some sort of compliance program or procedure in place?

Playboy Sues Artist Drake, Cash Money and Universal Music for Copyright Infringement

2010-07-12T09:28:00.000-07:00

Drake, Cash Money, and Universal Music Group are currently being sued by Playboy Enterprises for copyright infringement. Playboy Enterprises claims Drake used a sample of their copyright protected song "Fallin' in Love" by Hamilton, Joe Frank, and Dennis/Reynoldstown in the beginning of the hit "The Best I Ever Had," without their express permission. I actually listened to "Fallin' in Love" and "The Best I Ever Had" and the tracks are very similar. You can listen to both songs here.

If Playboy's claims prove to be true, someone on Drake's team failed to properly receive clearance from Playboy to use the song. As I previously discussed on this blog, the process of clearing a song can be difficult. Usually, the producer or production team will use a sample of a song before it is actually cleared. Producers are not actually thinking about clearing songs while caught up in the creative process. The producer's legal team, agent or manager will contact the publisher or copyright owner to get permission to use the sample. However, getting clearance to use a song can take a while. Sometimes it takes months before there is a return call from the publisher or copyright owner. Also, there can be a break in negotiations regarding royalty payments. The publisher or copyright owner may demand royalty payments that the producer is not willing to pay. Or the copyright owner can simply refuse to allow the producer or artist to use the song. This happens often and can be very frustrating for artists.

As I previously discussed here on Black Web 2.0, a copyright owner can receive between $750 and $30,0000 per instance of copying against a defendant for copyright infringement. If the copyright owner can prove that the infringement was willful, i.e., the infringer had knowledge that the activity (copying) constituted infringement or recklessly disregarded the possibility of infringement, then the copyright owner can receive $150,000 per instance of copying. Playboy is claiming Drake and company willfully committed copyright infringement and are asking the court for an accounting of all of the profits Drake, Cash Money and Universal Music Group have made from the song. They are also requesting an injunction to stop the defendants from further playing or selling the song.

It is much easier to just ask permission.

Rising Recording Artists and Producers: How to Properly Clear a Song?

2010-07-06T05:18:00.000-07:00

I have been absent from this blog because I have been extremely busy working and writing for other publications and my own personal blog. But every week, visitors come to this blog to receive good information about Intellectual Property and I am grateful. I hope to update this blog more often. Thank you for continually reading and supporting this blog.

Popular recording artist Drake and his record labels Cash Money, Inc. and Universal Music Group, Inc. are currently being sued for copyright infringement for allegedly using a song as a sample without the copyright owner's express permission. If the allegations are proven true, I can only conclude that someone on Drake's production team either did not understand the process of clearing a song or simply did not follow through with the process. In my practice I have represented recording artist and producers and the clearance process can be one of frustration and confusion for an artist. Therefore it is important that artists' representatives are diligent in ensuring their clients are not committing infringement when creating art.

The clearance process is relatively simple but can be complex for numerous reasons. They are:

1. The copyright owner is not available,
2. The copyright owner refuses to give permission to use the work,
3. The copyright owner demands an excessive royalty,
4. The need to get permission from multiple copyright owners of one song.

For artists who are not represented, here are a few simple tips in clearing a song:

1. Search the U.S. Copyright Office database to locate the owner of a song. All copyright registrations require the owner to list their contact information.
2. If the copyright owner is not available, search the databases of ASCAP, BMI, or SESAC to properly locate the publisher or copyright owner.
3. Send a request to use the song and an offer of royalties in writing.
4. Follow-up the letter with a phone call.
5. Negotiate an acceptable royalty rate to use the song.
6. Get a licensing agreement in writing.

If the publisher or copyright owner refuses to negotiate or allow use of the song, the only remedy is to choose another song and get clearance. It is the copyright owner's right to allow use of their work as they see fit.

When and How to use Licensing Agreements

2010-05-19T16:41:00.000-07:00

Intellectual Property is just that — property. It is a very valuable asset to the owner. It can be brought and sold, used as leverage, and licensed. Licensing Intellectual Property is a great source of income for IP owners. Licensing Intellectual Property serves two purposes for the IP owner: It provides valuable income and a way to further market and grow the owner’s business or IP in the market place.

An IP owner should seek or approach a potential licensee in the following circumstances:

1. If the potential licensee is an infringer. An IP owner can make it a win/win situation for both parties. The IP owner can receive income for the infringer using the owner’s IP. Also, the IP infringer gains the reputation of the IP owner and becomes a licensee rather than an infringer. Both parties can now make satisfactory income from the arrangement.

2. The IP owner wants to expand its product or services. By licensing the IP to like-minded licensees, the IP owner can expand its brand into other geographic areas or markets. It also allows the IP owner to expand its customer base.

How to License IP

1. First make sure you own the IP you want to license. An IP owner will need to prove to the licensee that the IP owner has rights to the Intellectual Property. Evidence can be demonstrated by USPTO and Copyright Registrations. In addition, if the IP owner acquired the IP from another owner, a transfer of ownership agreement should be presented.

2. Determine the value of the IP. IP Licensing fees can range from 1 to 20 percent of the sales of the licensee. The royalty fee or licensing fee depends on the value of the IP. If the IP is unique, the licensing fee is higher. If it is common, it is much lower. An IP owner can hire an IP agent to determine the value.

3. An IP owner should ensure that they receive a minimum licensing fee regardless of the licensee’s sales. This will ensure the IP owner receives compensation for their IP regardless of the licensee’s sales.

An IP owner should hire a IP attorney to draft an effective licensing or royalty agreement to ensure the agreement protects the IP owner’s interest. The agreement will include such particulars as how the IP should be used or displayed. The brand has to be communicated correctly so it does not use its value.

Theft of Trade Secrets: Apple, Gizmodo, and Apple Software Engineer

2010-04-27T10:27:00.000-07:00

By now everyone has heard that Gizmodo's Editor, Jason Chen's, home was raided by authorities last week. The police seized computers and servers in an effort to ascertain how he obtained the stolen i-Phone 4G prototype phone. Gizmodo admitted they paid $5000.00 for the unreleased prototype and refused to reveal their source. The knew the phone was stolen and yet they still displayed and discussed the unreleased i-Phone 4G prototype on their website.

Of course Apple did not take their actions too kindly and promptly launched an investigation. Chen and Gizmodo are claiming the search warrant was unlawful because he deserves reporter's privilege. However reporter's privilege has never extended to a reporter who knowingly commits a crime or aids and abets in the commission of a crime. They are many arguments regarding what type of crime was committed by Chen, Gizmodo, and the employee that "allegedly" left the phone at a bar. However, I argue that Apple has every right to pursue prosecution based on California Law concerning "Theft of Trade Secrets."

Trade Secrets

Trade Secrets are a type of intellectual property. A trade secret can be a formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable to the public.

Some examples of Trade Secrets are:
1. Formula for the soft drink, Coca-Cola
2. Business processes
3. Marketing Strategies
4. Food Recipes
5. Computer Algorithms
6. Prototypes
In addition, the trade secret must be of an economic advantage over a business' competitors or customers. Lastly, the owner of the trade secret must take reasonable efforts to maintain its secrecy.

Apparently Apple is upset that Gizmodo has exposed company's trade secrets of the prototype. Of course if Apple's competitors have been watching surely this exposure lessens Apple's competitive advantage over the competition. But knowing Apple, they will simply raise the stakes and change the design.

Consequences for Theft of Trade Secrets

Under California Law, the acquisition by improper means of trade secrets (meaning by theft, bribery, or breach of duty to maintain secret) is a punishable criminal crime and civil liability. California Civil Code Section 3426.1-3426.11 California law also holds the receiver of a trade secret liable if the receiver "knew or should have known" that the alleged wrongdoing was occurring. California Civil Code Sec. 3426.1(b).

Clearly Chen and Gizmodo knew that they had received the i-Phone 4G prototype, unlawfully. Therefore according to California Statute they are guilty of Theft of Trade Secrets.

In addition the California Penal Code states Theft of Trade Secrets is a crime and punishable by imprisonment in state prison or county jail not to exceed 1 year. California Penal Code Sec. 499 (c). I gather this is why the authorities raided Chen's home in an effort to ascertain whether they have enough evidence to prosecute Chen under this code.

One thing is clear. Apple has put the public on notice that they are not tolerating any such leaks in the future.

The Do's and Don'ts of Twitter!

2010-04-22T19:47:00.000-07:00

Hello Everyone:

Here is a copy of an article I posted on Black Web 2.0 regarding legal pitfalls Twitters find themselves in using Twitter.

Let me know what you think.

In light of the recent Library of Congress archive of all of our “tweets”, Twitterers need to be more cautious and cognizant of what they discuss or tweet on Twitter. Now most of us keep it simple and don’t engage in legal pitfalls such as defamation, terrorist threats, pornography, disclosure of private information, or intellectual property infringement. However there are others that treat Twitter like the wild wild west of social media networks. Defamation, pornography, and threats of Presidential assassination are rampant. There have been lawsuits filed and legal action taken against Twitters who engage in this type of behavior.

When using any social media network, anything you say or promote, good or bad is forever in cyberspace waiting to reward or punish you. And now that the federal government via the Library of Congress has all of our tweets, we should be more cautious and strategic about what we say on Twitter. Here is a list of Twitter dos and don’ts to assist Twitterers in avoiding legal liability or jail time.

1. Don’t threaten to kill the President or anyone else for that matter. Terrorist threats are a felony crime and you will go to jail.

2. Don’t engage in conversations or make statements about a person’s character or reputation unless they are 100% true, already known to the public, and are made for news reporting purposes and not to maliciously ruin a person’s reputation. Translation: Stop the Twitter fights!

3. Sending links to porn sites and posting porn is never a good idea. Links could potentially link to child porn sites and child pornography is a federal crime.

4. Although Twitter does not claim in ownership in Twitter’s content which may include intellectual property, other Twitter users may infringe or use your content for their own purposes. If you are tweeting copyright material, please do put a © sign behind the tweets to put others on notice of your ownership. This includes original thoughts, quotes, phrases, ideas, pictures, etc.

5. Never discuss company trade secrets or reveal your own private identifying information on Twitter.

Remember when using Twitter or any other social network, use common sense. Don’t engage in behavior that can cost you your freedom, job, or family.

Elan Requesting Ban on Imports of Apple’s iPAD

2010-04-12T19:08:00.000-07:00

Elan, a touch-pad manufacturer, petitioned the United States International Trade Commission requesting the Commission ban all imports of Apple’s new iPad. Elan and Apple are currently involved in patent infringement litigation regarding the “touch-pad” function of Apple’s iPhone, iPad, iPod Touch, and Apple’s line of MacBooks. Elan has alleged that Apple used two of the company’s patents for “touch-pad” technology without their permission and refuses to properly compensate the company for creating the technology. Apple is denying the allegation and is also counter-suing Elan for infringing three of its patents for “touch-pad” technology.

Ban on Imports

Although Apple is an American company, all of its products are manufactured by two Chinese IT solutions companies, Foxconn and Inventec. Apple contracts with these Chinese manufacturers to produce their product and they in turn ship the products back to the U.S. for sale.

U.S. International Trade Commission

The International Trade Commission is a independent organization that “with broad investigative responsibilities on matters of trade. Among other things, the Commission also adjudicates cases involving imports that allegedly infringe intellectual property rights.” If the International Trade Commission determines that Apple violated Trade Laws by importing infringing products, the Commission could ban all Apple “touch-pad” technology into the U.S.

What’s Next

I doubt the International Trade Commission will issue such a ban on Apple’s “touch-pad” products. Both Elan and Apple are claiming patent infringement and are entrenched in patent infringement litigation. I think the International Trade Commission may await the result of any settlement or court decision before making such a decision. I think we all have to wait until the dust settles on this one.

Net Neutrality: Good or Bad Public Policy

2010-04-06T06:54:00.001-07:00

Hello:

Here is a reprint of an article I wrote over at Black Web 2.0. It is gaining a lot of buzz. What do you think of Net Neutrality.

There is a lot of buzz surrounding Net Neutrality. Consumers want to know how it affects them in regards to their Internet service. In this article, I will attempt to explain Net Neutrality in plain terms and further explain what is means for you, the consumer.

Net Neutrality

Net Neutrality is the principle that everyone regardless of wealth, power, or influence should have the same access to the Internet.

Does everyone have the same access to the Internet?

Apparently not. The Federal Communications Commissions imposed sanctions against Comcast when it discovered the cable giant discriminated against peer-to-peer networking file traffic in an effort to restrict bandwidth usage demand on its broadband network. Comcast is appealing this decision. Consumers have also alleged the principle providers of broadband service, are charging a premium to consumers who require faster connections, better quality of service, and larger bandwidths to transmit data.

Federal Communications Policy regarding Internet Freedoms

The FCC imposed sanctions against Comcast based on the Four Internet Freedoms enacted in 2005. Due to numerous consumer complaints and vocal opposition from the cable industry, last fall, the FCC included two more rules to round out the set. They are as follows:

1. Consumers are entitled to access the lawful Internet content of their choice.
2. Consumers are entitled to run applications and use services of their choice, subject to the needs of law enforcement.
3. Consumers are entitled to connect their choice of legal devices that do not harm the network.
4. Consumers are entitled to competition among network providers, application and service providers, and content providers.
5. Broadband providers cannot block or degrade lawful traffic over their networks, favor certain content or applications over others and cannot “disfavor an Internet service just because it competes with a similar service offered by that broadband provider.”
6. Broadband providers must be transparent about the service they are providing and how they are running their networks.

The FCC announced their intention to formally adopt all 6 rules that will become the FCC policy on Net Neutrality. The Commission requested public comment and debate regarding the proposed rules and will make its final decision this year.

How Does Net Neutrality Affect the Consumer?

Net Neutrality benefits the consumer because the consumer will be confident they can use the Internet at an affordable flat rate without having to pay for faster connections or more bandwidth. Also consumers can rest assured that if they are using a large amount of bandwidth, the cable operators would not be able to block their Internet access.

Net Neutrality particularly affects business consumers who offer VoIP, downloadable movies, gaming and other services that require a great deal of bandwidth. These business consumers argue that Net Neutrality is needed so they can effectively compete with Cable operators that may offer the same services.

How Does Net Neutrality Affect Cable Operators?

Of course, cable operators and other Internet Service Providers are against Net Neutrality. The cable operators argue they have to charge a premium for better quality of service (faster connections, larger bandwidth). Understandably, the Cable operators argue that they will not be able to invest in better networks and connections if they cannot charge a premium to those who “tax” the broadband system. They also contend that Net Neutrality will stifle competition and result in higher flat rates for consumers.

The bottom line is that there needs to be some type of balance regarding Net Neutrality Rules. Yes the Internet should be open and non-discriminatory. However, providers of broadband and other Internet services should be able to charge a bit more for consumers who tax their service.

IPLAW101 Listed as 1 of 20 Twitters to follow on theGrio a NBC Universal Company

2010-04-05T15:13:00.000-07:00

Hello Everyone!

Good news! IPLAW101 was listed as one of the 20 Twitters you should follow on Twitter! Thanks to theGrio and BlackWeb20.com. Check out the slide show of the 20 influential Twitters here.

theGrio is a a video-centric news community site devoted to providing African Americans with stories and perspectives that appeal to them but are underrepresented in existing national news outlets. It is affiliated with MSNBC.com and is owned by NBC Universal. Black Web 2.0 is is the premier destination for African-American’s in Technology and New Media.

Legal Issues in Social Gaming

2010-03-24T19:01:00.000-07:00

Hello:

Here is an article I wrote on Black Web 2.0 about legal issues in Social Gaming. Check it out and tell me what you think.

