Thursday, January 28, 2010
Anyway, as for your question ... This is a trademark issue and apparently it has been a hot topic in NOLA for the past few weeks. As everybody seems to acknowledge: (1) the NFL has not registered the 'Who Dat,' mark (although several other companies and individuals are trying for registration or claim to own rights) and (2) the NFL/New Orleans Saints owns two fleur de lis design registrations (No. 3135839 and No. 3210572 -- shown above). Our research indicates that the C&D letters that are going out are for efforts that combine the two elements - the phrase and fleur de lis. The basis for this claim would be that consumers are confused into believing that this merchandise is associated with the NFL. Certainly, the NFL would be hard pressed to pursue vendors selling only "Who Dat" merchandise. So far we haven't found any lawsuits and we assume some PR-savvy NOLA trademark attorneys will jump on the issue (as so many others have) should it head to court. In any case, for now it appears as if it's a Mexican standoff.
Must See Dept. As readers know the staff here doesn't care about football but we'll make an exception for the best football movie since Burt Reynolds scored in The Longest Yard.
Posted by The Dear Rich Staff at 1:25 PM
Wednesday, January 27, 2010
Supplemental v. Principal Registers. As you probably know one distinction between the two Registers is that all marks on the Principal Register are considered to be distinctive. Some were born distinctive -- think 'Google' -- while other more descriptive marks-- think 'Lean Cuisine' -- acquired distinctiveness via marketing and continued use (known as "secondary meaning"). When you apply for registration on the Principal Register -- yes, you must apply -- the examiner starts with the presumption that after five years of continued, exclusive use, the mark has acquired secondary meaning and is distinctive. (In legal terms, the five years of use amount to prima facie proof.) However, the Dear Rich Staff notes that despite this presumption, a trademark examiner, if doubtful of your mark's strength, can always require additional proof of distinctiveness. If we were a betting blog, we'd bet that your mark will soon make it on to the Principal Register.
Posted by The Dear Rich Staff at 1:44 PM
Tuesday, January 26, 2010
Your Question. Right. If someone is commissioned to create a contribution for an audiovisual work (a movie, video, etc.) then that would qualify as a work made for hire under copyright law. And if you want to list your company as the "author," you'll have that option under the work made for hire arrangement. Our employer (insert FTC disclaimer here) sells books that include work made for hire agreements. You can probably fashion one yourself as long as you include the following provision:
Contractor agrees that, for consideration that is acknowledged, any works of authorship commissioned pursuant to this Agreement (the "Works") shall be considered works made for hire as that term is defined under U.S. copyright law. To the extent that any such Work created for Company by Contractor is not a work made for hire belonging to Company, Contractor hereby assigns and transfers to Company all rights Contractor has or may acquire to all such Works. Contractor agrees to sign and deliver to Company, either during or subsequent to the term of this Agreement, such other documents as Company considers desirable to evidence the assignment of copyright.You'll also need to add some other stuff like an assurance that the material isn't taken from somewhere else, information about payment and other typical contract stuff. The agreement should be signed before the work is completed.
Do you need to register a patent, copyright or trademark before assigning it? Just to be clear, we're only talking about copyrights. No registration is required for the work made for hire agreement or for an assignment of copyright. A registration isn't necessary for assigning a trademark, either. You would need to have acquired a patent before assigning it since patents (unlike copyrights and trademarks) don't exist until the government says, 'Okay!' You can, however, assign a patent application or the underlying technology rights. That's enough blah blah blah for today, the Dear Rich Staff has got to go get melancholy with Frank.
Monday, January 25, 2010
Form CO. (BTW, we explain the procedure for registering an app in our new mini manual for app developers.) To file an application, you first need to determine which elements of the app are your original authorship. For example, if you only contributed some text and software code, and you licensed the rest, then you would only claim copyright (and seek registration) for what you created. You indicate that information in Form CO -- the all purpose copyright application -- in the section under 'authorship.' Later, in Section 4A of the form you must list the items for which you are not claiming copyright.
Pick Your Category. As with any copyright application you must establish what "category" of work you are registering. Most software programs are registered as 'literary works' - an anachronism dating back to the fact that source code is written in letters and numerals. However, if your app is primarily pictures, choose 'visual arts' work, and if it is a graphics-heavy product like a game, choose 'performing arts' work. Don't worry if your app seems to straddle two categories -- just pick the one that seems best.
