Monday, October 31, 2011

Insurance for Patent Enforcement?

Dear Rich: I am patent pending and am worried about what will happen if my patent is granted and a big company rips me off. I can't afford to sue a big company. Will lawyers take my case for a cut of the profits? What do the little guys do? Getting into a lawsuit sounds pretty scary, probably a lot scarier than our neighbor's excellent Franken-pumpkin which appeared yesterday afternoon. It's a beautiful job and when we asked him whether he bought that shaped pumpkin because it looked like Frankenstein, he replied that no, when he got it home and looked at it for a while, the pumpkin said "Frankenstein" to him. Now that's how creative people channel inspiration. It's a little bit like the sculptor who, when asked how to scultpt an elephant, said, "Take a big block of marble and chip away everything that doesn’t look like an elephant."
Right, you had a question. Yes, an independent inventor with limited funds is in a bind when it comes to patent enforcement. Even if the funds can be found to fight a big company, the battle can drag on for years and cause much personal turmoil. Like patent expert David Pressman puts it, the utility patent is basically a hunting license. Obtaining the license without the necessary funds to use it against others makes it a useless piece of paper. There are three common solutions for this issue:

  • align yourself with a big company. A big company usually will -- as part of your licensing agreement --  chase down (or possibly scare off) thieves and competitors. The downside is that you may end up earning less from your invention if someone licenses it (versus the profit margin if you manufacture it). On the other hand, often it's just the opposite and the right licensee can earn you substantial profits and save you a lot of hassle.
  • consider offensive insurance. Yes, there is such a thing as offensive patent insurance and you can read more about its pros and cons.
  • find a contingency litigator. Some patent attorneys take cases on contingency. This is often difficult and can be expensive (giving up a third or more of the recovery). Learn more here.

Friday, October 28, 2011

Can Missionaries Protect Their Initials?

Dear Rich: I am the founder of a lay missionary organization. We use the initials SMM that shows our affiliation and membership to the Society of Missionaries of Mercy. I have been told by the Society of Montfort Missionaries that they claim that SMM can only be used by their membership.  Please advise me. Should we change our initials or inform them that you can't restrict the use of initials? As we discussed in a previous post, asserting trademark rights over initials is possible but often difficult. We've also discussed protecting names of religious organizations. We note that even if the Montfort group did chase your organization into a U.S. court, they would need to prove that U.S. consumers  are confused by the mutual uses -- something that might be difficult because the other Montfort group appears to be based in India (and perhaps associated with this Scots group). So, in summary, we think there are some hurdles if the  Montfort group wants to obtain a U.S. court order to stop you.
From the legal to the cosmological. Resolution of your question goes beyond legal issues and into trade customs and religious hierarchy. Catholic religious organizations appear to rely on their initials to distinguish themselves from others. This chart, for example, lists 800 such abbreviations. We cannot say whether a change of initials is required to serve purposes of this Catholic exonumia but we hope this matter can be resolved on the basis of religious custom (not U.S. trademark law) and, of course, in the spirit of brotherhood upon which these organizations are founded.

Thursday, October 27, 2011

Can Scouting Group Claim Color Scheme?