The short answer is a resounding NO!

Social gaming is the new IT factor in Social Networking. There are tons of Social Games that are accessible through iPhone apps, Facebook, and other Social Networks. Even the mega traditional gaming companies, like EA Sports, are getting into Social/Online Gaming.

Social gaming is exciting and a way to socialize with a multitude of individuals from around the world. However, when creating a user account to engage in social gaming networks, a user is essentially signing away a host of legal rights. After reading several Terms of Service agreements of the most popular social gaming networks, I have concluded a player uses these services at their own risk. Below are some clauses that I found particularly troublesome:

1. Privacy. Most social gaming privacy clauses will promise not to share or sell your personal information. However, the clauses go on to state how the service provider collects your information and how and what will be shared. For example, when using a social gaming service, the service will send Cookies to collect information about your Internet usage. The cookies will also collect “certain technical information” about your computer and Internet Service Provider. Third parties companies, who have a relationship with the social gaming service, can also send Cookies to your computer to collect Data. In addition, those companies may have access to your personal information. In most cases, players are automatically enrolled in third party programs and/or services and the social gaming service can not provide you with an option to opt out of these programs or services.

Privacy laws require Internet Service Providers to disclose how and what information is collected from users of their service. Although, the data collection process may be questionable, if disclosed properly it is permitted. However, users of Social Gaming sites may still want to think twice before engaging in such services. Recently Storm 8, a provider of Social Games for iPhones, was sued for collecting phone numbers from iPhone users without disclosing this practice to users or with their consent.

3. Data Security. Most Social Gaming Services protect user personal account information. This information includes birth dates and billing information. These sites state all account information is stored on secured severs behind firewalls. Most services use SSL technology to encrypt the account information. Usually only social security numbers, billing information, and dates of births are encrypted. Generally encryption does not apply to email addresses, phone numbers, or any other identifying information.

3. Defamation. All Social Gaming Networks prohibit any defaming, harassing, intimidating, or discriminatory behavior. However, the Social Gaming site has the right to remove this information, but is not obligated to remove the offensive material.

4. Intellectual Property. Any copyrights or trademarks the User owns or creates on the Social Gaming site belongs to the copyright or trademark owner. However, the user grants the site a royalty free license to use the copyright or trademark as they wish. When dealing with copyrights, the social gaming site can sell the copyright, make a derivative work (ex. turn a short story into a movie) of the copyright, publish or broadcast the copyright without any compensation to the copyright owner. Essentially, the Social Gaming site can use your copyright to make money while not paying you. Ouch.

5. Right to Use Your Likeness. Users also give the Social Gaming site a right to use their persona, name, or likeness without any compensation to the the User.

6. All Users are prohibited from advertising or promoting themselves or any business or service. However, the Social Gaming site can include the User in advertising or promotion campaigns without any compensation.

In conclusion, when a person signs up to use social gaming services, they should read the Terms of Service Agreements and be aware of their legal rights. In my opinion, engaging in social gaming sites legally benefits the service provider and not the user. However, the player is entertained and sometimes that is enough. My advice: User Beware.

Does Your Company Have a Social Media Policy?

2010-03-18T21:40:00.000-07:00

Hello:

If you have not figured it out by now, Social Media is mainstream. Because of Social Media's popularity, employers and employees have to be careful when engaging in Social Media in and outside of the workplace. Misuse of Social Media by employees can expose companies to liability, lost customers, and misappropriation of intellectual property.

EVERY company should have a Social Media policy outlining how employees should conduct themselves when using Social Media tools. This conduct should be followed whether using Social Media in a work capacity or for personal use. Remember, once something is posted on Social Media sites, it is forever out in cyberspace for the world to see.

When implementing a Social Media Policy, a company should ensure the policy contains the following provisions:

1. When employees are using social media tools for personal use, they should not use any company trademarks (identifying logos, names), or copyrights in any manner.

2. Employees should never hold themselves out as a representative of the company, unless they have received express permission from legal and management to do so.

3. Employees should never disclose or discuss company confidential, trade secrets, or other propriety company information on Social Media platforms.

4. When using Social Media platforms, employees should never engage in false, inappropriate, threatening, harassing, or defaming conduct that would be harmful to the company, employees, or damage company relationships.

5. Employees should be aware that when using Social Media tools at work, the employer has a right to view and monitor Social Media use even if the employee is using their personal Social Media accounts.

When employers provide employees with Social Media guidelines, they should also offer Social Media training and give examples of inappropriate conduct. Investing in Social Media guidelines and training now can save a company a huge headache later.

Give Credit Where Credit Is Due! Copying Without Permission

2010-03-10T16:44:00.000-08:00

Hello:

I wrote this article due to the rampant unauthorized copying of copyright protected work on the Internet. This article is also posted here on Black Web 2.0. Share your thought.

When Copying A Work If You Give Credit, Do You Still Need Permission to Copy? Before you have to even consider playing your ‘Get out of Jail Free’ card the short answer is absolutely yes!

There is a huge misconception among Internet users and Bloggers that as long as credit is given to the Copyright owner, it is permissible to copy, reproduce, use snippets or paraphrase the copyright protected work. However, the Copyright Act clearly states: any person who exercises the exclusive rights of a copyright owner, without the copyright owner’s express permission, is an infringer of copyright. 17 USC sec. 501(a).

This means that anyone who wants to use the copyright of a copyright owner must directly contact the copyright owner and receive written (express) permission to copy or reproduce the work. Simply giving credit will not do.

This law also pertains to photos. When writing blog posts, most bloggers simply search the Internet for an image to complement their blog post. This is a dangerous practice and can result in a Cease and Desist letter from the Copyright Owner or a Copyright Infringement action. To avoid legal action, simply contact the owner and ask if it is permissible to use their image. The majority of Copyright owners will agree as long as you give them credit. A simple email will only take 5 minutes to write. This is a small time investment to ensure you are not breaking the law. If you can not locate the Copyright owner, use your own image and/or writing. Copying without permission is simply not worth the legal headache.

However, there are certain instances where copying a work without the Copyright Owner’s permission is permissible. A copyright owner can use a creative commons license to allow users to use their work without permission in certain circumstances. Below is an example of a Creative Common License:

1. You are free to copy the work as long as you attribute the work to the copyright owner. However you can not use the work for commercial (monetary) purposes.

Lastly, a statement such as the one below, does not protect an individual from Copyright Infringement Actions:

If you hold the copyright(s) to any music or other content that can be found here and would like for it to be removed, please contact me and it will be removed immediately.

This clause is not a “safe haven” for Copyright Infringers. I will say it again, you must get the Copyright Owner’s express permission to use the Copyright protected work. The above clause will only expose an Infringer to liability.

Before Investing Start-Up Dollars, Do A Trademark Search Before Choosing A Business Name

2010-03-05T05:13:00.000-08:00

Hello!

I hope all is wonderful! Below is a copy of an article I wrote for Black Web 2.0 that is getting great feedback. I hope this article is helpful!

Picture this…Some friends and I decide to start an internet business and we choose a catchy and SEO friendly name. We invest money into start-up operation costs. We purchase the domain name, legally incorporate, obtain business bank accounts, hire personnel, create a logo, and order marketing materials. We send out press releases and obtain investors. We are ready to go. We realize this is a hot concept, so we want to obtain trademark protection for the business name and identity. We hire an attorney to assist with obtaining trademark registration and he discovers the name is already trademarked by another company. Yikes!

Unfortunately, I see this scenario very often in my practice. When choosing a business name or identity during the start-up phase, most business owners simply do not think about trademark registration. However, in my legal opinion as soon as a business owner chooses a company name a trademark search to assess the availability of the name or logo should be done immediately. Taking this proactive approach can save a new business from wasting dollars on a name and/or identity they can not own. Furthermore, if a trademark search clears a business to register the chosen name, logos, or other brand identifying material, the business should immediately file for a trademark to claim ownership of the mark. Very often individuals tend to infringe on company and or trademark names if they see the potential in its success! Remember, the first to use the name in commerce is the priority trademark owner!

Here are a few trademark search tips I recommend when starting a business and choosing a company name.

1. Do a preliminary search on Google to ensure that a trademark right has not been claimed in the company’s business name;
2. A preliminary search on Google will cost $0. However, Google will not find viable and valid trademark rights of companies that are not on the internet or do not have active advertising and marketing campaigns. To fully ensure your company is not infringing another trademark owner’s rights, a more comprehensive search can be done.
3. Hire a trademark attorney to perform a comprehensive search. A comprehensive search will include:

* A search of the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet.
* If you plan to sell your product or service in another country, you can also obtain an international search.
* The cost of a comprehensive search for a name only starts at $550.00. However a search performed for a logo and name, starts at $950.00. International Searches do require much larger fees.

There are several companies that perform comprehensive searches. Here are a few:

CT Corsearch.

CompuMark

4 Trademark.com

These companies gather the information but do not analyze it or ensure your trademark is not infringing. A trademark attorney can analyze the contents of the search and give you a legal opinion regarding the availability of your mark.

Threat of Trademark Infringement?

2010-02-21T19:44:00.000-08:00

Hello:

Recently, I have been receiving inquiries regarding threats of trademark infringement. Threats of trademark infringement include:

1. Written or verbal communication by an entity or individual expressing their intent to use a trademark owner's trademark without their permission,

2. Written or verbal communication of an infringer's intent to register or claim ownership of an owner's trademark with the USPTO.

These threats are usually made when the infringer realizes that the trademark owner is using the trademark and has built up a goodwill. However, the trademark owner has not "officially" submitted an application for registration with the USPTO or the state in which the trademark owner is located.

If you are a trademark owner and receive threats of trademark infringement, take the following steps.

1. Hire a trademark attorney to draft a cease and desist letter to the infringer. However, a cease and desist letter is only effective if the infringer has already started to use the trademark.

2. Check the USPTO's database to determine if the infringer has filed an intent to use or an application based on use claiming your trademark.

3. If the infringer has filed an application for your trademark, hire an attorney to file an Opposition to the registration of the trademark with the USPTO.

4. Immediately submit an application for trademark registration with the USPTO. An application based on continuous use can be filed if you have been actively using the trademark in interstate commerce (offering a product or service to the public).

Remember, although a trademark owner may not have obtained federal registration of the trademark, a trademark owner still has priority to use the trademark in their region and natural area of expansion. The USPTO will consider this evidence when granting trademark registration.

I hope this article was helpful. Please contact me via email at lgivens@phillipsgivenslaw.com if you have further questions.

6 Key Points Every Website Privacy Policy Should Contain

2010-02-01T05:52:00.000-08:00

Every Social Networking Site, Blog, Website, etc. should have a Privacy Policy. A Privacy Policy can minimize liability for a site owner. For example, it can reduce Invasion of Privacy Claims. When a site is very thorough and transparent regarding whether user's personal information is gathered; how the information is gathered; and whether the site is using third-party applications to get this information, an Invasion of Privacy Claim is severely diminished. An Invasion of Privacy Claim occurs when the site is doing any of the above actions without disclosing these actions to the site user.

In addition, a Privacy Policy also protects users of the website. It gives users information on whether their personal information is being collected and how it is being used. It is then the choice of the site user to further engage or use the site.

When implementing a Privacy Policy, it should contain the following key points:

1. What type of personal information is collected?

2. What type of technology is used to collect information? How the website will use the information collected?

3. Who will receive the personal information collected?

4. Specific measures in place to protect personal information.

5. If the user voluntarily shares their personal information to the public, then their is no expectation of privacy.

6. How one can opt out of their personal information being gathered and/or shared with third parties.

When drafting a Privacy Policy, I recommend hiring a New Media Attorney. Although there are numerous form Privacy Policies on the internet, only a custom privacy policy can specifically address your site's technology and whether you are gathering information and how. Also a custom privacy policy can address whether you are sharing user information with third parties and identify each third party.

Remember one of the keys to running any business whether on the internet or brick and mortar is to minimize liability. Therefore having a Privacy Policy is good business sense.

Amazing News! Blogher 2010!

2010-01-27T20:13:00.000-08:00

Hello!

I hope your life is absolutely wonderful!

I have some AMAZING news to share! I was invited to speak at the 2010 Blogher Conference in New York, August 6-7. Yeah!

I will speak on a panel entitled "Mastering Intellectual Property Law." Specifically, I will discuss intellectual property law, registering and protecting a trademark, copyright infringement, defamation, libel and slander.

This blog has afforded me amazing speaking and writing opportunities. It has been very good to me. I have found that individuals are really interested and have a thirst for information on how to protect their intellectual property in Social Media platforms.

When I started this blog in 2008, I thought to myself it would be great if I could share this information with bloggers on a larger platform. Now I have that opportunity!

I just want to say thank you to everyone who has read this blog, commented and supported it. It has been a tremendous blessing to me and I hope to you as well.

Security and Privacy Issues with Google Wave

2010-01-25T19:49:00.000-08:00

Hello

By now everyone has heard the buzz about Google's newest product, Google Wave. Google Wave is an online tool that lets users instantaneously communicate and share information. Any user of the Wave can reply anywhere in the message, edit the content and add participants at any point in the Wave. The Wave can also be played back to review the Wave's content.

This technology sounds pretty cool. However, there are some privacy and security concerns regarding the use of Google Wave. The following are two features of Google Wave that can potentially lead to privacy and security risks for a company.

1. Any member can add someone else to the Wave without the other member's permission. This is a serious security risk. If members of the Wave are discussing trade secrets, or confidential information, an unauthorized person can be added and have access to that information.

2. A user can load gadgets or other third-party applications to the Wave and these gadgets can have access to other participants information.

When protecting confidential or trade secrets, confidential information is only 'secret' if appropriate measures are taken to protect confidential information. This includes restricting access to confidential or company secrets to a select few individuals. If confidential or secret information is exchanged on Google Wave, this information can be compromised. The ability to add individuals to the Wave without prior approval or restrictions is a serious security risk for any business.

In addition, the ability to add third party applications or gadgets to the Wave without prior verification or approval from the administrator of the Wave presents another set of security issues. These third party gadgets can have malicious code that will not become apparent until the gadget is added.

Google Wave is a neat tool for collaborative projects. However, if a group of individuals are working on highly confidential or top secret projects, I do not recommend using Google Wave as a collaborative tool. The potential security risks are just too great.

I welcome your thoughts!

Universities Aggressively Policing Their Trademarks.

2010-01-18T04:44:00.000-08:00

Hello:

Universities are cracking down on individuals who sell their team logos, names, or any gear associated with their teams without a proper license. The University of Cincinnati recently enforced their trademark rights by filing cease and desist actions against several retailers, boosters, and students selling unauthorized merchandise. The cease and desist letters demanded immediate compliance as well as return of any profits or merchandise to the university.

The University of Cincinnati will also join other Universities in pursuing trademark infringement litigation against several national resellers who refuse to stop selling their merchandise without a license. Specifically, the Universities are concerned with lost licensing revenue; selling of inconsistent trademarks between the Universities and resellers; and brand protection.

The Universities are doing the right thing. As I have previously discussed, if a trademark owner does not protect or police their trademark or brand, the results are:

1. lost of trademark rights;
2. loss of licensing revenue; and
3. brand dilution.

Remember when pursing a trademark infringement claim, the courts will examine whether the trademark owner did its duty in protecting its trademark. If a trademark owner it too lax in protecting their brand, the court may consider the trademark too weak.

I welcome your thoughts!

Right to Publicity? When Can a Celebrity or Public Figure Sue?