Do You Need a Marketing Firm? The Dear Rich Staff doesn't know whether you should use a marketing firm. That's not our bailiwick. In any case it sounds expensive.
Can You Sell it Elsewhere? We don't see anything in the iPhone Developer Agreement that prohibits your porting from one mobile OS to another.
Will We Send You the Answer? No, we won't send you the answer so if you were hoping for an email response, it's going to get very Godot-ish waiting by your inbox. Sometimes, if we're not overwhelmed with managing our Netflix queue, scrutinizing credit card statements (Did we Skype to Czechoslovakia?), and monitoring our TransLink card, we do write back to people
Posted by The Dear Rich Staff at 1:46 PM
Friday, January 22, 2010
Dear Rich: I sell my apps exclusively through the Apple App Store and I'm planning to branch out and sell another program as a downloadable for Mac. Do I have to get a seller's permit and collect sales tax? You won't need a seller's permit for the App Store; you may need it for downloadable software. Read on (and check out our new app developer's guide.)
What's a Seller's Permit? A seller's permit, also called a 'resale permit,' authorizes you to make sales and collect sales tax from customers within your state. Since Apple is selling the apps to consumers, they would be responsible for collecting the sales tax if it were due. It's a different story if you are (a) selling downloads directly, (b) selling your apps on media devices such as CDs, or (c) you are selling application services.
State Sales Tax Rules. In most states that collect sales tax, it's for tangible goods--items you can touch, such as jewelry, CDs, clothing, or food. Downloadable software and media has traditionally been off limits for sales tax. However, that may be changing as states have begun to realize the large tax revenues that are being lost. Reportedly, Alabama, Arizona, Colorado, Hawaii, Idaho, Indiana, Kentucky, Louisiana, Maine, New Mexico, South Dakota, Texas, Utah, Washington, and West Virginia now tax media downloads. Some of these states, like Kentucky and Washington, distinguish amongst downloaded materials - for example, taxing downloaded movies, music and eBooks, but not taxing downloadable software. The distinction apparently hinges on whether the download is traditional media or whether it's designed to perform a task--for example to clean up your registry.
California Rules. One example is the California's sales tax rules (Regulation 1502) that state that:
"The sale or lease of a prewritten program is not a taxable transaction if the program is transferred by remote telecommunications from the seller's place of business, to or through the purchaser's computer and the purchaser does not obtain possession of any tangible personal property, such as storage media, in the transaction."
In other words, without a physical object being transferred, no tax is due. On the other hand, if you convert your apps for sale as disk-based software, or you sell a guidebook to accompany your apps, that direct sale would be subject to sales tax because it involves physical goods.
And if that weren't enough ... Also, a few states also tax services, so if you render application services you may have to collect tax on your invoices. (For example, all services are subject to sales tax in Hawaii, New Mexico and South Dakota.) The bottom line is that every state's list of exempt transactions is different, and states have different rules about when and how you must submit the tax. If you're caught doing business without a permit, you could be subject to a number of penalties--such as having to pay the sales tax you should have collected from your customers, along with a fine. You can find information on seller's permit requirements at the website of your state's tax agency. For a list of links to these agencies, go to the IRS website, choose "Business," then "Small Business/Self-Employed," then "State Links." Or, choose your state's link at the list of tax agencies provided at the website of the federal Small Business Administration. By the way, if you do have to pay sales taxes, there are, of course, several helpful iPhone apps for calculating it.
Whew ... was that long enough? The Dear Rich Staff is exhausted!
Oh ... the movie. It's our favorite movie about a tax auditor?
Posted by The Dear Rich Staff at 1:49 PM
Thursday, January 21, 2010
Dear Rich: My wife and I create applications together. Do we have to file a partnership tax return or can we file as a sole proprietorship? Whoa! The Dear Rich Staff usually doesn't do tax questions but since this is AppDev week here goes ... (and check out our new app developer's guide.)
One Approach. According to this IRS directive, spouses that co-own and run a business in a community property state (Arizona, California, Idaho, Nevada, New Mexico, Texas, Washington, and Wisconsin) can operate as a sole proprietorship (or "disregarded entity") and report their business income as part of their joint tax return (which has several obvious benefits) or they can operate as a partnership and file a K-1 partnership return. Couples in non-community property states, see below.