Dear Rich: Frontier Girls is a scouting style program founded in 2007 for girls. It has come to my attention that the uniforms I use in Frontier Girls are the same color scheme as a single level of American Heritage Girls, another scouting style program founded 1995. American Heritage Girls has a total of five levels and at one level the uniform is navy bottoms, white shirts, and red vests. It is similar to Frontier Girls except American Heritage Girls also has a navy scarf with their uniform. The badges, awards, and layout of the vests are completely different as is the shape of the vest. [Compare them: American Heritage Girls Tenderheart (scroll down) vs. Frontier Girls.Their other four levels of uniforms look nothing like Frontier Girls. I have been told that I need to change my uniform, but do not feel that anyone should have the right to trademark the colors red, white and blue, as these stand for our country and any patriotic groups should have a right to use them. Are you being told to change your uniforms, solely on the basis of the color scheme, or are you being told to change on the basis of the overall appearance -- the colors, shape, and design (or what we call trade dress)? There's a difference, as we explain below. In general, the Dear Rich Staff thinks that American Heritage Girls has some challenges ahead if it drags you into court.
  • Claiming Color schemes as a trademark is tough.  In order for American Heritage Girls (AHG) to prove that Frontier Girls (FG) infringed solely on the basis of the color scheme, AHG would have to prove that their use preceded FG, that consumers of scouting-style services associate AHG with red, white and blue, that the colors are not functional, and that FG's color scheme is substantially similar to AHG such that consumers are confused when seeing a FG uniform and believe it is AHG. Proving these claims requires substantial evidence -- for example, consumer surveys and expert testimony. We think it will be hard for AHG to claim the color scheme as protectible.
  • Trade dress is also tough to protect. AHG may seek to stop FG based on their overall trade dress -- the total appearance of their uniforms (not just the colors). For example companies such as Re/Max and Bank of America go after red, white and blue competitors but usually only if the overall appearance of the signs or marks is similar (not simply the colors). AHG features at least five different uniforms in their program. So it may be a challenge for them to prove that consumers associate any one of the five as a specific source identifier. In addition, as you point out, AHG's blue "neckerchief" distinguishes the AHG uniform, somewhat, from the FG uniform. 
  • Bad publicity. It's possible that the potential headlines -- "Scouting Group Claims Exclusive Rights to Red, White and Blue" -- might dissuade AHG from seriously pursuing the claim.
  • Dilution, anyone? In addition to claiming infringement, AHG can make a dilution claim regarding the colors if it can prove that red, white and blue comprise a famous mark for AHG and that the colors are not functional. We think that's a tough claim to make as well.
For your FYI Dept. AHG has not registered their trade dress or color scheme. They have only registered their name (claimed for "Educational services, namely, conducting workshops, courses of instruction and day and overnight retreats for girls and young women that support traditional values of God, family and country to promote leadership, social, physical and intellectual development.") And they've been using that mark since 1985. That makes them trademark newbies when compared to the Boy Scouts.

Wednesday, October 26, 2011

Using Text of Operas ... in Paintings

Dear Rich (and Dear Rich Staff): I have created painted works of art with oil on canvas and water color marker on paper using the text of public domain operas and plays in such a way that they are no longer readable as text. The full text is still there but, it has been over written in a variety of colors such that one could not actually gain any context or meaning from trying to read the painting as a copy of the opera or play. I judge that this as fair use and should be able to sell my work without consequence. Do I need to get permission to use copyrighted work that has been similarly obscured for this purpose if I intend to sell the unique painting I have created? Just an FYI, but you state you're using the text of public domain operas. If the text of the opera is in the public domain, there's no need for a fair use argument -- you can do whatever you want with it. As for your question about the use of copyrighted works there are two ways that could play:
  • If you purchased the text of the opera -- for example, in sheet music form or in a book -- and you are painting on the pages of text (or incorporating them a collage), you won't need permission. You can probably justify that under the first sale doctrine
  • If you are reproducing the text in a painting, we think you can probably make a strong fair use argument because you are using a small portion of the opera's text, you are not competing with or depriving the copyright owners of commercial gain, and based on your description, your use appears to be transformative --  that is you're making a new statement. if the words are obscured so that their meaning cannot be ascertained, we're not even sure you've infringed as your artwork no longer would be substantially similar to the opera text. Check out fair use rules before proceeding.   

Tuesday, October 25, 2011

Publishing Personal Stories: What Permission is Needed?

