Tuesday, January 29, 2008

Don't copy this (and don't copy my cease and desist letter, either)!

Dear Rich: I have a question. I got a cease and desist letter from a law firm and I'd like to post it on my website so the world can see what a jerk this guy is. Is that legal? I'm so glad you asked. Publishing cease and desist letters on the Internet is not uncommon and there are even searchable C&D databases (in case you need help writing one). Lawyers rarely object to the practice either because they don't want more attention, or because they're aware that they're on tenuous first amendment or fair use grounds. However, some lawyers throw caution to the wind and plunge ahead with attempts to stop republication of their C&D letters. (You can read this lawyer's original cease and desist letter (.pdf) and a well-reasoned response to it by Public Citizen (.pdf).) If faced with an overly assertive law firm, keep the following in mind:

1. Getting a certificate of copyright registration for a cease and desist letter is not very hard. The hurdles for federal registration are fairly low and a cease and desist letter may meet those standards.

2. Enforcing copyright in C&D letters is difficult because of the merger doctrine. Copyright law will not protect a work if there are a limited number of ways of expressing the underlying idea. (And how many ways are there to say cease and desist?)

3. Reproduction of letters may be permitted under fair use principles. Infringing activity is often permitted for the sake of commentary and/or criticism.

Anyway, I certainly hope nobody puts a chill on republication of C&D letters. They are a great source of amusement and sometimes a matter of national security. And, for lawyers like me, it's often the only way to get published.

Monday, January 28, 2008

If you are not the intended recipient of this blog: email disclaimers...

Dear Rich: I have a question. I get a lot of emails that have disclaimers at the end like "This email and any files transmitted with it are confidential, etc. ... " Should my business include one of those disclaimers to protect our trade secrets? I'm so glad you asked. Feel free to use disclaimers but don't count on them to protect anything. Although there are no court cases to point to, the general consensus is that email disclaimers don't create a legally binding arrangement because the other party never agreed to the terms. (That's true even if you are a big megacorp like Time, Inc.) If something confidential is accidentally transmitted, a court will be more concerned with the contents of the email, the choice of recipient (that is, your existing relationship with the recipient), and the circumstances of the transmission. If you're concerned about protecting business trade secrets, avoid sending them in emails and take the time to create a basic trade secret protection program. Finally, the common placement of the disclaimer (at the end of the email) works against enforcement since disclaimers must be prominent (at the top of the email) to have any effect at all.

So why bother including one? It's mostly a matter of wishful thinking--that is, making a statement that an email is confidential may trick the recipient into believing it is confidential. (Another reason to use them is in the hope that yours will enter the Stupid Email Disclaimer hall of fame.)

Thursday, January 24, 2008

Do Not Pass Go: How to create non-infringing board games

Dear Rich: I have a question. I would like to create an online game that is similar to a popular board game. How I can do this without getting sued? I'm so glad you asked. Initially, I must remind you that there is no sue-free solution to anything. Anyone who can afford a few hours of a lawyer's time and some filing fees can sue you. However, what I think you're asking is: How do I lower the odds of being sued and reinforce the chances of victory in that lawsuit?

Start with the principle that the underlying ideas for games are usually not protected. For example, many companies have created online games based on hangman, but you'll run into a problem if your hangman game is expressed in the same way as Wheel of Fortune. To lower the odds of becoming a defendant in a lawsuit, do the following:

Don't use a name that's similar to a popular game. Stepping on the trademark of a game (particularly a famous one) is a surefire way to get dragged into court (although, occasionally the results are suprising).

Avoid copying the appearance of the packaging. Game companies feel the same way about their trade dress as they do about their trademarks (Just ask the makers of Sexual Pursuit).

Don't copy text or artwork from the game. In that case you'll be stepping on someone's copyright and unless your use is excusable under fair use or similar principles, judges may not be sympathetic. However, the copyright in some board games, such as Scrabble, may be 'thin' and harder to protect.

Check to see whether the game is patented. Yes, some games are protected under utility patent and design patent laws. Patent infringement lawsuits are a real drag, so check it out before your game goes live.

Move to a country where it's unlikely the game company will want to sue you. Unfortunately, in today's global village, that's becoming harder and harder to do.

Sunday, January 20, 2008

Patent on golf club?

Dear Rich:  How do I get a patent on a golf club? I'm so glad you asked, because coincidentally I was just reading about a design patent for a one-fingered golf glove. As you may know, there are two types of patents associated with golf products: design patents which give the inventor rights over design; and utility patents which gives the inventor rights over the functioning invention. You can learn how to get both by reviewing the patent information at Nolo. Or if you're just interested in golf patents, check out Dave Dawsey's Golf Patents website. Dave (the "Golf Lawyer with a Grip on the Industry") tees off daily with fresh IP golf news.

Wednesday, January 2, 2008

I Vant to Eat Your Cereal

Dear Rich: Can a vampire function as a trademark for children's cereal? General Mills' advertising agency thought so. It was 27 years ago this week that GM acquired the federal trademark registration for Count Chocula, the breakfast cereal that formed part of the company's Monster Cereal line including Fruit Brute, Yummy Mummy, Boo Berry, and Franken Berry. Only Franken Berry and the Count have survived the retail wars, and as some historians have noted, General Mills mysteriously refuses to acknowledge that Yummy Mummy was part of the Monster line - go figure.
What was different about the monster line? The Count and his buddies signaled a minor change in the intellectual property approach of breakfast food makers - moving from the historically positive nutrition claims and brand-positive marks (think Wheaties -- Breakfast of Champions) to bad-boy branding and an openly 'who cares' attitude about nutrition.
Can a vampire-derived sugar-laden cereal survive in 2007? Of course, the Count has had to adapt. He began to take on a healthy glow proclaiming he was fortified with eight essential vitamins. And in 2007, the back of the packaging -- in what is referred to by nutritionists as 'wheat-washing' -- included a scientific-looking questionnaire about diet and health while the front of the box proclaimed that Count Chocula was 'Made with Whole Grain'. (I guess 'Made with Whole Marshmallows' wasn't going to fly.)