And here's another IRS bulletin. According to this IRS directive, if spouses co-own and run a business in a non-community property state, they must operate as a partnership and file a K-1 partnership return (unless they choose to be treated as a "qualified joint venture.") In all states, if one spouse owns the business and the other works for it, the business is a sole proprietorship, and the owner will have to declare the spouse as an employee or independent contractor. If the spouse occasionally volunteers to help the business without pay, you won't have to declare the spouse as an employee or independent contractor.
Spousal Inspiration. By the way, did you know one of the biggest software companies was founded by husband and wife nerds. Some other couples we love who created stuff together -- Roy Rogers & Dale Evans, John Cassavetes & Gena Rowlands, Louis Prima & Keely Smith, Ashford & Simpson, Charles & Ray Eames, and Masters & Johnson.
Posted by The Dear Rich Staff at 1:52 PM
Wednesday, January 20, 2010
Apps We Love Dept. The Dear Rich Staff hasn't located any incorrect information in our favorite mass transit app -- iBart -- which lets us know whether we should sprint from the Ferry Building to Embarcadero station. Well ... it used to let us know. One of our New Year's Resolutions is to never again (no,no) run for a bus (or Bay Area Rapid Transit).
Posted by The Dear Rich Staff at 1:54 PM
Tuesday, January 19, 2010
Why Skee Ball? The Dear Rich Staff hasn't bought this app yet, but we look at it longingly. What's holding us back is the disconnect between the memory of skee ball on the Long Beach boardwalk and the idea that we're experiencing something similar flicking our finger. We'll figure it out.
Posted by The Dear Rich Staff at 1:56 PM
Friday, January 15, 2010
Wednesday, January 13, 2010
You may wonder -- why would anyone want to avoid being photographed at a concert? According to the Dear Rich Staff's research, some reasons why an audience member may want to avoid being photographed at a concert include: (1) the audience member told his boss he couldn't work the night shift because he was sick and then was seen screaming in support of Black Sabbath, (2) the audience member told her boyfriend she was busy that night and then was observed making out with another guy at the Taylor Swift show, or (3) a teenage audience member told his Mom he was attending a church special but instead attended a Pantera-Megadeth double bill.
Tuesday, January 12, 2010
Some celebrities that the Dear Rich Staff has seen while eating in restaurants: James Mason (yes, we're old), Charles Nelson Reilly, Patti Smith, and Tom Cruise (when he was still married to Mimi Rogers -- although she wasn't eating with him which is too bad since we're big Mimi Rogers fans).
Posted by The Dear Rich Staff at 1:58 PM
Monday, January 11, 2010
Bonus Question: Can 'Soup Nazi' be registered? Some readers may wonder if the fictional source of the phrase -- the infamous 'Soup Nazi,' can be registered as trademark. The answer is no. The USPTO won't register marks with the word 'Nazi' unless it is a historical reference that requires the term such as "VICTIMS OF NAZI PERSECUTION RESTITUTION TRUST." Otherwise, "NAZI" marks are rejected under Section 2(a) as being immoral or scandalous.
Disclaimer: The Dear Rich Staff is flattered that a law firm is asking us for advice, however we must provide our special law firm disclaimer: (1) we don't carry malpractice insurance (and we hope you do), (2) answering your question doesn't create an attorney-attorney relationship, and (3) nothing we tell you is confidential (even if we say it is).
Posted by The Dear Rich Staff at 1:59 PM
Thursday, January 7, 2010
What about attribution? The Dear Rich Staff could go either way on this one so you can make the call. For many people attribution is a validating experience; others may prefer anonymity. Also, we probably don't need to say it -- but we can't help ourselves since we're in the legal business -- you probably want to avoid defamatory or privacy-invading one-liners. In the future, you can consider adding a "permission statement" to your mailing list terms and conditions, indicating that some statements may be included in the annual photo book.
Posted by The Dear Rich Staff at 2:00 PM
Tuesday, January 5, 2010
And don't forget the confusing 'one-year' rule. If the invention was offered for sale more than one year before your ex-partner's patent application was filed, then the patent should not have been issued and it doesn't matter who is listed as inventor (unless your partner is claiming priority on the basis of the provisional patent application and filed within one year of that filing date). If the patent should not have been issued and the USPTO made an error, the Dear Rich Staff believes you should talk to a patent attorney about starting a proceeding at the USPTO to invalidate the patent.