Dear Rich: I am creating an online platform for people to share their personal stories that I am going to publish. What kind of legal document do I need to put together? Personal stories? We have a personal story we'd like to post. It's about a blogger who ordered some T-shirts but there was a problem making the registered symbol -- ® -- appear properly on the back (we're not assessing blame just yet) and so the blogger spent a lot of money on shirts with a misplaced ®. It started as a sad story but after some exchanges with customer service, we're starting to think that it will have a happy ending.
Right, you had a question. The good news is that your site can avoid most liability by abiding by the Digital Millenium Copyright Act (which shields you from claims of copyright infringement) and the rules set forth in Section 230 of the Communications Decency Act (which shields you from liability for statements published by others). Keep in mind, you must follow the rules for the shields to work. In general, your concerns for posting personal stories are outlined below:
  • Copyright: You should obtain an assurance that the work is original to the author and that the author has the right to permit publication and that the author grants you the limited right to post it online. If you want more rights -- say to publish a collection of stories in eBook format -- you should acquire those rights now. The same is true if you want the option for more rights. You should learn more about acquiring publishing rights 
  • Invasion of Privacy and Trade Secrets: Personal stories involve personal details. You need an assurance that the posting won't reveal any personal or trade secrets that will cause you to get sued.
  • Children's Privacy: We would suggest avoiding taking any materials from children under 13.  (You can seek an assurance that person submitting the story is 13 or older.) If you start taking information from children under that age, you'll need to deal with a law known as COPPA and that may not be worth the effort.
  • Defamation: Personal stories that include untrue statements about others could lead to defamation suits. You need an assurance there's nothing defamatory.
So, in summary, you need permission to publish and assurances that the publications don't violate any laws. These assurances and permissions can be bundled in a click-to-accept statement that the user must agree to before uploading the information. Any electronic method of assent that can be verified -- checking a box, clicking to accept, etc. --  will suffice.

Monday, October 24, 2011

Wants to Use Thrift Store Dolls to Illustrate Stories

Dear Rich: I wish to illustrate about 25 of my own short stories, each with one ensemble of about 6 to 12 small objects such as dolls, ornaments, cut-outs of posters, etc. Many of these objects I find at thrift or junk stores, so they no longer have any packaging or any identifying marks. Other items are new and/or have identifying marks of the original source. Can I publish my photos as illustrations to my written work without seeking permission from each and every original creator of each item in every ensemble, or is there some fair use law that allows me to circumvent the (pretty much) impossible task of getting permission for every single item? There's no law we can point to that will guarantee you're okay but if you're self-publishing this book, you can probably make a strong fair use argument. That's because we assume your use is transformative -- that is, your use of the dolls or other images makes a new statement or takes on new meanings. Before making the claim, you should review fair use rules (as each use requires a separate analysis).
What if You Get Signed to a Big Deal Publisher? If you're planning to sign with a commercial publisher then things could get more complicated because most publishers will require that you clear copyrighted materials beforehand --  they're not big fair use fans. And they'll insist that you indemnify them as well. Which means that if they get sued, you'll pay for their legal costs. Ouch! So, if you're looking at a commercial publishing deal take your questions to a copyright lawyer for an expert opinion on each use. Then, you can proceed with more confidence if you need to indemnify.

Friday, October 21, 2011

Using 70's Voice Over in New Music Track

Dear Rich: I'm in the final stages of producing a music single. In the song I've sampled the voice-over of a 1970's TV ad. The voice-over is of a familiar and famous figure from that period. Would I need to clear this and for this purpose with whom, as I assume in this case that no record company or music publisher would be involved. We're not sure which familiar and famous person's voice-over you're using but if you're creating a second single, you might want to consider a classic 70s TV ad in which a size-challenged nautical figure -- perhaps a descendant of this character -- rides around in a boat in your toilet and urges consumers to pollute the waters with blue chemicals. How '70s is that?
Right you had a question. You're correct that you wouldn't need to clear the voice-over recording with a music publisher or record company. You may not need any permission at all, as explained below, but there are three possible legal rights you need to consider:
  • the copyright on the commercial. The most likely permission needed is that of the copyright holder -- that's likely to be the ad agency that created the commercial, or the company whose product is featured in the commercial. The copyright owner would own rights to the text of the commercial and to the audio. You wouldn't need permission if you claimed fair use (which can always be a bit tricky). And you probably wouldn't need to bother with permission if the company holding copyright had disappeared and you couldn't track down a successor. (And of course, you wouldn't need permission if your song had limited appeal and was unlikely to be heard by anyone connected with the copyright owner -- what we call the "tree falls in the forest" theory.)
  • the use of the famous figure's voice.  If the familiar and famous person's (FFP) voice is recognizable and listeners think that it is being used for purposes of endorsement, the FFP might have a claim based on the right of publicity. We wouldn't worry about this too much because the FFP's ROP probably won't be triggered unless the song is used for a 3rd party commercial purpose -- that is, it's licensed for use with another product or service (This article provides a short ROP summary). 
  • trademark rights. If the product name (the subject of the commercial) is included in your song, that might trigger claims of dilution or infringement but both of these claims are unlikely to succeed as use of trademarks is permitted for informational (or editorial) uses such as songs. One judge characterized the conflicting interests of the parties "Speech-zilla v. Trademark Kong.

