Thursday, February 28, 2008

My boyfriend stole my trademark!

Dear Rich: I have a question. My boyfriend has a company that sells tea. I thought up a name for one of the teas -- Serendipi-Tea -- and he used it without asking me. He even filed a trademark application without naming me! Doesn't he have to get my permission? I'm so glad you asked. No, your boyfriend does not need to ask your permission to use the name you created for a trademark (although it might have been polite). Trademark rights are granted to the first person to use the term in commerce, not the person who thinks up the name. Hence the legal motto: No trade -- no trademark. Your clever wordplay is also not protected under copyright law because copyright does not protect names and short phrases. You may wonder how those high-priced naming gurus get paid when they think up names for big companies -- they have written contracts that require payment for the work. So unless your boyfriend had an agreement with you, you're not entitled to anything. Perhaps the deeper and more meaningful question is whether intellectual property issues will drive a permanent wedge between you and your boyfriend. I would like to think not. Remember, your boyfriend only acquires rights to use the term in regards to tea. You're always free to use the name as the title of your tell-all memoir.

Friday, February 22, 2008

Dad, what's a cookie? Complying with COPPA

Dear Rich: I have a question. I'm in charge of a website for our local elementary school. We have a program where students can upload their drawings. Someone told me that I have to get permission from the parents or else I am in violation of the law. Is that true? I'm so glad you asked. The law that you are probably referring to is the Children's Online Privacy Protection Act (COPPA). You need to be concerned about COPPA if your website is directed at children (under 13 years of age) and it collects information "that would allow someone to identify or contact the child," -- for example, names, addresses, phone numbers, email addresses, and similar information. COPPA also applies if you're using cookies (no, not the chewable kind) to track the child's activity. So, in the case of your website, you would want to be sure that the drawings that are uploaded do not contain personally identifiable information -- for example, the child's address is written on the drawing of a house, a license plate is written on a drawing of a car, or names are used to identify family members . If you are collecting personally identifiable information, you'll need to comply with the Act's requirement for parental permission. What's the biggest fine so far for violation of COPPA? $1 million.

Patent exhaustion?

Dear Rich: I have a question. Yesterday there was a story in the news about the Supreme Court and 'patent exhaustion.' What is patent exhaustion? Patent exhaustion is a legal doctrine that basically says that once a patent owner sells a product, the patent owner cannot seek further patent payments for that particular product. So, for example, if you buy a patented lawn mower, the patent owner cannot demand further royalties if you resell the mower or if you make your living mowing lawns. The principle is also known as the "first sale doctrine," a term that also applies in copyright law for a similiar principle. For example, if you buy a copyrighted item such as book or DVD, you are free to resell it without paying the copyright owner. Wait, does that rule apply for copyrighted software? Hmm... that depends on where you live. In some states, courts have held that software isn't sold; it's licensed and can only be 'resold' under the terms of an end-user license agreement. But is software protected under copyright or patent law? Actually, it can be protected under both.

Thursday, February 21, 2008

A picture is worth a thousand bucks: Web templates and stock photo use

Dear Rich: I purchased a web hosting package a few years back that included free website templates. When I created a different website, I used one of the templates, including the top photo. I just got a letter from a major stock photo company asking for $1,300 and to pay for a license or remove the image. I immediately removed the image, but I can't afford to pay $1,300. I have all the documentation about the free templates. Do I have to pay $1,300 for something I thought was free? $1,300 for a website image? Wow! Here at Dear Rich headquarters we pay about $1 for low res images (like the one on the left). In any case, you did the correct thing by immediately removing the image (and keeping the documentation). Hopefully, that demonstrates your good will.
There are a few things that may be going on here. Your original web hosting package may have included a permission to use the photo but that permission did not extend to other web hosting services. Or, perhaps the first web hosting arrangement never really got the proper permission, so wherever you use it, you'll have a problem. The photo may have some digital watermarking embedded so that the stock photo company can trace all such uses and catch those who use it without permission. If you're using it under the terms of the original webhosting agreement, you need to look to your agreement and your webhosts for resolution. If not, the stock photo company likely has a legitimate claim for infringement.
How far will they pursue it? It's possible they could file a lawsuit, but that doesn't seem practical or likely -- they wouldn't recover the costs of the litigation. Odds are good that if you write and explain your mistake -- you mistakenly thought you had a license to use it -- the whole thing will go away. They may send some more threatening emails, but the chances of anything going beyond that are unlikely. If I'm wrong (hard to believe, but it happens), let me know and maybe we can trigger a Streisand effect.