2009-11-23T10:36:00.000-08:00

Hello:

It has been a while since I posted on this blog. I have been extremely busy working, writing, and speaking on Intellectual Property issues in New Media. No excuse for neglecting this space, but I hope to post here more often.

I have been writing quite a few articles for Black Web 2.0 and recently I wrote an article on the Right to Privacy and Right to Publicity Law. Specifically, I discussed how this law affects bloggers who feature and write about celebrities. Below is the article in full text. Also, please visit www.blackweb20.com to see more articles I have written about legal issues in new media.

50 Cent Sues WorldStarHipHop For Unlawfully Using His Image. Bloggers Take Note!

Rapper 50 Cent is suing the popular website WorldStarHipHop.com for using his image/likeness without his permission. Basically, the website used the rapper’s photo on its home page…like a banner. 50 cent claims the site’s use of his image resulted in increased traffic for the site and the public perception that 50 cent was affiliated with site due to his image prominently placed on WorldStarHipHop.com’s home page.

Do blogs, websites, or online magazines have to get permission to use every celebrity’s image or likeness before posting images of that celebrity? Well it depends on for what purpose the site uses the celebrity’s image.

The use of one’s image or likeness is covered under the Right to Publicity law. This law drives from the Right to Privacy. There are four basic Rights to Privacy:

1. Protection from unreasonable intrusion upon the seclusion of another. For example a home or a car,

2. Protection from appropriation of a person’s name or likeness (Right to Publicity). For example using a person’s name or image on a product or service without their permission,

3. Protection from publication of private facts. For example, income tax data, family quarrels, medical treatment, school records, etc.,

4. Protection from publication of information that places a person in a false light.
Prosser, Restatement 2nd of Torts.

The Right to Publicity is triggered where commercial speech is involved, i.e, when a company has used a celebrity’s “name, likeness, or voice” in connection with a product, thereby creating a false and misleading impression that the celebrity is endorsing the product. See, e.g., Eastwood v. Super. Ct., 149 Cal. App. 3d 409, 417 (1983).

In 50 cent case, he claims WorldStarHipHop.com used his image like a banner ad, therefore created the false impression that he was affiliated with the site. The use of his image resulted in increased traffic to the site and therefore increased ad dollars. If 50 cents claims are proven to be true, WorldStarHipHop.com will have to compensate 50 cents for using his image to endorse their product, i.e., their website.

But there are instances when a website can use a celebrity’s image without their permission. Under the First Amendment exception to the Right of Publicity rule, if the image is used in connection with reporting a newsworthy article that is a matter of public interest, then the site does not have to get the celebrity’s permission to use their image or likeness. Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 409 (2001); see also Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F.Supp.2d 1146, 1182-83 (C.D. Cal. 2002).

For example, when a gossip blog reports breaking news that X celebrity was in an altercation or was caught drinking and driving, use of the celebrity’s image without their permission is permissible. However, if a gossip blog simply has images of celebrities on its site as a banner or as part of the site’s graphics, use of the celebrity’s image is not permissible without first obtaining the permission of the celebrity. In this instance, the site is using the celebrity’s image to promote their blog or site.

Bloggers and websites that report on celebrity news should take note and be very careful when using celebrity images. If the use of the celebrity’s image is not associated with breaking news or “newsworthy”, ALWAYS get permission.

Update: New FTC Rules on Blogger Product Endorsements, Effective December 1

2009-10-13T20:06:00.000-07:00

Hello!

Previously I wrote a post about the "proposed" Federal Trade Commission Rules on Blogger Product Endorsements. Basically, the FTC was considering whether to require bloggers to disclose any financial relationship between themselves and brands whom products they endorse.

Well those proposed rules are now a reality. The FTC has established new rules on Blogger Product endorsement and they are as follows:

1. Bloggers must disclose if they receive a financial benefit when writing a post about a product or service. FTC views this transaction as an endorsement of the product or service.

2. Disclosure can be a banner or part of the review.

3. Diclosure must be clear and direct.

4. If there is no disclosure, FTC may send a Cease and Desist. If Cease and Desist is violated or ignored, then blogger can receive a 11K fine.

5. Rules go into effect December 1.

Although, the rules have been established, the FTC has admitted that they will not actively pursue bloggers. Most likely, the FTC will only pursue clear rampant violations and those will most likely be the result of a tip from a concerned consumer. Hopefully the new rules will encourage bloggers to be as transparent as possible regarding product reviews. Transparency allows consumers to make informed buying decisions.

I welcome your feedback!

Facebook's New Privacy Policy: What does it mean for users?

2009-09-02T03:04:00.000-07:00

Hello:

Previously I wrote a blog post about the importance of having a privacy policy if you own or maintain a website (blog, social network, etc.)

I discussed the need of website to state clearly: what information is collected from users; reveal what type of technology is used to collect information; explain to users what is done with the information collected; give users the option to opt out of providing information; and reveal measures in place to protect users' personal information.

Facebook recently revealed the company modified its privacy policy to require API Developers (3rd party application developers) to inform users in advance of what categories of data is needed to use the application. In addition, when users authorize an application, they can opt out of giving certain information. This change comes on the heels of Canada's Privacy Commissioner's concern about the "over-sharing of personal information with third-party developers of Facebook applications such as games and quizzes."

In my opinion this is a good move. Although the option to download third party applications is a user's choice, giving user's the ability to opt out of giving detailed personal information while still using the application, will possibly encourage more users to use the applications. Also the new policies give user's more detailed information about what information is required before downloading the applications. Now user's can make a more informed choice.

I welcome your thoughts!

Inventor's Association of Georgia and Cloud Computing

2009-08-30T21:14:00.000-07:00

Hello:

I hope your life has been well! I have been busy busy busy. Last Saturday I gave a presentation on Trademarks and the importance of protecting them at the Inventor's Association of Georgia's monthly meeting. Despite technical difficulties with my MAC Ibook G4, the presentation went well. I gave examples of different types trademarks; discussed the difference between patents, trademarks, and copyrights; discussed cost effective solutions in defending and initiating trademark infringement actions; and gave advice on how to establish a cost effective trademark patrolling program.

Also I have been writing weekly for BlackWeb2.0. Last week, I wrote an article on privacy issues with Cloud Computing. Check it out and let me know what you think.

Until next time.

Update: RIAA File-Sharing Litigation: Obama Administration Backs RIAA

2009-08-17T21:02:00.000-07:00

Hello!

I am finally back! I have been traveling for the past few weeks giving presentations and writing articles.

Previously I wrote a post about the RIAA vs. Tenenbaum case. This case is one of several high profile file-sharing lawsuits currently being reviewed by the courts.

Another case that has garnered national attention is the RIAA vs. Thomas-Rasset. Ms. Thomas-Rasset purchased songs from I-tunes and shared them with peers. A Minnesota federal jury found her guilty of copyright infringement and the court ordered her to pay $80,000 for each of the 24 downloaded song she shared. Her jury verdict came to a whopping $1.92 million dollars. She is now seeking to vacate the judgment for being too excessive.

However, last week, the Obama Administration submitted arguments in favor of the jury verdict. The Justice Department argued that the jury verdict was not too excessive considering the nature of file sharing. So although Ms. Thomas-Rasset may have shared the files with only a select group of individuals, those individuals continued to share the files with other users and so on. So the file sharing continues.

Clearly, The Obama Administration is intellectual property ownership friendly and is asserting its position as such. The RIAA really needs this support from the Justice Department considering the negative publicity and backlash it has received for going after individual consumers. It will be interesting to see if the judge actually reduced the monetary award. I will keep you posted.

I welcome your thoughts.

Twitter "Moldy Apartment" Libel Lawsuit

2009-08-06T21:38:00.000-07:00

Hello Everyone!

I have been very busy traveling and speaking on protecting IP assets and legal issues in new media. This week I wrote an article on the Twitter "Moldy Apartment" lawsuit. If you have not heard, a Twitter user stated on Twitter that a management company had moldy apartments. The management company sued for libel and of course this story received massive attention. The issue here is whether the statement was factual or false. Read my take on this lawsuit here. If you like please join the discussion.

Have a great day!

Are News Stories Copyrighted Material?

2009-07-30T04:44:00.000-07:00

Hello!

This week I wrote an article on whether news is copyrighted material. Specifically, can the Associated Press claim copyright protection for factual information? The article is posted here. Please leave a comment!

Copyright Office Forms

2009-07-28T04:57:00.000-07:00

Hello:

This weekend I gave a presentation at the Synergy Club of Georgia on Protecting Business Intellectual Property Assets. The Synergy Club is an organization that provides much needed resources to women business owners. During the presentation I discussed the four main intellectual property assets a business can own: copyrights, trademarks, patents, and trade secrets.

The members of the club had great questions. I particularly received many questions regarding copyright registrations. One member asked a very good question concerning what is the appropriate copyright registration form to file for a sound recording. The copyright office has several paper forms for different types of works. They are as follows:

Form TX for literary works
Form VA for visual art works
Form PA for performing arts works (motion pictures, plays, dance performances, etc.)
Form SR for sound recordings, and
Form SE for single serials (periodicals, newspapers, magazines, newsletters, annuals, journals)

However, if a copyright registrant files their copyright application online using the Copyright's office eCO system using Form CO, a registrant can simply select any of the above categories as an option without filing separate and distinct applications.

Another advantage to filing the Form CO online is that the cost to file is $35 as opposed to $45 for paper applications.

As you can see, there are some advantages to using new technology...it is cheaper and more efficient!

I hope this information was helpful. I welcome your thoughts!

Internet Webcasters Get A Small Break!

2009-07-15T19:45:00.000-07:00

Hello:

This week I wrote an article for Black Web 2.0 discussing the legal battle concerning royalty rates between internet radio stations and the Copyright Royalty Board. Click here to read the full article.

Does Your Website have a Privacy Policy?

2009-07-08T23:03:00.000-07:00

Hello!

As web 2.0 continues to expand, online privacy is becoming a major focus point for individual consumers and regulators. Specifically, there is concern about how personal information of users and visitors of social networks and blogs is gathered and used by owners of these sites. There are several bodies of rules and regulations that address this very issue. They are the Federal Trade Commission's rules on behavioral advertising, Communications Decency Privacy Act, European Union Directive on Data Protection and various state privacy laws.

An owner of a website should have a very clear and direct privacy policy that states the following:

1. what type of personal information is collected
2. what type of technology is used to collect information
3. how the website will use the information collected
4. who will receive the personal information collected
5. specific measures in place to protect personal information
6. if the website will not use personal information
7. if the user voluntarily shares their personal information to the public, then their is no expectation of privacy,
8. how one can opt out of their personal information being gathered and/or shared with third parties.

Having a privacy policy can minimize liability for invasion of privacy claims and ensure a website owner is compliant with all federal and state privacy laws. A privacy policy also protects the reader or user of the website. The consumer is informed about how their information is used and can dictate to website owners whether they want their information shared or not.

Having a privacy policy is just good business sense.

I welcome your thoughts!

Trade Secrets: What Are They and How To Protect Them

2009-07-02T07:41:00.000-07:00

Hello!

There are several forms of intellectual property that a business may own. They are trademarks, copyrights, patents, and trade secrets. On this blog I mainly discuss trademarks and copyrights. Recently, I have been advising clients on protecting valuable trade secrets. As a result, I am going to explain what are trade secrets and give practical tips on how to effectively protect them.

A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information which is not generally known or reasonably ascertainable to the public.

Some examples of trade secrets are:

1. Formula for the soft drink, Coca-Cola
2. Business processes
3. Marketing Strategies
4. Food Recipes
5. Computer Algorithms

In addition, the trade secret must be of an economic advantage over a business' competitors or customers. Lastly, the owner of the trade secret must take reasonable efforts to maintain its secrecy.

Reasonable efforts to protect a trade secret is key in maintaining intellectual property rights in the trade secret and in pursuing those who steal the trade secret for economic gain. Here are a few tips on how to protect trade secrets:

1. Require all employees, vendors, contractors, business partners, etc to sign non-disclosure/confidentiality agreements regarding the confidentiality of any trade secrets.

2. Implement adequate security measures to protect the secrecy of the trade secret. This may include keeping the trade secret under lock and key; using code words; restricting access to a select few individuals; restricting access to trade secrets by using programmable access passcards, computer fire walls, multiple level password protection, and secured intranets.

Once again, taking reasonable measures to protect trade secrets is key when pursuing a claim for "trade secret theft". If it is proven that the owner of the trade secret did not implement an adequate security system to protect trade secrets, then the trade secret loses its protection.

I welcome your thoughts!

Defamation and Social Media

2009-06-23T07:02:00.000-07:00

Hello!

Defamation is becoming a huge issue on social media sites such as Blogs, Twitter, and Facebook. Recently there have been some notable cases involving defamation litigation. Specifically, Courtney Love is being sued for making an alleged defamatory "tweet" about a famous designer.

What is a defamatory statement? The law defines defamation as spoken or written words that are false and or misleading that gives the defamed a negative image and or hurts their reputation. The defamatory statement must be made to someone other than the person subject to the defamation. The law also differentiates between written and oral defamatory statements. Written statements are called libel and oral statements are slander.

Who is liable for libel statements made on blogs or social networks? Are owners of these sites liable for defamatory statements made by users of their sites? Or is the person who made the defaming statement solely liable?

Under the Communications Decency Act, an owner of a social networking site is not liable for the defamatory statements made about another on their site unless the site owner actively engages in the gathering of information from the user that leads to the defamatory statement. An example of this type of behavior is a blog owner soliciting comments from users on whether they dislike Celebrity X and why? The comments leads to defamatory statements about the celebrity and the blog owner supports, encourages, and endorses the libel statements.

Of course, anyone who makes a defamatory statement about another on any social network is personally liable for his or her statements.

How can owners of social networking sites and users of these sites protect themselves from defamation liability?

Owners should discourage and immediately remove potentially defamatory or libel statements from their sites. Owners should never enter into any dialogue with a user concerning a person's reputation. In addition, including a disclaimer or statement regarding your removal of any defamatory statements on your site, may potentially discourage users from engaging in such behavior. Plus it puts the public on notice that you do not endorse defamatory conduct.

Users of social networking sites should avoid personal opinions or negative comments that are not 100% factual and or statements that may harm a person's image or reputation. The best advice I have ever received is "if you don't have anything positive to say, then don't say nothing at all." One negative comment could cost you tons of money and heartache.

I welcome your thoughts!

File Sharing & Fair Use: What does it mean for Consumers

2009-06-18T14:13:00.000-07:00

Hello!

I hope your week has been productive.

I came across this article on the Daily Online Examiner, which gives an update on the Napster File Sharing Litigation. As many of you know, the Recording Industry Association of America (RIAA) waged a legal battle against Napster and users of file-sharing services for the past 10 years. However, one of those cases can effectively end the RIAA argument that file-sharing is copyright infringement and therefore punishable by a fine and or jail time.

In the case of RIAA vs. Joel Tenenbaum, the court is currently accepting an argument that peer to peer file sharing is a Fair Use exception to Copyright Infringement Laws. Essentially, the argument is that file sharing is not commercial use and therefore not copyright infringement. In lay terms, this means that as long as individual consumers are sharing files with friends for personal enjoyment and not a monetary fee, then copyright infringement does not exist and file-sharing is not a crime. I will explain Fair Use in more detail below:

Copyright Infringement occurs when another unlawfully copies, sells, displays or performs a copyright owner's work without their express permission. However, in some instances, copying a copyright owner's work without their permission is allowed. This is called the Fair Use exception. Specifically, an infringer of a copyright can argue Fair Use if they meet one of the following criteria:

1. the purpose and character of the use is for non-profit or non-commercial purposes;
2. the nature of the copyrighted work is artistic and benefits the public;
3. the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole; and
4. the effect of the copying upon the potential market for or value of the copyrighted work is minimal.