Thursday, October 20, 2011

.MIL Websites: Public Domain?

Gassed by John Singer Sargent, 1918
Dear Rich: yesterday you wrote about a website that you characterized as public domain because it was part of the U.S. military. Does that mean that every website that ends with .mil is public domain and material can be used freely? Ahhh ... Our previous blog never said that the website itself was public domain, only that some of the material at the site was public domain. When a website ends with .mil, you can be sure of only one thing: the Department of Defense has certified that the site is associated with the U.S. Military. The .mil domain is known as a sponsored top level domain which means that only those parties that have been cleared by a certifying organization - in this case, to the DoD -  can use it. Other 'certified' domains include .gov, .edu, .aero, .museum, and .coop.

Wednesday, October 19, 2011

Why Can't We Use Military History Photos in Book?

Dear Rich: We publish ebooks for the Amazon Kindle and other ebook devices and frequently use U.S. government material for our works. We are very clear on what to use (e.g. no contractors work) and where to distribute it. But one thing appears very strange to me. How can the U.S. government say that the information on a certain .gov or .mil website is public but at the same time restrict commercial usage? To give you an example kindly check this site that offers military and historical texts worked out by U.S. government officials and not registered at the Copyright Office (we checked that already). From my understanding - and that's true for Germany - if a "thing" is public domain you are free to do with it whatever you want, give it away of sell it, make derivatives etc. etc. Can you shed some light on this? According to the CMH site:

"Unless otherwise noted, information presented on CMH Online is considered public information and may be distributed or copied for non-commerical purposes. Use of appropriate byline/photo/image credits is requested. If copyrighted or permission restricted materials are posted on CMH Online, the appropriate credit is given. Visitors wishing to repost or use such materials for their own projects should make separate arrangements for permission with the owner."
In other words, the site claims to sift out those works that are under copyright by labeling them with a credit. Everything unlabeled presumably is in the public domain. Assuming you can trust the site's filtering of material, then, as the Supreme Court has stated, you can do anything you want with those materials, with or without attribution to the author.
By the way, although works prepared by federal government employees are in the public domain, you may be surprised to learn that the U.S. government -- though it rarely exercises the right -- is legally entitled to claim copyright outside the U.S. (see page 59 of link).
P.S. The licensing dilemma. Finally -- and this doesn't seem to be an issue at the CHM site --  we're always concerned about the trend to license public domain material. For example, if you check out the terms for this Department of Defense site, you'll see that some restrictions have been placed on use of U.S. government imagery. That claim is made on the basis of a license --  that is, you agree that as a condition of using the website, you will abide by the rules regarding photo use. Generally such licenses are only effective if the user must click to accept or demonstrate some action taken to indicate assent.