Wednesday, February 13, 2008

Holy touchdown: The difference between churches and sports bars

Dear Rich: I have a question. Is it true that our church can't show sporting events like football games on our big screen TV? I'm so glad you asked. Rather than give you a lot of legal backstory about non-musical works and copyright legislation (you can read about that stuff in this Slate article), the bottom line is that you'll likely run afoul of the law if your church uses a TV screen larger than 55 inches. If you do "Drive 55" you'll need a public performance license. Of course, if your flock doesn't mind mixing with infidels, you can move services down the street to a tavern with the appropriate licenses. Or you could just wear your fan gear to church and schedule services an hour later. I wish I had time to go into the relationship between contact sports and salvation -- remember the first time an NFL player kneeled in prayer in the end zone? -- but let's save that discussion for our Sunday blog. P.S. Click here for information on how to measure your TV screen size.

Thursday, February 7, 2008

Can I look now? Editing films for sexual content

Dear Rich: I have a question. I love movies but I hate all the sexy stuff -- same with my friends. We have a movie club and before I show a movie, I make a copy in which I cut out all that stuff. Is that illegal?  You are likely violating copyright laws. Of course, whether anyone will find out -- another good reason not to ask Dear Rich questions -- is a matter of conjecture. But should the owners of the films learn of your amateur editing, they could attempt to prevent your handiwork. At least, that's our reading of a 2006 federal court decision. In that case, Marty Scorsese, Stephen Soderbergh, and Sydney Pollak (among other class-A directors) successfully sued Clean Flix, a company that edited films and then re-rented them. Even though the company purchased a separate copy so that studios didn't lose any revenue in the process, a judge ruled that this practice was illegal. Currently, some companies are performing an end-run around this precedent by having a third party edit the copies. (Keep in mind, alas, that some companies who claim to rent "clean" movies, might not be so clean.) It is not illegal, however, under a recent law, to buy and sell a DVD player that filters the movie for you. In other words, you put your movie in the player and voila! No embarrassing shots of Jessica Alba! BTW, in addition to the legal issues mentioned, the showing of films for more than a small gathering of family and friends requires a public performance license. Anyway, if you can't afford to buy a filtering DVD player, may we suggest you distribute these during those unpleasant moments?

Monday, February 4, 2008

When domian names are mispeled: The rules of typosquatting

Dear Rich: I have a question. I've been buying domain names that are common misspellings of well-known online retailers and then setting up websites with Google Ads. So when someone types in the wrong spelling, they arrive at my site. Then, they can then click through to the correct company's site using a Google Ad. I got a letter from one of the companies telling me to take down my site and give up my domain name. Why? Sure, I make some money, but aren't I doing a good thing by leading people who misspell domain names to the right company? I can't tell you whether what you're doing is a 'good' thing or a 'bad' thing -- let's leave that up to the Dalai Lama -- but I can tell you that what you're doing is called typosquatting.

A typosquatter purchases misspellings of domain name in the hopes of catching and exploiting traffic intended for another website. (It's been a lucrative source of income for many years.) Typosquatting is a variation of cybersquatting and if the company whose name you're exploiting takes you to arbitration under international domain name arbitration rules and proves you're acting in bad faith, you'll have to give up the domain name. If the company takes you to court in the U.S. instead, you'll have to give up the name, and perhaps pay damages. Some companies guard against this practice by purchasing the misspellings, such as (sic). Others have to chase down violators and either buy the name back from the squatter or go after them with lawyers -- for example, Land's End went after a typosquatter who purchased domain names such as and and then demanded money for referring customers under the Land's End affiliate program. Nice scheme. (Land's End prevailed in the early stages of litigation, but so far, the company hasn't managed to acquire the domains.) Another unfortunate problem -- some unscrupulous typosquatters trigger malware. Arrivederci!

Friday, February 1, 2008

And don't copy this screen, either! (Are screenshots copyright infringement?)

Dear Rich: I have a question. I'll be using a lot of screenshots from different websites in my book. Do I need to get permission for that or is it a fair use? I'm so glad you asked. Conventional wisdom (and the Electronic Frontier Foundation) says that an unauthorized screenshot is an infringement. That said, the use of screenshots rarely triggers a complaint because either: (1) the copyright owners don't want to complain about something that promotes their company -- for example, an online tutorial about using Microsoft Word, or a book about starting an eBay business, or (2) the copyright owners believe the use is likely to be excused as a fair use. Although issues don't often arise, occasionally copyright owners do complain -- for example, Apple complained about pre-release screenshots of the iPhone. Some sites place limits on your use of screenshots in their user agreements.

Keep in mind that if the copyright owners do complain, the results can be unfortunate--it may disrupt publication of a book or other product. Perhaps a more important issue to consider is whether what you are doing is likely to anger or annoy the copyright owner. If it is, proceed with caution and review your use of the company's trademarks so that your use doesn't imply an association or endorsement.

P.S. In the future, sites will be able to block screenshots.