If Tennebaum's argument is successful, peer to peer file sharing may be considered legal and enjoy the same treatment as copying of television or cable shows for personal enjoyment. Currently, consumers can copy or record television or cable shows in their home as long as the recording is done for personal enjoyment and the recording is not re-broadcast or viewed by consumers for a fee.

It will be interesting to see how the judge rules this case. I will keep you posted.

I welcome your thoughts!

Understanding USPTO Office Actions

2009-06-11T08:51:00.000-07:00

Hello!

Welcome Back! Posting was kind of slow this past week because my MAC is in the shop getting a much deserved upgrade!

Understanding USPTO Office Actions can be a very daunting tasks for a non-attorney. Office Actions are drafted by USPTO attorneys and set forth the legal status of a trademark application. Thus the Office Action contains a lot of legalese, i.e., rules, laws, etc. that may need interpretation and sometimes further research and explanation. Understandably, an individual who filed their application without an attorney can be intimated and confused. There are several types of Office Actions. However, I will address the two types I encounter the most.

Office Action: An USPTO examining attorney informs the applicant of any conflicts with another trademark. Also an examining attorney may address issues such as whether the trademark is valid under US trademark law or the sufficiency of submitted specimens. An applicant has 6 months to respond to the Office Action and to correct or address each issue raised. If each issue is not addressed and appropriately remedied within the 6 month time frame, then the application will be abandoned.

Priority Action: An USPTO examiner will issue this action after consulting with the applicant or the applicant's attorney regarding specific requirements that have to be met before the application is approved for publication. If the requirement is not met, the application will be abandoned. However, if the applicant responds within 2 months, the application is given priority processing.

If you are a business or individual who receives one of the above actions, and have no idea how to respond, it is very important to obtain legal assistance. If an applicant does not address all of the issue and/or does not respond within 6 months, the applicantion can be abandoned. I obtain many clients who are near the abandonment stage or their application has been abandoned because they did not answer the Office Action correctly. Fortuantely, if an application is abandoned, the USPTO does allow the applicant to Petition the USPTO to revive the application. The cost is $100 and must be received within 2 months after the abandonment takes effect.

As always I welcome your thoughts. And please if you have a question, please ask.

USPTO Filing Fees: Why Some Are More Expensive Than Others

2009-06-02T04:00:00.000-07:00

Hello!

Last week I wrote a post mentioning USPTO fees to file two classifications under one trademark. I stated that the fees were $275 per classification for one trademark and the filing fee for each unique trademark is $325. However, a reader rightfully pointed out that USPTO filing fees are different prices depending on whether you are filing a paper application vs. online application. Also, the USPTO has a shorter online application that is less expensive than a regular online application.

As a result of @BSpeer's comment, I decided to break down the USPTO application fee structure below:

$275 per classification if you qualify to use a TEAS PLUS online application. For a list of requirements to file a TEAS PLUS online application, click here. Most importantly, your services or goods must appear in the USPTO's Acceptable Identification of Goods and Services Manual and you must agree to communicate with the USPTO regarding your application via email.

$325 per classification if do not qualify to use TEAS PLUS and you have to use a regular TEAS online application.

$375 if you choose not to apply online and use a paper application.

I hope this post clarifies my earlier statements and gives a better explanation of the USPTO's filing fees for trademark applications. I always welcome your thoughts and comments.

When Filing a Trademark Application: Make Sure to Include the Correct Classifications

2009-05-28T03:38:00.000-07:00

Hello!

I hope your week is going well!

Today I want to discuss another common error individuals make when filing a trademark application without the assistance of a trademark attorney. This error is not choosing the correct identification or class for goods and/or services or not choosing enough classifications to cover all goods and services.

The USPTO has an extensive list of acceptable identifications for goods and services. For example, if you are offering entertainment services, usually your classification number is 041. If you are selling cosmetics, your classification number is 003. It is very important to choose the appropriate classification because if the classification is wrong, the USPTO will reject the application. Furthermore, if you don't include all classifications that apply to your product or services, you will have to file another trademark application to include those classificationss. The following is an example:

I have a barbecue restaurant business but I also sell my famous barbecue sauce. I have one trademark that applies to my restaurant and barbecue sauce. When I submit my trademark application, I would choose classification 043 for restaurant services and classification 030 for barbecue sauce.

The above scenario is less expensive than having to file two separate trademark applications. Each identification filed under one trademark costs $275.00. Whereas, filing two separate applications for each class is $325.00 per application.

However, if you have a trademark for the restaurant and a separate trademark for the barbecue sauce, then you would have to file two separate trademark applications. The USPTO only accepts one trademark per application.

I hope you found this information helpful. If you would like, please share your thoughts.

NOTE: The above fees apply when filing an application online.

When Submitting a Trademark Application: What is an appropriate specimen

2009-05-26T07:58:00.000-07:00

Hello!

I hope everyone had a great Memorial Day Weekend!

I am still continuing my "Why You Should Hire a Trademark Lawyer Series." As I have said before, this series is very important because a good percentage of my client base comes from individuals who have attempted to file a trademark on their own.

Another reason, trademark applications are rejected by the USPTO is because they do not include the appropriate specimen. When filing a trademark application based on actual "Use", an appropriate specimen should show that the trademark or servicemark is being used in commerce, i.e., goods or services are being offered or sold to the public.

The following are examples of specimens that are acceptable when submitting a trademark application for products:

1.Product or package labels or tags (for clothing, etc.).
2.Banners, Window Displays, Signs.
3.Catalogs showing the products for sale.
4.Website pages showing the products for sale.

The following are not acceptable specimens for products:

1. Advertisements. Any type of ads, brochures, flyers, etc.
2. Price Lists.

Acceptable Specimens for Services:

1. Advertisements are acceptable here. So any ads, brochures, flyers, etc. advertising the services are appropriate.
2.Company Letterhead. If letter includes an offer for services.

Specimens not acceptable for Services:

1. Memos.
2. Invoices.
3. Business Plans

Remember submitting the wrong specimen can delay your trademark application for 6 months or more. I hope you found this information useful. Please share your thoughts.

Why I Should Hire a Trademark Lawyer? Comprehensive Search Resources

2009-05-04T01:26:00.000-07:00

Hello!

In my previous post, I discussed the number one pitfall individuals make when submitting a trademark application to the USPTO, which is not performing a comprehensive search. In this post, I will explain what a comprehensive search entails and provide a list of resources to conduct the search.

A comprehensive search will gather any information or trademarks that are similar to your trademark. This type of search will include:

A search of the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet.

In addition, if you plan to sell your product or service in another country, you can also obtain an international search.

The cost for this type of search for a name only starts at $550.00. However if you want a search performed for a logo and name, the cost is around $950.00. International Searches do require much larger fees.

There are several companies that perform comprehensive searches. Here are a few:

CT Corsearch.

CompuMark

4 Trademark.com

I hope this information was helpful. Please leave a comment if you have any questions.

Why I Should Hire a Trademark Lawyer?

2009-04-29T08:36:00.000-07:00

Hello!

Welcome Back.

As I have previously stated, many of the clients I obtain are those who have tried to register their trademarks without the assistance of an attorney and the USPTO rejects their application. Consequently, I have started this series appropriately titled "Why I Should Hire a Trademark Lawyer" to address common questions or pitfalls many trademark owners commit when attempting to navigate the USPTO on their own. Today, I am going to discuss in depth the number one pitfall:

1. Not obtaining or performing an adequate trademark search.

A simple search on Google to determine whether a trademark name, logos, or taglines are in use by another party, simply will not do. If I submitted a trademark application to the USPTO, based on a Google Search, I would be sued for malpractice. This is a big big public misconception. There are thousands of viable trademark claims or rights that simply do not show up in a Google Search. Why?

a. Some businesses do not own a website,
b. Some business are operating under DBAs that search engines may not find,
c. Some businesses, do not do any active advertising or marketing

However, this list is not exhaustive. There are so many mom and pops that fall under this category. You would not know if they existed unless you hired an attorney or a search company to do a comprehensive trademark search.

Another misconception is that if a search is performed using the USPTO's trademark database, and the name is not taken, you are in the clear. WRONG. WRONG. WRONG. The USPTO's database only includes registered trademarks, not common law trademarks. A common law trademark right exists when one is the first to use the mark in their region, regardless of whether the mark has been registered with the USPTO.

Once the USPTO receives your trademark application, they will perform a comprehensive search and if your trademark is already in use, your application will be rejected. In addition, you will have to possibly choose another trademark name, logo, and/or tag line.

So before deciding to file a trademark application, consult with an attorney regarding a comprehensive search. It will save you time, headaches, and money.

In my next post, I will give an detailed example on what a comprehensive search includes.

New Federal Trade Commission Proposed Rules on Blogger Product Endorsements: What brands and bloggers need to know

2009-04-06T23:09:00.000-07:00

Hello!

Welcome Back! The Federal Trade Commission recently released proposed changes to their Consumer Product Testimonial and Endorsement Rules. They are:

An advertisement containing a consumer endorsement about the performance of an advertised product or service must reflect the actual performance of the product or service. Essentially the advertiser must have sufficient evidence, if applicable, competent and scientific evidence, to verify that the consumer endorsement is correct. Sec. 255.2(a)

In addition, the consumer endorsement must be representative of the results consumers would generally achieve. The endorsement can not be an atypical result. Advertisers must also have sufficient evidence to support general results.

These proposed changes do not apply to highly subjective testimonials for certain products such as movies, games, or restaurants. But if the advertiser is paying the consumer endorser to endorse the product, then the above rules do apply.

Most importantly, if an advertiser is paying a consumer to endorse a product with cash or free products, then the advertiser and the consumer must disclose the financial relationship. If not, both advertiser and consumer may be held liable for making false statements.

HOW DOES THESE RULES AFFECT BLOGGERS AND ADVERTISERS IN NEW MEDIA?

In the new proposed rules, The Federal Trade Commission also addressed advertising in new media (Web 2.0). Essentially, if an advertiser pays a blogger to write a review endorsing a product or service, the advertiser and the blogger must disclose the financial relationship. In addition, both blogger and advertiser both will be liable for any false or unsubstantiated claims regarding results of products or services.

WHAT CAN ADVERTISERS AND BLOGGERS DO TO AVOID LIABILITY?

1. When using bloggers to endorse product or services, advertisers should make certain that their products do what they claim. Advertisers should extensively test products, run trials, and document evidence that substantiate results for most users of the product or service.

2. Advertisers should provide data to bloggers that evidence typical results for most individuals. Advertisers should stress to bloggers that if the product does not produce the desired results as documented, do not write a favorable review.

3. Advertiser should include disclaimers on consumer endorsements that state that results are typical of most individuals using the products. However, if a consumer achieves an unfavorable result, it is atypical and may be based on a variety of personal factors unknown to the advertisers.

4. When writing a favorable review or endorsement of a product, bloggers should always disclose they received the product for free or was paid to write the review.

5. Bloggers should always give their true opinion of the product whether paid or not.

6. Bloggers should post any product disclaimers and company trials or evidence substantiating their review of the product.

Although the proposed rules have yet to be adopted, I think the above tips are great practices for advertisers and bloggers. The Commission may not adopt all of the rules, but considering the explosion of new media, regulation is inevitable.

I welcome your thoughts!

Can An Individual Trademark Their Legal Name?

2009-03-26T12:00:00.000-07:00

Hello!

Since I have been practicing trademark law, individuals always ask me if they can trademark their legal names. This particularly becomes an issue when the individual has developed a reputation as a recognized leader in their field; earns a salary from speaking engagements; writes published material; is a recognized inventor, or is a celebrity.

The trademark laws state that common first and last names can be trademarked if they are distinctive, i.e, developed a secondary meaning; or used to identify a source of goods, services, or talent associated with the individual. Lastly, the goods, services, or talent must be sold in commerce.

I will use the name Bill Gates as an example.

How can a common name like Bill Gates become distinctive? As stated above, a common name acquires distinctiveness if it develops a secondary meaning. When someone sees or hears the name Bill Gates they automatically think the inventor of the computer operating system, Windows. Thus Bill Gates' name has developed a secondary meaning, i.e. inventor of Windows. In addition, the name Bill Gates is associated with the origination of the product Windows and Microsoft Software. Lastly, Windows and Microsoft are sold in commerce in the U.S. and around the world. As a result, Bill Gates is a name that can be trademarked and protected from use by other individuals for commercial gain.

So when wondering if you can trademark your legal name. Consider these factors?

Have you become famous in your field?
Do you gain an income from the use of your name?
When people see or here your name, do they automatically think of a product, service or talent you offer?

If so, I would recommend that you hire a trademark attorney to possibly trademark your name. In addition, I would suggest you register your name as a domain name asap!

When Choosing a Business Name Also Perform a Trademark Search!

2009-03-17T07:51:00.000-07:00

Hello!

When choosing to go into business, there are several imperative tasks you must accomplish to ensure you are legally compliant. They are:

1. legally organize your business with the Secretary of State's Office;
2. obtain a valid business license;
3. obtain a federal employee identification number and if needed a sales tax number;
4. claim and obtain a trade name (if needed);
5. claim and apply for a trademark

However, most new business owners never consider claiming and applying for a trademark until it becomes a necessity or someone else asserts claim to their trademark. For this very reason, I advise my client to:

1. do a preliminary search to ensure that a trademark right has not been claimed in the company's business name;
2. after a trademark search has been completed, and the business name appears free from trademark claims, immediately apply for state and federal trademarks.

In my legal opinion, it is imperative to perform a trademark search as soon as you choose a company name. Why? If you choose a name that already has priority trademark rights, and you have spent considerable funds establishing and growing the business, you may have to change your name. Ouch! In addition, if no trademark rights have been asserted in your company name, you would want to claim ownership of the trademark. Very often people tend to infringe on company and or trademark names if they see the potential in its success! Remember, the first to use the name in commerce is the priority trademark owner!

A preliminary search on Google will cost you $0. However, to ensure you are not infringing another trademark owner's rights, a more comprehensive search can be done for $550. In my opinion, $550 is a small price to pay for a piece of mind.

I welcome your thoughts!

New Kindle Audio Feature: Is Text to Speech Reading essentially the Audio Book experience?

2009-03-12T11:14:00.000-07:00

Hello!

I hope all has been well in your world!

As many of you may know, Kindle has added an audio feature that allows a user to click a button and the book is read aloud. Cool right? However, the Author's Guild, the organization that protects the rights of authors, has claimed that the use of the Audio function on the new Kindle is copyright infringement. Specifically, the Author's Guild argues Kindle was granted the use of copyrighted material for electronic reading only...not audio. To understand the Author's Guild argument, you must first have a working knowledge of the rights granted to a copyright holder under the U.S. Copyright laws. Those rights are as follows:

A copyright owner has the exclusive right to:

1. reproduce the copyrighted work in copies;

2. to prepare derivative works based upon the copyrighted work;

3. to distribute copies of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
US Copyright Act.

The Author's Guild argues the authors did not grant Kindle a right to create a derivative work (audio) of the electronic books. The right to create a derivative work basically means the copyright owner has a right to transform the original work into another medium. For example, transforming a painting into a sculpture; transforming a novel into a motion picture; or transforming a book into an audio reading (audio book). The Author's Guild's position is that the audio function of the new Kindle, that allows the book to be read aloud, is an audio version of the book and therefore a derivative of the original book. However, Kindle argues that the text to speech function is performed by software generated technology and is not the same as an audio book experience.