Tuesday, October 18, 2011

Has Business Idea: Needs Protection

Birds killing pigs to get eggs?
Another world-changing idea!
Dear Rich: What is the best way to determine if a business idea and its application can be trademarked and or copyrighted? If I determine the application can't be protected, can I protect the name I give the application? The Dear Rich Staff has come up with a lot of great business ideas over the years.  Once we had this idea for a cigaret ring that you could stick your cigaret into so you wouldn't get tobacco-stained fingers. Alas, our prototype was a big failure, almost triggered a mini-conflagration, and was fully abandoned when we decided we didn't need to enable smokers. Then, we had this idea to embed words into kaleidoscopes so that random messages would come up when you turned the viewer. Interesting idea ... but impossible to implement even after buying several books on kaleidoscope construction. Then, we had this idea ... well, you get the picture. Like they say ideas are easy; implementation is tough. So, on the one hand, it's important to consider whether your ideas (or applications) can be protected, and on the other it's often more important to determine if the idea can be commercially implemented. 
Right, you had a question.  Copyrights don't protect ideas, only their expression. So, for example an idea for a software game about angry birds cannot be protected. However, the Angry Birds application that actually performs this task -- and enslaves and distracts millions of healthy minds -- can be protected under copyright law (and patent law if it's novel and not obvious). Names for products and services can usually be protected under trademark law. Here's where you can read more about copyrights, patents, and trademarks.

Monday, October 17, 2011

Needs Help Registering Flower Greeting Cards

Dear Rich: I myself took pictures of flowers for a set of greeting cards. All photos were taken by me during last 4 months. Some of the cards were gifts to friends, 15 were sold mostly to neighbors, and some were displayed by friends and relatives. All total maybe 150 cards (from 11 different images) were given, sold or displayed. (1) Are the photographs unpublished or published? (2) May I write “approx” nearest date of publication of some photos if I not sure about exact date? (3) Do I need two separate applications to apply for copyright for published photos and for unpublished photos. Your question inspired the Dear Rich Staff to take a picture of a lovely dahlia blooming not far from Dear Rich headquarters. Now, if only we had time to stop and smell it.
Right, you had a question(s). (1) We consider all 11 of your greeting card images to be published works because you have distributed the cards to the public by sale or with the intent to transfer ownership. (If you had only displayed the cards or given them to a select group of people with restrictions, they would be considered "unpublished.") (2) You're on the right track by adding "approx" when providing date of publication. If you’re not sure, state your best guess -- for example, “October 14, 2011 (approx.).” (3) No need for two registrations. As the Copyright Office explains, you should be able to manage with one registration for a group of published photos.

Friday, October 14, 2011

Those 70's Lyrics: Do I Need Permission?

Dear Rich: I'm working on a book which will be published and it will include music lyrics, but only the lyrics. These lyrics will be from contemporary artists as well as artists/bands from the 1970's. Do I need to get permission to include them? Talking about great contemporary lyrics, please promise us you'll use some Stephen Merritt lyrics. We just watched this documentary about him and thought, 'Wow, now there's a free-thinking lyric writer.'
Right, you had a question. To some extent, it may depend on what you're doing with the lyrics. If you're using them for purposes of criticism and commentary and are only reprinting a chorus or verse -- usually four or five lines -- you can probably rely on fair use as a defense. (But, as we always warn, there's no guarantee that a music publisher won't hassle you over fair use claims). If you're reprinting more than that, or you are not commenting upon the lyrics, you should seek permission from the music publisher to reprint a song’s lyrics in a book. The fees for such uses are not fixed, so a music publisher can charge whatever the market will bear and fees range from $50 to hundreds of dollars to reprint lyrics in a book. We've provided a "lyric permission" letter in our permissions book, but nowadays you can probably work it out with an email exchange. You can research music publisher information at ASCAP, BMI, or Harry Fox. Alternatively (as the lawyers like to say), if you are self-publishing to a limited audience, you can take the risk and operate without permission, though successful writers opine against that.

Thursday, October 13, 2011

Pounds and Inches: Part 2

I am interested in translating the book "Pounds and Inches" by Dr. A.T.W. Simeons. I was wondering if you would be able to tell me what paths I would need to take to go about checking its copyright issues. For eg. Do I need to be clear on the copyright issue to write a translation of the book? What if I were to add comments on certain parts to make it easier for the reader to understand certain content? Can you foresee anything else in such a task that I would have to be aware of legally? I would be deeply grateful for any information, that you could assist me with. We thought Dr. Simeon's name sounded familiar and that's because nine months ago, another one of our readers had a similar query. (See our nuanced response.) Basically, his works would still be protected under copyright but apparently his estate (or successors) are not enforcing copyright. If you add original comments to Dr. Simeon's work, you would be able to stop others from copying your original text, but of course, you could not stop the copying of Dr. Simeon's text.