So the question is whether the text to speech function qualifies as an audio version of the books and therefore a derivative of the original work?

In my opinion, I would argue that the text to speech function is an audio version of the original work. Audio is defined as any human audible sound. Whether the sound is computer or software generated is of no consequence. Like audio books in which the original author reads the books aloud, the new Kindle Text to Speech feature accomplishes the same goal: the reader is allowed the experience of having the book read to them as opposed to reading it themselves.

Of course, the real issue here concerns revenue. If the text to speech function is determined to be an audio version of the electronic books, Kindle would have to pay the Authors an additional licensing fee for the audio function. Kindle may not want to pay this additional fee and the Authors want to make as much money as possible for their works. What does this mean for consumers? It means that we may not get the benefit and advantage of purchasing one electronic book and receiving an audio version or experience for free!

I guess we have to wait and see how this all plays out.

Facebook's Terms of Service Agreement

2009-02-18T08:47:00.000-08:00

Hello!

Facebook announced their new Terms of Service (TOS) Agreement this week. The new terms had the blogosphere in an uproar. Basically, the new Facebook TOS Agreement stated that users gave Facebook a perpetual (forever) license to use any intellectual property (writings, photos, links, etc.) posted on Facebook as the company wished. This license was granted and remained in effect even if you, the user, deleted your account. The old Facebook TOS Agreement stated that the license terminated once the account was deleted. Basically thousands of users protested this new change and Tuesday Marc Zuckerberg, CEO of Facebook, announced that the old Facebook TOS Agreement would stand.

In this article, I will examine what is a TOS; why every website should have one; and understanding the legal implications of agreeing to a TOS Agreement.

What is a TOS Agreement?

A term of service agreement is a document that outlines the terms and conditions that a user must agree with to use the services of the Internet Service Provider (ISP). Agreement to an ISP's TOS Agreement is usually required before the user can access the ISP's website. However, these agreements are always long and riddled with legal terms which most users do not read or simply do not understand. As a result, most users agree to the terms without knowing exactly what they are agreeing to.

Why are TOS Agreements important?

Terms of Service Agreements are important because they do the following:

1. Outline the services provided.
2. Explain what type of content the user can download and share on the site.
3. Explain who owns content provided by the user or ISP on the site.
4. Outline the required conduct of users of the site.
5. Require that users comply with applicable laws and regulations.

However this list is not exhaustive. The above terms ensure that the ISP is adequately protected from certain claims by users of their service. It also protects other users of the service from claims and from conduct that is harassing, derogatory, or offensive. These terms definitely come into play when users post original content that they have created, i.e, intellectual property. Intellectual Property is owned by its creator. However, an owner of intellectual property can always license, sell, or transfer rights and ownership in the intellectual property. If an individual or entity uses another's intellectual property without their permission, the owner can assert a claim for infringement. Considering the potential legal claims for infringement, all ISPs have very extensive and iron-clad clauses regarding intellectual property posted on their sites. Usually the clauses contain the following terms:

"You grant the ISP a perpetual, royalty-free (no payment) irrevocable, non-exclusive license to use, reproduce and distribute your Content within the service.......You authorize third parties to use and reproduce your content." Second Life TOS.

In addition, in some cases the ISP can use your content in any or all media for marketing and/or promotional purposes in connection with the Service. Furthermore, some TOS agreements state that any intellectual property you post on their site is 100% owned by the ISP!

Usually if a user terminates the service with the ISP, these clauses are no longer in effect. Facebook briefly changed this term to state that they owned the content regardless of a user's termination. Why? Because of the nature of file-sharing that is commonplace on a site such as Facebook, Facebook can not control who has access to your intellectual property or how they use it. So once you terminate your relationship, Facebook may delete your account, but your content may still live on Facebook through file sharing.

What are the legal implications of the above clauses?

When agreeing to a TOS Agreement make sure you read the agreement and understand what you are agreeing to. Every ISP's TOS Agreement is not the same. For example, any intellectual property created or posted in Second Life is 100% owned by the user. However, when using virtual world sites such as Disney or Coca Cola, the TOS Agreement states that they will own any material created or posted by the user.

Essentially, if you want total control over your intellectual property either do not use the service or do not post any material that you do not want the ISP to use or retain as they wish. Crying foul after you have agreed to an ISP's terms and conditions will not disaffirm or erase what you have already agreed to.

I welcome your thoughts!

Malia and Sasha Dolls: A Right to Privacy and Right to Publicity Issue

2009-01-28T08:35:00.000-08:00

Hello!

I hope all is well. Last week Ty Inc., the maker of the Beanie-Baby toys, introduced two dolls named Marvelous Malia and Sweet Sasha. The company stated these dolls were modeled after President Obama's daughters. Specifically, the company introduced the dolls to celebrate the new historic First Children. However, a few days after the debut of the dolls, First Lady Obama released a statement that she did not approve of the company's use of her daughters' name or likeness for marketing or commercial purposes. The company immediately retracted its earlier statement that the dolls were modeled after Malia and Sasha Obama.

So the questions are:

Do the Obama children have a Right to Privacy?

More importantly, do they have a right to control the marketing and commercialization of their likeness and image?

Right to Privacy.

There are four basic Rights to Privacy:

1. Protection from unreasonable intrusion upon the seclusion of another. For example a home or a car,

2. Protection from appropriation of a person's name or likeness (Right to Publicity). For example using a person's name or image on a product or service without their permission,

3. Protection from publication of private facts. For example, income tax data, family quarrels, medical treatment, school records, etc.,

4. Protection from publication of information that places a person in a false light.

Prosser, Restatement 2nd of Torts.

However, Public Figures do not have a Right to Privacy. Specifically, the law explains that where public figures are concerned, the newsworthiness or public disclosure of private information outweighs the right to privacy of the public figure. Why? These public figures have held themselves out for positions of public trust. We elect public figures to govern us and make decision regarding rules, laws, and regulations that affect our daily lives. So as citizens we need to know the character and factual activities of that public figure. However, the private information disclosed must be true and reported or printed without malice. So essentially, President Obama does not have a Right to Privacy. We are entitled to know as much information as possible about him and we are allowed to use his name or likeness, without his permission, on T-Shirts, Figurines, Books, and the like.

But it has been argued that children of public figures are private citizens and therefore enjoy all the four Rights to Privacy listed above. This fact is debatable. Some would argue that as children of the President, the Obama children lives are of public interest. Specifically, that they do have some level of power and influence on Society as daughters of the President. Children do want to buy the clothes they wear, copy their hairstyles, and attend a Friend School. Others would argue that the Obama themselves thrust their children into the public spotlight during the campaign. During the campaign we learned intimate details of their lives.

However, as minor children they do not have any control or power over how they are placed in the public arena or how they are perceived. So if they are private citizens, they have a Right To Privacy and ultimately a Right to Publicity. They should have control over how their image or likeness is used by others in the marketplace. In addition, they should have the right to profit monetarily from the marketing and commercialization of their images.

Regardless of whether we believe the Obama children are private citizens or public figures, the Ty Company should have approached the Obamas first before manufacturing and modeling dolls after the Obama Children. I think this simple approach would have saved both Ty, Inc. and the Obamas a lot of embarrassment.

I welcome your thoughts!

What PR Professionals Can Do to Protect their Intellectual Property

2009-01-26T06:41:00.000-08:00

Hello!

Welcome Back! This year has started off with a bang and I have been busy. Recently I wrote a guest article on PR Professionals and Intellectual Property Law. This article helps PR practitioners identify their intellectual property and gives them practical tips on protecting it. Check out the article here. This article was written for Robin Caldwell of The J Standard PR Firm. She is an industry legend and is Amazing.

Introducing a new product online? Protect yourself against false advertising claims

2009-01-07T09:24:00.000-08:00

Hello!

I hope all is well. Today I am going to discuss false advertising. Specifically, if you are a newbie to online advertising, how do you protect your business against false advertising claims?

Federal law prohibits unfair methods of competition in or affecting commerce, and unfair or deceptive acts or practices in or affecting commerce. 15 U.S.C. 45(1) Specifically, the Federal Trade Commission Act defines a false ad as one which is "misleading in a material respect." Sec. 12 FTC. Material misleading ads include:

1. false written or oral statements regarding a product or service;
2. misleading price claims or sales;
3. sale of hazardous or defective products or services without proper disclosure;
4. failure to perform promised services; or
5. failure to meet warranty obligations.
Firestone, 81 F.T.C. 398, 451-52 (1972),

When advertising or endorsing a product or service, a retailer or advertiser must be:

1. truthful at ALL COST
2. not deceptively misleading regarding the capabilities of a product or service, i.e., no embellishment
3. not unfair.

Of course, whether an advertiser's claim that a product will achieve the results advertised in some instances, may be subjective. For example, a face cream may achieve the desired results for one customer but not for another customer. The customer who did not achieve the results advertised may assert a claim for false advertising against the advertiser. How can an advertiser avoid such a claim?

An advertiser can protect itself from such a claim by placing very prominent disclosures on the advertisement. A disclosure for skin care may read like this:

Through clinical testing of "Said Product" skin achieved a more balanced and even skin tone within 12 weeks of use. However results may vary.

As stated, the disclosure must be prominent. So do not use small text and make sure the disclosure is in close proximity to your claim.

Although disclosures are a great defense against a frivolous false advertising claim, making purposeful false statements in ads can trigger legal action.

I hope this information was helpful. Leave a comment if you have any further questions.

Best

Happy New Year!

2009-01-05T09:25:00.000-08:00

Hello!

Happy New Year! I hope your holiday break was wonderful! I am so excited to start the New Year. This is a very exciting time for Intellectual Property Law! There are some fantastic conferences on legal issues in new media that I am attending this year. Also I am very curious about the effect the newly created Intellectual Property Coordinator/Czar will have on IP issues in this new digital age.

In March I am attending another Practising Law Institute Conference which will focus on Intellectual Property law issues in Web 2.0. Specifically, the conference will cover:

Legal issues using mobile devices
Liability issues in social networks and blogs
Use of key words and meta-tags. I discussed these issues here.
The future of advertising and product placement.

I am particularly interested in the future of advertising and product placement as it relates to advertisers using social media and various new media platforms. I am so looking forward to this conference and can't wait to report back to you (my readers) about the cutting edge legal issues affecting your blogs, social networks, and other new media platforms.

Thank you for continually reading and supporting IP LAW 101. If there are any other topics you would like me to discuss, or if you have any questions, please let me know.

Best!

Counterfeiting: Why Consumers Should Never Buy Fake Goods

2008-12-16T07:54:00.000-08:00

Hello Everyone!

Welcome Back! Today I am not going to discuss the law as much but I want to bring to your attention the crime and economics behind Counterfeit goods. I read a very informed and interesting article in the January 09 issue of Harper's Bazaar Magazine about the Counterfeiting Industry. Harper's Bazaar spearheaded the "Fakes Are Never In Fashion" campaign in 2005 to inform the public about the atrocities of the Counterfeit Trade. Every January, the magazine publishes an article about counterfeiting. Here are some very amazing numbers provided by Harper's Bazaar:

$600 Billion
Estimated annual sales in counterfeit products worldwide

$512 Billion
Global sales lost to counterfeit goods

$250 Billion
Annual loss to American companies from intellectual property theft

$20 Billion
Estimated loss to American companies from counterfeit products

$1 Billion
Estimated annual loss in New York City tax revenues due to counterfeiting

750,000
Number of jobs lost due to intellectual property theft in the United States

10%
Estimated percentage of fakes among all goods produced worldwide every year

As you can see these are pretty staggering numbers. However, I was more appalled by the use of child labor in Thailand and China to produce counterfeit goods. As reported in the January 09 Issue of Harper's Bazaar Magazine, children as young as 6 years old work around the clock in sweat shops producing fake goods. The children are often dirty and underfed. In one raided Thailand sweat shop, the owner had broken the lower legs of elementary age children and tied them to their thighs so the children legs would not heal. When asked why he committed such a horrific act, he said "because the children wanted to go outside and play." I nearly cried.

Besides the obvious legal reason why we should not buy Counterfeit goods,(federal crime, trademark infringement, and brand dilution) we all should detest the mistreatment and cruelty to children in producing these "fake" goods. In today's culture we all want to own luxury for less. Instead of saving or waiting until we can afford these goods, we will purchase a $50 "fake" Louis Vuitton handbag on the street. Purchasing counterfeit goods is stealing from those companies who have investing considerable effort and time in building a recognized and respected brand. It is also supporting human trafficking, child abuse, and child labor.

Please visit Fakes Are Never In Fashion.com to learn more about what we can do as consumers to stop Counterfeiting.

Note: Counterfeiting Facts in this post are credited to Harper Bazaar Magazine: January 09 Issue

Trademark Registration: Why it is important to choose the appropriate Classifications

2008-12-08T11:31:00.000-08:00

Hello!

Welcome Back! Today I will discuss determining what classification your good or services falls under when registering your trademark. This is an important topic because choosing the wrong classification or not including a classification can jeopardize your trademark rights. Here are a few tips:

1. First a classification is a description and scope of the types of goods or services that fit your trademark.

2. When choosing a classification first think about the industry you are in. Specifically, what industry does your product or service serve? For example, if you are a film company you are in the Entertainment Industry. So you would choose Classification 041 which covers Entertainment in the nature of motion pictures.

3. Next make sure you include multiple classifications if your trademark will identify different products or services within your company. For example, the trademark BBB Bar-B-Q may identify Restaurant services, which is covered under classification 043. But the trademark may also identify BBB Bar-B-Q Sauce which is a product covered under classification 030.

4. Lastly, be strategic when identifying classifications for your product and/or service by including classifications of products or services that you have yet to bring to market. For example, you own a restaurant but plan to sell T-Shirts displaying the restaurant's trademark. You can include the classification 025 which covers T-Shirts and base your trademark application on an intent to use basis. This will prevent another company from claiming a trademark right in your trademark on T-shirts. More importantly, if you do not include T-Shirts in your original application and later want to include your trademark on T-Shirts, you would have to go back and apply for a trademark for T-Shirts. It is best to include all Classifications the first time around. It will save you time and money.

When Can You Use the TM or SM sign?

2008-12-04T07:57:00.000-08:00

Hello!

Welcome Back! Today I am going to discuss when it is appropriate to use the TM or SM sign after your trademark. First let me explain what the TM or SM sign represents.

A TM is an acronym for trademark while SM is an acronym for service mark. A trademark identifies unique goods or products, .i.e., Cheerios Cereal. A service mark identifies unique services, i.e., Anderson Consulting.

It is appropriate to use the TM or SM sign after your trademark or service mark when you claim a right in your trademark or service mark. What does this mean? It means that you are using the trademark or service mark in connection with the sale of goods or services in commerce. Click here for my explanation of "Use In Commerce." You can use the TM or SM signs regardless of whether you have filed an application with the USPTO. As I have discussed previously, an individual or entity can have common law trademark rights. If you are first to use a trademark or service mark in your region, you have common law trademark rights. This right is granted to an individual or entity without USPTO registration.

Why is it important to use the TM or SM sign? Well it puts the public on notice that you are asserting rights in your trademark. So an infringer may be deterred if they see that you are claiming a trademark right. However, it is still very crucial that you do obtain registration from the USPTO. USPTO registration protects your trademark or service mark nationwide and is important in obtaining trademark registrations in other countries. You can only use the official R symbol once the USPTO grants registration of your trademark or servicemark.

I hope this information was helpful. If you have any questions or would like to leave a comment, please do so.

How to locate an infringer on the internet

2008-11-30T07:20:00.000-08:00

Hello!

Welcome Back! Happy Holidays! Today's topic will discuss how to find the owner of a website that is using your intellectual property without your permission. I always get calls from clients regarding a website that is unlawfully using their trademarks or copyrighted material. In the majority of these cases, the website owner's information is not readily available. Here are a couple of ways to locate the infringer.

1. Look up the owner's information on whois.net. Whois.net will allow you to type in any domain name and they will provide the registrant's (owner) information. Most times, the name of the owner or company is readily available. However, there are instances when aliases are used. In this case, use the following method:

2. Contact the Internet Service Provider and inform them of the infringing activity and they will provide the owner's contact information or they will contact the owner on your behalf.

I hope this information was helpful. If you have any questions or comments, please leave one.

Can You Trademark a Common Name?

2008-11-17T19:47:00.000-08:00

Hello!

Thank you for visiting! Today's post will address whether you can trademark common or generic names. I briefly discussed this issue in a previous article you can find here. Basically common or generic names, or words or phrases that are merely descriptive are not sufficient for trademark registration with the USPTO. See TMEP §1213.05. However, if a combination of common or generic names create a unique name, tag line, or coined phrase, then the USPTO considers them unique enough to be a trademark. See the example below:

Go and Daddy separately are two common or generic words. Alone neither are sufficient for trademark registration. However, the combination of "Go Daddy" together is a unique name that is trademarked!

So when choosing names for trademark registration, do not be afraid to use common names together to create a unique name or phrase. As long as your name has not been previously used by another individual or entity, and you are using the name in commerce, trademark registration is feasible.

I hope this information was helpful. If you have any questions, please leave a comment.

How To Protect Your Intellectual Property Online

2008-11-10T07:20:00.000-08:00

Hello!

Welcome Back! I hope everyone is having an awesome day! Today I am going to discuss how to protect your intellectual property on the internet. Here are a few practical tips and tools you can implement right now to ensure your intellectual property is not stolen.

1. Include a section or link on your website that clearly states the terms of use when someone wants to use your material. See the examples below:

For Copyrights

All Content on Site X are protected by U.S. Copyright. This site is licensed under a Creative Commons License. You are free to site or quote material on this site if you first obtain our permission and if you properly attribute the material back to Site X.

For Trademarks

Site X's name and logos are all registered trademarks of the X company. All Rights are Reserved. You must obtain our permission before using or displaying any of our registered trademarks.

2. Watermark your copyrighted images. A watermark can contain an image across the photo with your copyright notice or the name of your site.

3. Do keyword searches of your trademarks and be vigilaint about contacting infringers and demanding they remove your intellectual property from their sites immediately.

4. For as little as $249.00 per trademark, use a company like Mark Trend to track and monitor possible and actual trademark infringement on the internet. Using a montioring service like Mark Trend will save you money and most imporantly time. They do all the work for you.

I hope this information was helpful. If you have any questions, please leave a comment.

Google's Policy for Keyword Advertising: Beyond the U.S.

2008-11-03T06:42:00.000-08:00

Hello!

Welcome Back! In my previous post I discussed Google's Policy for Keyword Advertising. Specifically, I discussed how Google's Policy was different in the US, Canada, UK, and Ireland than in countries outside of these territories. Why? Well it depends on how "trademark owner" friendly laws are in certain countries. Below I will discuss some "trademark owner" friendly laws in France and Austria.

In France, one court found Google liable for trademark infringement in allowing trademarks to be used a keywords by Google Advertisers. Viaticum & Luteciel v. Google France, Court of Nanterre, Oct. 13, 2003. The court conluded that a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products.

In Austria, the court found that use of trademarks in keyword advertising is trademark infringement. The court concluded that infringement existed when the search resulted in the competitor's or infringer's advertisement appearing before the trademark owner's advertisement. Also if the trademark owner's trademark appeared in the text of the advertisement, then trademark infringement existed. AdWord-Urteil aus Osterreich OGH, Beschluss vom 20.3.2007

So what is the final conclusion? As I have previously stated, advertisers should be overly cautious in deciding to use trademark as keywords in advertising. Depending on the country or the region in the US, you may be liable for trademark infringement.

Google's Policy for Keyword Advertising

2008-10-28T10:51:00.000-07:00

Hello!

I hope all is well! In my last post I briefly mentioned Google's Policy on their advertisers' use of trademarks as key words in key word searches that produce advertisements. Specifically, I mentioned that Google has established a policy in which Google will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further. Google will implement this policy when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger. I do need to clairfy that this policy applies to countries outside of the UK, Ireland, Canada, and the US. See Google's Policy here.

However, in the UK, Ireland, Canada and US, Google's policy is different. Google will remove the trademark as a keyword only when the trademark is displayed in the ad title or in the ad text. But it will not completely disable the use of the trademark as a keyword. View this policy here.

Below is an example:

In the U.S, if I have a company that is a competitor of John Deere, I can purchase John Deere, which is a trademark, as a keyword. A search for John Deere will also pull up advertisements for my company. My advertisement can be just as prominent or more prominent than John Deere's. Of course this can be frustrating for John Deere. But as long as John Deere, which is a trademark, does not appear in my ad title or text, Google will not require I stop using John Deere as a keyword. Google will allow this even if John Deere complains. But outside of the UK, US, Ireland, and Canada, if John Deere complains about the use of its keyword in my advertising campaign, Google will require that I stop using the keyword and prevent me from using it further. Even though the trademark, John Deere, does not appear in my ad text or title, Google will prevent me from using it as a keyword. Why is Google's policy different for the US, Canada, Ireland, and the UK? Well it mainly comes down to how strong the trademark laws are in a particular country regarding the use of trademarks as keywords.

As I mentioned in my previous post, Google has been sued many times for its policy here in the US. However, Google has either settled each lawsuit or the lawsuit was dismissed for a variety of reasons. The second circuit has concluded that the use of keywords in advertising is not a use in commerce and therefore not trademark infringement. Read my synopsis of this case here. On the other hand, the 11th circuit has said the use of keywords in advertising is a use in commerce and therefore trademark infringement. Other courts in the US, have not been clear whether using trademarks as keywords is trademark infringement. Ultimately this issue is still up in the air and will have to be decided by a higher court.

Since the courts are pretty much split regarding this issue, Google is not motivated to do more to stop advertisers from using trademarks as keywords in an advertising campaign. Google's policy here in the U.S. is definitely more advertiser friendly. I still stand by my policy to not use trademarks as keywords if you are an advertiser. The search engine may not be liable for allowing you to use the trademark has a keyword, but you will as an advertiser.

In my next post, I will discuss some of the laws established in countries where Google's policy is more trademark owner friendly.

I hope this information was helpful. As always leave a comment or contact me via email if you have any further questions.

Can Search Engines be Contributorily Liable for Trademark Infringement?

2008-10-23T07:35:00.000-07:00

Hello!

Today's topic is contributory liability in regards to trademark infringement, i.e, contributory infringement. Of course, we are going to discuss this trend as it applies to the Internet. First let me explain what is contributory infringement.

Contributory infringement is a legal concept that is usually applied to copyright infringement. Contributory infringement is when an individual or entity knows that copyright infringement is taking place by another and allows, causes, or assists the infringing activity. Here is an example:

A manufacturer unlawfully copies an artist's work and sells it to a major retail chain. The retail chain sells the works in all of its stores. The artist notifies the retail chain of the infringement and requests that they stop selling the infringing work. However, the retailer continues to sell the infringing work. The retailer would be liable for contributory infringement because they had notice the work in question was infringing and they induced or allowed the manufacturer to commit copyright infringement through selling the work.

Recently, courts have applied the contributory infringement concept to trademark law. The current law states that "If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit." Inwood Laboratories, Inc. v. Ives Laboratories, Inc. Strong language!

How does this rule apply to search engines? Specifically, can a search engine be liable for allowing trademarks to be used in keyword searches that result in the advertisement of the trademark by a trademark infringer? This practice is called key-word linked advertising. I briefly discussed this concept in my earlier post. Google has come under fire for this practice. They have been sued many times. However the lawsuits were either settled or dismissed. As a result, Google has established a good policy to avoid contributory trademark infringement liability. Essentially when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger, they will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further. Thus Google is adhering to the law established in Inwood Laborities...not knowingly contributing to trademark infringement.

What does this mean for consumers who advertise on the Internet? Don't use established trademark has key words when advertising. If you sell designer purses, use "designer purses" as a key word instead of "Louis Vuitton" or "Chanel." This simple practice will save you a lot of heartache and money.

Using Third Party Trademarks as Meta-Tags on Blogs

2008-10-21T11:00:00.000-07:00

Hello!

I hope all is well! Like most bloggers, I use meta-tags based on the subject of my blog or posts, to make it easier for search engines to find my blog when an internet users enters the search term. However, what happens when you use a trademark as a search term. Is it trademark infringement or a search engine linking function? This issue was discussed at PLI's Intellectual Property Law Institute. There are two critical cases that have recently addressed this issue. However, each ruling is different. Here is a brief synopsis of the law as it stands today:

1. The use of trademarks in meta-tags is "use in commerce" and therefore trademark infringement. The 11th Circuit came to this inclusion this year in North American Medical Corp. v. Axiom. The court stated that the use of a trademark as a meta-tag was use in commerce. Essentially, the court concluded that the use of the meta-tag, which resulted in the trademark in question being displayed on the search engine, was an advertisement for the sale of goods. Thus it was used in commerce.

2. However, the 2nd circuit decided in 1-800 Contacts, Inc. v. WhenU.Com, Inc. that use of trademarks in meta-tags was not a "use in commerce" because the search engine merely provided the link to the trademark. The court emphasized that linking a trademark through a search engine was not a use in commerce because the trademark in question was being displayed by a machine and the defendant was not causing the trademark to be physically placed on goods or services, or was physically causing the trademark to be displayed or reproduced.

What does all of this mean for those of us who use meta-tags? Although the 2nd Circuit and 11th Circuit give different opinions on whether the use of trademarks in meta-tags is trademark infringement, it is better to be safe than sorry. When using meta-tags be wary of using trademarks. Make sure that when you purchase key words meta-tags that there are not any trademark in the list. The last thing you want is to be sued by a huge corporate giant for trademark infringement.

Trademark Issues in Virtual Worlds

2008-10-15T08:34:00.000-07:00

Hello!

I hope all is well. In my previous post we discussed copyright issues when creating avatars using internet service providers, such as virtual worlds or avatar creation services. Today I will discuss trademark issues that arise in virtual worlds.

This topic was discussed at PLI's Intellectual Property Law Institute. Stephen Davidson of Davidson PLLC gave a brief presentation on this topic. Here is a brief outline of his presentation:

1. Most trademarks famous and non-famous are found in Virtual Worlds such as Second Life.

2. Many end users (consumers) of Virtual Worlds use these trademarks without the express permission of the trademark owner.

3. Sometimes owners of famous trademarks will police (prevent) trademark infringers from using their trademarks in Virtual Worlds.

4. Owners of famous marks should particularly police use of their trademarks in Virtual Worlds due to trademark dilution. A trademark infringer's use can tarnish (create a bad reputation) or blur (diminish the distinctiveness) of a famous mark.

In conclusion, the same rules apply regarding trademark infringement in real life and in cyber life.

Who Owns the Copyright to An Avatar: The Service Provider of the End User?

2008-10-09T14:24:00.000-07:00

Hello!

As many of you know, I attended PLI's Intellectual Property Law Institute in San Francisco last week. Intellectual Property issues in Virtual Worlds was a hot topic. Stephen J. Davidson founder and principle of Davidson PLLC, gave a fascinating presentation on this subject. As a social media enthusist, I was particularly interested in the discussion on who owns the copyright in an Avatar created by the end user (customer) but the tools are provided by the service provider (Second Life, Disney's Toontown). Here is a brief outline of his presentation below:

1. Virtual Worlds such as Second Life do not require end users to relinquish their copyright rights. Plus they allow customers to create avatars and then license them. Thus, when you create avatars or other objects in these worlds, you are the rightful copyright owner and can sue an infringer for unlawful copying.

2. There are some virtual worlds such as Disney's Virtual Magic Kingdom, that require customers to reliniquish their copyrights when creating avatars and actually require the customer to license the avatar to the internet service provider.

3. Other service providers that provide avatar creation services, such as Logobama o8' and Ameriland Entertainment allow the customer to retain their lawful copyright and grant the service provider a royalty-free license to copy, distribute, use or display the avatars.

I am of the view that although an internet service provider may provide the tools for a customer to create an avatar, that creation is still the original idea and work of authorship of the customer. Thus a copyright does exist. However, just like in any other case, copyrights can be licensed, retained, and purchased by express written agreement. So when creating avatars make sure you read the terms of agreement of the service provider. You may create the avatar but the service provider may own it.

What Advertising Agencies Should Know When Creating Ad Campaigns

2008-10-08T08:32:00.001-07:00

Hello!

When advertising agencies create advertising campaigns that include slogans, tag lines, and logos for a client, but the client subsequently does not use the campaign, who owns the trademark rights? The client or the advertising agency?

This is a hot issue in the world of advertising. This issue was decided by the 2nd Circuit in the case, American Express Co. v. Goetz and Gardner Design Group LLC.

Goetz and Gardner submitted an advertising proposal campaign to several credit card companies that included the slogan, "My Life. My Card." Two months after submitting the proposal to AMEX, Goetz and Gardner registered the domain name, mylife-mycard, and filed a trademark application with the USPTO.

Subsequently, AMEX did not use Goetz and Gardner's proposal, but used another advertising agency's proposal that also included the slogan, "My Life. My Card." AMEX immediately registered the domain name, mylifemycard, and filed a trademark application with the USPTO.

When Goetz and Gardner discovered AMEX's use of the trademark, My Life My Card, they sent a cease and desist letter to American Express to prevent them from using the slogan. This dispute was litigated in court and the courts made two important determinations. They are:

1. Slogans created by advertising agencies for a client or potential client's advertising campaign cannot be registered as trademarks by the agency. These slogans are created for clients to identify and distinguish the services of the client and not the advertising agency.

2. Simply displaying a trademark or servicemark in advertisement for services that are not yet available does not constitute use of the mark in commerce for trademarking puposes. Essentially, if there is not an exchange of goods or services in the marketplace, a trademark or servicemark right does not exist.

Advertising agencies should be aware that if they create an advertising campagin for a client or potential client and the client does not use it, the agency cannot assert trademark rights. However, the advertising agency may assert a breach of contract or misappropriation claim for non-payment for creating the campagin.

I hope this information was helpful. Please contact me via email or leave a comment if you have any further questions.

How Does One Lose Their Trademark Rights: Its all about Brand Management

2008-10-06T09:42:00.001-07:00

Hello!

I am finally back from San Francisco! I attended PLI's Intellectual Property Law Institute Conference this past Thursday and Friday. It was awesome! We discussed intellectual property issues in virtual worlds, social networks, and blogs. I was in IP Nirvana! It was truly great and over the next week, I am going to share with you the latest and greatest in IP Law. I know you will enjoy it!

Today,I am going to discuss how an individual or entity loses their trademark rights. The top three reasons are:

1. Failure to prosecute infringers. I can not tell you how important it is to prosecute (prevent) trademark infringers from unlawfully using your trademark. If you do not, your trademark is considered weak. Furthermore, if you take no action to prevent infringers and their use of your trademark is overwhelming, you can lose your trademark rights. Essentially, your trademark will lose its uniqueness to your product or service.

2. Abandonment by non use or change in the nature of goods or services sold under the trademark. For example, you register your trademark to uniquely identify plumbing services. Subsequently, you stop providing plumbing services and you now provide medical testing services. However, you do not change the trademark. The trademark originally used to identify plumbing services can not and will not identify medical testing services. You must apply for and obtain a new trademark to identify medical testing services. Also if you do not actively use a trademark in commerce for 3 years, it is evidence that you have abandoned the trademark.

3. Genericization of trademark. This happens when a trademark becomes the common name for the goods or services and ceases to function as a source for the goods. For example, ASPIRIN is an example of a trademarks that has become descriptive of goods instead of an indication of a source for a particular good. So we associate Aspirin with the headache medication instead of a brand like Bayer Aspirin. Genericization of a trademark can occur if a commercial campaign or promotion is too successful. A company must takes steps to make sure that their trademark does not become generic. For instance XEROX Corporation is an example of a company that has prevented its mark from becoming generic. XEROX used an extensive advertising campaign which informed consumers to "photo-copy" documents with XEROX machines. Also XEROX constantly used XEROX "Brand" to identify its products.

Remember its all about brand management. As a trademark owner, you have to manage your brand to ensure your product is identified correctly, your brand is conveying the correct message, and to prosecute trademark infringers. I hope this information was helpful. Please leave a comment or email me if you have any further questions.

Likelihood of Confusion: What Is It?

2008-10-03T06:00:00.000-07:00

Hello!

Today I am going to discuss the second requirement to prove trademark infringement: likelihood of confusion.

Per my previous post, to prove trademark infringement one must show 1) priority of the trademark's use in commerce and (2) the use of similiar trademarks in commerce is likely to cause confusion among the relevant consuming public.

The courts have established an 8 part test to prove likelihood of confusion. The court balances these 8 factors to determine if the use of two similar trademarks in commerce is causing confusion among the relevant consuming public. I will explain each factor below:

1. The strength of the mark. Basically, how strong or distinctive is the trademark to the consuming public? The strongest marks are those that are arbitrary and fanciful. This means that the mark does not merely suggest or describe the product or service. For example, Kodak is the trademark for a line of cameras and film. Kodak does not suggest or describe the products: cameras and film. However, we have come to associate Kodak as a producer of quality cameras and film.

2. The similarity of the marks in sight, sound and meaning. For example, Victora's Secret is the trademark associated with premium lingerie. However, another company comes along and its trademark is Vickey's Secret and this company also sells premimum lingerie. These two trademarks are similar in sight, sound, and meaning

3. The similarity of the goods or services sold under the trademarks. I will go back to my Victoria's Secret example. The goods and servies sold under the trademarks, Victoria's Secret and Vickey's Secret, are so similar they are identical.

4. The similarity of the distribution channels and customers for the goods or services at issue. Are the products being distributed by the same entities? Are the products sold in the same markets? Are both products being sold through the same channels, i.e., online, in-store, or catalog?

5. The sophistication of purchasers and the expense of the product or service at issue. For example, frequent buyers of Ralph Lauren Purple Label would be less likely to confuse RLA Purple Label with Ralph Lauren. The rationale is that sophisticated purchasers exercise more care when purchasing expensive items.

6. The similarity of means and methods of advertising and promoting the goods or services at issue. Essentially, do both companies promote the trademarks through the same channels, i.e, both advertise on television, the web, or print campaigns.

7. Was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark? Per my Victoria's Secret example, clearly Vickey's Secret was adopted with the intent to imitate the established trademark Victoria's Secret.

8. Whether there is evidence of actual confusion of consumers or other relevant groups. Actual evidence of confusion can be established by customer surveys; diverted internet traffic; and lost sales.

Alliance Metals, Inc. v. Hinley Indust. Inc.

It is important to note that if you discover that another trademark is infringing on your priority trademark right, it is in your best interest to action. If you do not take action, you can suffer dilution of your brand, lost profits, and lose your trademark rights. Yes you can lose your trademarks rights.

In my next post, I will discuss how one loses their trademark rights. I hope this information was helpful. If you have any further questions, please leave a comment or contact me via email.

Trademark Infringement: Priority of Use and Likliehood of Confusion

2008-10-01T07:08:00.000-07:00

Hello!

Today I am going to explain the requirements to prove trademark infringement. Believe it or not, there are tons of trademarks that infringe on another trademark's rights whether intentionally or unintentionally. As I have discussed previously, it is important to protect your trademark to avoid dilution of your brand and to protect licensing rights and royalty income.

In order to prevail on a trademark infringement action, an individual or company must show (1) priority of its trademarks use in commerce and (2) the use of similiar trademarks in commerce is likely to cause confusion among the relevant consuming public. Cumulus Media Inc. vs. Clear Channel Communications.

In this post, I will explain what the law means when it states a mark must have "priority of use in commerce." In my next post, I will explain the concept of "likliehood of confusion."

Priority of Use in Commerce

A trademark will have priority rights over another similar trademark if the trademark was used first in commerce. The definition of use in commerce is the bona fide (actual) use of the trademark in the ordinary course of trade, and not made merely to reserve a right in the trademark. The Lanham Act sec. 45. More specifically, it comprises the trading of something of economic value such as goods, services, information or money between two or more entities.

A few examples of Use in Commerce are:

1. selling a product or service online.

2. publishing (print and online)

3. distribution of products

Use of Commerce is not:

1. Using a trademark as a key word to trigger the display of sponsored links online is not use of the mark in a trademark sense. (Merck vs. Mediplan)

2. Simply registering a domain name. (Brookfield Communications Inc. vs. West Coast Ent.)

3. Simply incorporating a business without customers.

Priority of Use in Commerce can be established by:

1. The trademark owner was first to use the trademark in its region.

2. The trademark owner was first to file an application with the USPTO based on use in commerce.

3. The trademark owner was the first to file an application with the USPTO based on intent to use, however, the trademark owner MUST show actual use within 6 months of an intent to file.

I hope this information was helpful. Please leave a comment or contact me via email if you have any further questions.

IP LAW 101 FEATURED ON ALLTOP!!!!

2008-09-29T07:13:00.000-07:00

Hello!

Welcome new and returning readers! I must admit this blog is a year late. My dear husband had been urging me to start a blawg (law blog) for a year. He felt I really had something valuable to share with the public. See my husband thinks I am a pretty good attorney. He may be biased though. LOL! I just really love what I do and I love helping people. So you can imagine my absolute surprise and astonishment when IP LAW 101 was selected to be on Alltop in the Top Law News category! Woot! What is Alltop? Alltop is an interent magazine of the BEST news and stories on the internet from blogs and other web sources. Alltop displays the best of the best on various topics such as law, politics, technology, beauty, you name it! The process for inclusion on Alltop is pretty selective, so if you are listed on Alltop, you are pretty hot stuff. LOL! Seriously, I am so honored, thrilled, and humbled! You see I started this blog 2 months ago and the response I have received is overwhelming. I know the information provided in this blog is helping someone. So thanks Alltop! And thank you to my husband for making me start this blog! Woot!

Why You Should Hire A Trademark Attorney To File A Trademark Application

2008-09-26T07:48:00.000-07:00

Hello!

Welcome Back! Now some of you may think that I am writing this article because I want you to hire me or one of my colleagues. Now of course if you think I might be an awesome attorney, then please contact me. LOL! But this blog is purely to provide valuable information to people who need it. I felt compelled to write this article because many individuals believe that the process to file a trademark application is simply filling out the application online and then Viola!, six months later you have an official trademark registration. Is it that easy? Well maybe about 50% off the time. To be honest, a large portion of my client base are individuals who filed their own trademark application and it was subsequently rejected. Yes rejected. There are numerous reasons the USPTO rejects an application. The most common reasons are:

1. The proposed mark is too similar to a registered trademark.

2. The applicant submitted an insufficient specimen (trademark and/or logos).

3. The appliciant failed to prove the mark is currently being used in commerce.

4. Applicants submit items that should be sent to the US Copyright Office to the USPTO.

4. The applicant missed an all important USPTO deadline.

So what can a trademark attorney do to ensure the likliehood of success in obtaining a registered trademark that most individuals do not do?: They are the following:

1. Perform a comprehensive trademark search to ensure your mark does not infringe on a registered or unregistered mark that has priority rights. Trademark attorneys hire trademark searh companies to do a comprehensive search of your mark. This search will gather any information or trademarks that are similar to your trademark. These companies search the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet. This cost for this type of search starts at $550.00. This may sound steep, but who wants to do all of this research themselves? Remember, there may be an existing trademark that has priority rights over your trademark that is not registered with the USPTO. A trademark that has been used in commerce first in its region has valid trademark rights even if it is not registered. I discussed this concept here. So do not simply rely on the trademarks listed in the USPTO database. It WILL NOT contain all valid existing trademarks that may compete with yours.

2. Analyze the contents of any comprehensive search and give a legal opinion regarding the likliehood of success of your trademark obtaining registration. Once this information is gathered, a trademark attorney will use his or her knowledge of the trademark laws and determine whether: a) there is a competing trademark, 2) whether a competing trademark has priority (1st to use) rights over yours and vice versa, 3) whether you should pursue a trademark dispute, or 4) whether you should choose another trademark.

3. File your application and ensure the application is worded correctly and that you have the correct specimens (evidence you are using the trademark in commerce) for submittal. One of the top reasons trademark applications are rejected is because individuals do not submit the correct specimens. A correct specimen for goods can be a label or a container. A correct specimen for services can be a brochure or advertisement for services. Often individuals simply submit the drawing (logos) or name as the specimen. This is incorrect and your application will be rejected.

4. Make sure you do not miss any deadline for responses to a USPTO action. The USPTO reviews your application and subsequently provides several office actions before the application is offically approved and a registration issued. However, these office actions have very strict response deadlines. If you miss a deadline, your application can be abandoned. What does this mean? You have to start over. Trademark lawyers are very careful about adhering to deadliens. If we don't, guess what? You can sue us for malpractice.

Lastly, many individuals use companies like Legal Zoom to file trademark applications. These companies DO NOT perform comprehensive searches. I repeat they DO NOT perform comprehensive searches. They only check the USPTO database. So you can pay this company around $550 which includes the $325 USPTO filing fee, and cross your fingers. If the applications is rejected because the USPTO did their own research and found a competing right, you are basically out of luck.

How Does Dilution Affect You as a Trademark Owner?

2008-09-24T07:00:00.000-07:00

Hello:

Below is my continuation of Monday's post regarding Dilution.

So how does Dilution affect you as a trademark owner or potential trademark owner? Well the law has recently changed. Now the law heavily favors owners of nationally knowned or recognized trademarks. Previously, an owner of a famous trademark had to show that a company that adopted their trademark but sold a totally unrelated product or service was ACTUALLY diluting their brand. Actual dilution could be shown by economic injury (loss profit or sales) via blurring (consumers began to confuse the two products) or tarnishment (the use of the famous mark by the subsequent company tarnishes the reputation of the famous mark). But actual dilution was hard to prove. Currently, the only thing an owner of a famous trademark has to prove is that there is a likliehood of confusion rather than actual economic injury. Trademark Dilution Revision Act (TDRA) This is much easier for a company to prove. One way a company can prove a likliehood of confusion is by simply doing customer surveys.

Second, a mark has to be recognized nationally by the general consuming public. TDRA. Previously, a highly distinctive or niche mark was considered famous even if it was only used in a specific geographic region. Now if your mark is famous or well knowned in the Southeast but not nationally, then you can not claim dilution by a subsequent mark.

Third, protection from Dilution is still afforded to trademarks that are satires, parodies, or criticisms of a famous mark. TDRA. This is called the fair use doctrine. So the website Perez Hilton, which is a satire or parody of the name, Paris Hilton, is protected from any dilution claim from Paris Hilton.

I want to close out this article with three key points:

1. If your mark is nationally known or recognized, be vigiliant in protecting your brand and trademark. The current law is on your side.

2. If you are a potential trademark owner, make sure you do not choose a trademark that is too similar to a nationally recognized trademark. Although you may not offer the same product or service, a company that owns a more famous mark can easily prevent you from using the mark.

3. Parodies or satires are protected. So if you have a website or an idea for a mark that parodies a famous mark, feel free to embark on that journey. Fair use is king!

Trademark Dilution: What Does It Mean?

2008-09-19T11:40:00.000-07:00

Hello!

Note: When I initially wrote this article, it was very long. So to keep my readers engaged, I decided to split this article into two posts. I hope you find this information helpful.

Today I am going to discuss Trademark Dilution. I will explain what it means and in my next post I will discuss how Dilution may or may not afffect you as a trademark owner.

Dilution is when another company or individual uses your famous trademark or brand name on a totally unrelated product or service and their use of your trademark "dilutes" the distinctiveness of your product or service. Dilution can occur even if the unrelated product or services is not competitive or may not cause a likliehood of confusion, i.e., consumers would confuse the two companies' product or services. I will explain this concept in the example below:

Your company name is XYZ, Inc. You own a trademark for distributing tech gadgets. You have built a brand name and reputation as a leader in distributing tech gadgets. However, another company comes along and names their company XYZ, Inc. but they don't sell tech gadgets, they sell street clothing. Although, the products sold are totally unrelated, the consuming public can assume that company XYZ, Inc., which sells tech gadgets, has ventured into the business of selling street clothing. XYZ, Inc., the tech company, does not want to be known for selling street clothing. They want to be known as the leader in selling tech gadgets. And of course, XYZ, Inc., the street clothing company, wants to use the XYZ name because they can gain recognition off of the brand name and reputation of XYZ, Inc., the tech company. Thus this is how dilution of a brand occurs and why well knowned or famous trademarks want to avoid it.

So how does Dilution affect you as a trademark owner? Stay tuned for my next post to find out.

Taglines and Coined Phrases are Trademarks Too!

2008-09-16T09:00:00.000-07:00

Hello!

If you are new to this blog, welcome! If you are a returning visitor thank you so much for coming back.

As a trademark lawyer, I often notice that individuals create unique tag lines and coined phrases to describe their product or service, but do not trademark them. Taglines or coined phrases usually describe your product or service and a business becomes associated with that phrase. Thus they are trademarks. A trademark is defined as an intellectual property right that protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of goods. I can better describe this definition in a couple of examples:

Example 1. Coca-Cola is the trademark associated with the soft drink Coke. However, Coca-Cola recently adopted a coined phrase: "Enjoy the Coke Side of Life." You better believe Coca-Cola trademarked that bad boy as soon as it was conceptualized.

Example 2. Atlantic Station is the trademark associated with the Live, Work, Play Community here in Atlanta. Great concept. They also have a coined phrase, "Life Happens Here." This tag line or phrase is also a trademark associated with the community Atlantic Station.

So it is very important to trademark all tag lines or phrases associated with your product or service. Here are a few practical tips to ensure you are protecting all names, words, and phrases associated with your brand:

1. If you already have a tag line or coined phrase associated with your trademark, make sure you include it when you complete and file your trademark application. For example, you would submit your mark, XYZ Company, (name of co.), We Work for You (tagline) as one trademark.

2. If you later create a unique phrase or tag line that your company becomes associated with after you have already applied for and received a trademark for your company name, logos, etc., simply submit another application to trademark the phrase. It will prevent others from using the phrase and protect your brand.

I hope this information was helpful. If you have any further questions or concerns, please email me.

Practical Tips for Bloggers when protecting your copyrighted works.

2008-09-15T07:15:00.000-07:00

Now for the bloggers out there. Use these practical tips to properly protect your copyrights on the internet.

1. Do place a copyright notice on your site. This will not stop individuals from stealing your work, but it may give them pause.

2. Use Copyscape. Copyscape will search the web for copies of your work on the internet. Having the DO NOT COPY widget on your blog will deter some infringers.

3. Register your copyrighted post with the US Copyright Office. I know you are thinking that registering every post will cost you a fortune especially if you have been blogging for more than a year. Well good news! The US Copyright Office will allow an applicant to register collections of works. So you can register your archives from a particular year as one collection. The cost to register a collection of works is the same $45 fee ($35 online) as it is to register one work. For example, you can register all of your posts from the year 2007 as one collection. Entitle the Collection, "My Blog Name, 2007 Collection."

4. Moving forward and if your budget allows, register small collections of your post every 90 days. This will ensure that you can go after a recent infringer within the 90 day time period in order to receive guaranteed federal monetary damages. Read about this 90 day rule here.

I hope this information was helpful. As always if you have any further questions please, contact me at lgivens@phillipsgivenslaw.com.

Pros and Cons of Registering your Copyright with the US Copyright Office

2008-09-12T07:14:00.000-07:00

Hello!

Copyright protection is currently a huge issue on the internet. As a blogger, I hear many complaints from fellow bloggers that this site, publication, or individual used their blog material as their own without giving the original author (blogger) credit. This is very frustrating because writing is hard work and nothing is more deplorable than when someone takes credit for something you put your time and effort into. Below I am going to discuss some basic rules and principles of copyright law and then in my next post, I will give you some practical tips to protect your work on the internet.

A copyright owner is one who can prove that the work is an indepedent original creation. A copyright owner has the exclusive right to: 1) make the work, 2) copy the work, 3) sell and distribute copies, 4) make a derivative (book or movie) of the work, 5) perform the work publicly, and 6) display the work publicly. Any person who excercises any of the above 5 rights of the copyright owner, without the owner's permission, is a copyright infringer. 1976 U.S. Copyright Act.

Once an individual creates an independent original creation, that individual automatically owns a copyright. This copyright is obtained without registering the work with the Library of Congress, U.S. Copyright Office and is valid for the life of the copyright owner plus 70 years.U.S. Copyright Act. However, in order to file a copyright infringement action against an infringer and take advantage of certain remedies (resolutions) established by the federal government for those who are victims of copyright infringement, a copyright owner MUST register their original work with the US Copyright Office.

Remedies available to un-registered (US Copyright Office) copyright owners are the following:

1. Go to civil court to obtain an injunction (an order from the court) demanding that the infringer stop the infringement.

2. The copyright owner's actual damages (professional harm, revenue, etc.) from the infringment and any profits made by the infringer. However this has always been very hard to prove. It is well known in copyright practice this is nearly impossible to prove. So most copyright owners simply end up with an injunction and no monetary award. Attorneys fees may also be awarded.

Remedies available for registered works with the US Copyright Office:

1. Statutory Damages. Once you have established copyright infringement you can elect for statutory damages (monetary awards set by federal law that are automatically given to the copyright owner ) which are no less than $750 and up to $30,000. Also the winning party is awarded attorney fees and costs. So you do not have to prove loss revenue, harm, or gain of profits by the infringer. So essentially, if you register your copyright with the US Copyright Office, and you can prove copyright infringement, you are guaranteed to receive some monetary award. If your copyright is not registered, your likliehood of receiving any monetary award is very sketchy.

So it is very good practice to register your copyrighted works as soon as they are created. Why? Guaranteed statutory damages are only available to those who register their original material within 90 days of publication of the work or those who register before the infringement takes place. A copyright application only costs $45 ($35 on line) to file with the US Copyright Office. Plus you can complete the application and file it yourself. Click here for application information. Just make sure you read the instructions for completing the application thoroughly and complete it as instructed. You can hire an attorney to complete it for you, but you will have to pay legal fees and the application fee.

I hope this information was helpful. If you have any further questions or concerns, please email me.

Practical Tips in Fighting and Winning a Domain Name Dispute

2008-09-09T19:53:00.000-07:00

Hello!

Thank you for coming back! In my previous post I gave an example of a common problem many companys and bloggers deal with on a daily basis. Here is the example:

Example: You go ahead and register your domain name, Wethepeople.com. Hey you own it! But then some company comes along and registers Wearethepeople.com. You both are in same business and when you do a google search, their name comes up first. You have built a brand name, reputation, and following with Wethepeople.com. They are diverting traffic from your blog and causing confusion. What can you do?

So what can you do? Below are several cost effective and practical tips in fighting and winning a domain name dispute:

1. Hire an attorney to write a simple letter conveying your right in the domain name and demanding that the offender transer the domain name to you, the rightful owner. You or an attorney can use the service, Whois.net to find out the name of the individual or company that registered the domain name; address and or phone number of the registrant; and the name and address of the hosting company.

From my experience, a letter from an attorney stating your lawful right to the domain name, i.e., you own a valid trademark in the domain name; and evidence that their registration of a similar domain name is diverting traffic from your site, is usually enough to scare the offender into doing what you want.

Hiring an attorney to write a 1-2 page letter will usually take about 1-2 hours. 2 hours of legal fees is peanuts to what you could be losing in lost traffic and sales.

2. If the cease and desist letter from an attorney does not work, you can file a domain name dispute with ICANN. ICANN, the Internet Corporation for Assigned Names and Numbers, is the governing body for internet (domain) names. ICANN has a dispute resolution procedure to resolve domain name disputes. In order to file and be successful at a domain name dispute, you must show the following:

a. The domain name is identical or confusing similar to the trademark the domain name owner has in the domain name;

b. Demonstrate that the offender registered the domain name in bad faith, i.e., they registered the domain name to divert traffic from your site; to cybersquat (sit on the name in order to strong arm you into purchasing it); or the offender registered it to prevent you the rightful owner from doing so.

c. Show that the offender does not have any valid rights or use for the registered domain name. For example, they do not own a business that includes the domain name or they or their company is not generally known by the domain name.

The cost to file a domain name dispute with ICANN is $2600 for a 3 member arbitration panel and $1300 for a single member arbitration panel.

Also, remember to register your trademark which contains your domain name before filing a dispute with ICANN. Registering a trademark with the USPTO can be costly but is so worth the cost and effort. However, registering your trademark with your state is relatively inexpensive. Trademark registration is good evidence that you legitimately own the trademark in question. It definitely helps when presenting a case before ICANN.

I hope this article answered any questions you may have had about domain name disputes. If you have any further questions, please contact me at lgivens@phillipsgivenslaw.com.

Our next topic will discuss how to properly copyright written material. This article is especially for you bloggers!

What every blogger should know about trademark law before and while blogging

2008-08-27T12:22:00.000-07:00

Hello Friends!

I felt the need to write this article because one, I am a blogger. Also check me out at www.luxetips.com. And two, I have had discussions with so many bloggers about whether they owned a trademark and how to protect the good name and reputation they have built through blogging. I will give you an example of some of the pitfalls bloggers have encountered.

Example 1: You register a blog with blogger and your blog name is Widgets.blogspot.com. You build up a reputation and readership and you decide you want to own your own domain name. You contact a hosting company and try to register Widgets.com, but low and behold, someone else already owns the domain name. You contact the owner of the domain name and they will gladly let you have it.....for the low low price of $10,000.00! Yikes.

Example 2: You go ahead and register your domain name, Wethepeople.com. Hey you own it! But then some company comes along and registers Wearethepeople.com. You both are in same business and when you do a google search, their name comes up first. You have built a brand name, reputation, and following with Wethepeople.com. They are diverting traffic from your blog and causing confusion. What can you do?

So fellow blogger and potential bloggers follow these simple rules to ensure your blog, your brand and trademark, is protected and avoid becoming prey to infringers and cybersquatters.

1. A blog name is a trademark. One misconception many bloggers have is that they do not think they own a trademark because they are not organized as a company. If you a blogger and publish daily, weekly, or monthly articles on your blog, you are in the business of publishing. Also if you receive advertising revenue, or in-kind gifts, products, etc to review on your blog, you are actively engage in commerce - the ability to conduct business transactions. A trademark is defined as words, symbols, phrases or designs which the public associates with a single source of goods or services. By law you establish trademark rights by actual use of the mark in commerce or filing an intent to use the mark with the United States Patent and Trademark Office, USPTO.

2. Do a preliminary search for your blog name. Make sure the blog name you choose is not identical or too similar to a brand name, company, or other blog. You can accomplish this by doing a Google Search. Now Google may not capture every identicial or similar name, (only a comprehensive trademark search will do this) but those that are registered with government agencies and are on the web will be found. The last thing you want to receive is a cease and desist letter from me, a trademark lawyer, stating shut down your blog or else!

3. Register your domain name. A MUST MUST MUST! You must own your blog's name. Before starting a blog, you have to own your name. I can't repeat it enough. Now there are tons of services like blogger, typepad, and wordpress that will let you create a blog name through their service but this DOES NOT mean you own the domain name. You can choose a domain registrar like VL Hosting to register your name for a nominal fee. Sometimes fees are as low as $10.00 per year. Why do this? Because there are mean lean sharks out in the blogosphere called cybersquatters. They literally surf the net for brand names and company names that do not have registered domain names and register them so they can hold them (cybersquat them) until you come crying and begging for them to release it. They will but for an astronomical fee.

4. Register your blog's name, phrases, and design as a trademark. It is just good practice and planning to register your blog as a trademark. You never know how successful you and your blog may be. Without registering your trademark, you do own a lawful common law trademark right (a trademark right without federal or state trademark registration). However to bring a trademark infringement action against an infringer you must register the trademark with the state where you are located or the USPTO. Also registering your blog as a trademark is good evidence that you have a legitimate interest in your blog's domain name, if you have to file a domain name dispute against someone who purposely registers a domain name similar to yours in order to steal your traffic. I do understand that obtaining federal trademark registration can be expensive, but it is relatively inexpensive to register with your state. Depending on the state where you are located, fees can be as low as $15.00. But it is smart to get some legal advice. A poorly drafted trademark application will be rejected.

If you are a blogger already engaged in publishing your blog and have not completed any of these steps, I would recommend that you complete these steps as soon as possible! Believe me accomplishing these simple tasks will save you headaches and potentially money.

I hope this article was helpful. If you would like further information, please contact me at lgivens@phillipsgivenslaw.com. Please stay tuned for my next topic: How to file and win a domain name dispute.

How to Legally Protect Your Intellectual Property

2008-08-25T12:45:00.000-07:00

Hello again friends!

I hope your summer has been awesome! Our next topic is how to legally protect your intellectual property (IP). There are different steps to take to protect your IP rights which is based on the type of IP you own. Check out the necessary actions needed to ensure your IP is adequately protected below.

1. Patents. First hire a patent attorney. A patent attorney is an attorney who has a science or engineering background and is trained to effectively evaluate the patentability of inventions. A patent attorney can determine whether your invention is unique; assist you in developing a prototype (ensuring the prototype is legally sound) for submission to the United States Patent and Trademark Office (USPTO), and prepare your patent application to the USPTO. A patent attoreny is also trained to evaluate your invention and application to determine if the invention infringes on any other government issued patent.

2. Trademarks. First hire a trademark attorney. A trademark attorney is trained to determine if your trademark (identifying marks, logos, names of your company) infringes on the priority trademark of another owner or if another trademark infringes on your priority right. A trademark attorney accomplishes this by doing a comprehensive trademark search. This search usually includes a search of the USPTO database, all state registered trademarks, DBAs (doing business as), business names, internet, domain names, and common law trademark rights. The trademark attorney then evaluates the results of the search and uses common law and federal trademark law to determine competing rights and priority rights. If the trademark attorney determines your mark is unique, he or she will recommend that you move forward with federal and state trademark registration. If the trademark attorney determines that you have a priority or competing rights with another company, your trademark attorney may recommend moving forward with a trademark infringement action against the company or reorganizing your company or business and choosing a different mark.

3. Copyrights. Hire a copyright attorney. A copyright attorney will assist you in registering your copyright with the Library of Congress, Copyright Office. The Copyright office will review their database to determine if there are any competing rights. If not, the copyright will be isssued. A copyright attorney can also initiate a copyright infringement action against an infringer (someone who is using your original work of authorship as their own).

Remember to always hire an attorney when seeking protection for your IP rights. An IP attorney can save you a lot of money and grief! I hope you found this article helpful. Our next topic is "What every blogger should know about trademark law before and while blogging"

Intellectual Property Rights: To Protect and Not Infringe:

2008-07-28T22:38:00.000-07:00

Welcome Back!

Our next topic is why it is important to protect your intellectual property rights. Check out the top 2 reasons below:

1. Most importantly, a competing business may decide to use your intellectual property (names, logos, inventions, written works, etc.) as their own due to the fact your business has built goodwill or has developed a strong brand. This scenario can result in lost customers, sales, and business.

2. Second, if you do not protect your intellectual property rights, your business can miss out on the opportunity to earn royalty income from licensing of your intellectual property.

In addition, it is important that you or your company are not committing some of the offenses above. So before bringing intellectual property to the market, do a search (you can use Google as a preliminary search, but you should hire an attorney to do a search) to determine if another business or individual has competing rights against your intellectual property. If you introduce intellectual property to the market that infringes on another's rights, your company's growth may be restricted or legal action can be taken against your company.

Next topic: How to protect your particular intellectual property

Intellectual Property Law 101

2008-07-24T07:54:00.000-07:00

Hi Readers!

Glad you are back! This post will explain what intellectual property is and will define each type of intellectual property. If after reading this post, you have any further questions, please contact me at lgivens@phillipsgivenslaw.com.

1. Intellectual Property are creations of the mind: They include: inventions; literary or artistic works; symbols, names, and images used in commerce.

2. There are three basic intellectual property rights: patents, trademarks, and copyrights.

3. A patent is a property right granted by the US Government to an inventor to exclude others from making, using, offering for sale, or selling the invention throughout the US or importing the invention into the US. For example, the formula created for Coca-Cola is an invention. Also if you create a new product this is an invention.

4. A trademark is an intellectual property right that protects words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of goods. For Example: The logo for Coca-Cola which appears in white cursive lettering is the trademark for Coca-Cola, the company. When we see the logo for Coca-Cola we automatically associate it with Coke, the drink we consume.

5. A copyright is an intellectual property right that protects works of authorship such as writing, music, and works of art that have been tangibly expressed. For Example: A blogger's original writing is a copyright. Paintings are copyrights. Music are copyrights.

So I pose this questions? What type of intellectual property do you own? In my next post, we will discuss the importance of protecting your intellectual property rights and taking the necessary steps to NOT infringe on someone's legitimate intellectual property.

This blog is for everyone!

2008-07-20T20:55:00.000-07:00

Hello!

I started this blog to be an informational tool for people who need basic information about intellectual property law. This include individuals, bloggers, small business owners, mid-sized business owners, etc. But first things first.....Here is my Disclaimer: The information provided in this post and on this blog does not constitute an offer of representation or create an attorney-client relationship with my firm, Phillips Givens LLC. The information contained on this blog is designed to apply to general situations and may not reflect current legal developments. You should not act or rely on any information on this blog without seeking the advice of a licensed attorney in your state regarding your specific situation. I assume no liability or responsibility for errors or omissions in the content of this blog. I, Latoicha Givens, is the person who is solely responsible for the contents of this blog. If after reading this blog, you feel compelled to contact me for further information or representation, please email me at lgivens@phillipsgivenslaw.com. Whew! Now that we got that out of the way, lets get to the fun stuff.

What are the basics of intellectual property law? Stay tuned to find out.....