Wednesday, October 12, 2011

Does Band LLC Need to Register in Surrounding States?

Dear Rich: I was considering choosing an LLC as my band's business form. I live in Missouri and would file articles of organization in my own state. My state borders on eight other states. Do we also have to file articles of organization for a foreign LLC in other states in order to play gigs there? No, you would only have to qualify if some portion of your band business was conducted solely in the other state – for example, you operated a practice space or maintained a warehouse of your merchandise or if you were booked for several months straight in a club in another state. Only LLCs and corporations that conduct this type of intrastate business have to qualify in another state. You – and most bands – conduct interstate commerce. You may conduct business across state lines but, for example, you don’t plant yourselves, your employees, or your inventory solidly within another state’s borders for extended periods of time.
What does it mean to qualify in another state? If a business must qualify as a “foreign” corporation, that means the company must file some paperwork, pay some fees, and then pay taxes each year to the other state. Here's an article summarizing all this and you can learn about each state’s rules for qualification at the state’s website for its Secretary of State.

Tuesday, October 11, 2011

How Do I Protect My Wife's Blog?

Dear Rich: My wife writes a weekly blog entry for a friend's blog which is syndicated on blogger. Her articles are well received and she has subsequently submitted different items to different trade magazines for potential publication. She currently receives no residual ad revenue from the blog's 'owner'. Should we separately 'trademark' or otherwise protect her articles under her name or company name? The concern would be that the blog owner could also submit her articles or otherwise generate separate revenue stream based on them. It is an unlikely situation, but we wanted to be educated on if and/or how to protect her writing. We've been wearing our Don't Drink and Blog T-shirt for months now (not continuously, of course) and we think it's been effective keeping drunks off of Blogspot. (We also support this Busted Tees special which made us realize how close we were to being Amish). One thing for sure, don't drive and blog.
Right, you had a question. We don't think you can acquire a trademark for the blog because we assume it's your friend's blog, not your wife's. If that's not the case, and your wife is co-owner of the name, the parties can register the blog name by following these instructions. Still, that will only get you the right to stop others from using a similar blog name; it won't give you the ability to stop copying of the blog's text.
Copyright's where it's at. Your wife already has the strongest form of protection -- copyright. She gets it automatically whenever she posts an entry. She can augment her rights by filing for copyright registration. Registration has some great benefits and soon we'll be posting an article on how to register blog articles (though this entry may help, for now). Assuming there is no written agreement to the contrary, your wife owns the copyright in whatever she creates. She impliedly gives her consent for publication in the blog, but not for anything beyond that use. So, if the blog's administrator/owner uses your wife's entries for some other purpose, your wife can legally prevent that use if she chooses to flex her copyright muscles. For the future, perhaps she may want to create a simple agreement explaining how any uses are to be handled -- that is what can be reproduced by the blog owner and her compensation for that use.

Monday, October 10, 2011

Am I Bound by NDA with Foreign Company?

Dear Rich: I'm in the U.S. and I'm working with a foreign company and we were talking about me possibly helping them with their marketing. I signed an NDA. We both have agreed that I will not do the marketing for them. Now we are talking about me private labeling their product and selling it here in the states. We're in the negotiating stage on price. They are 50% higher than another source for a similar product. I'm happy to give this company 15% to 20% higher payment for their supplement but not 50% higher then their competitor. Because I signed a NDA does this prevent me from going to another vendor? Again, under the NDA it was to discuss marketing consulting. Now we're talking private label/wholesale. So far the negotiating on price is going okay but I want leverage so I'm not handcuffed to buying from him 50% higher them competitive market place. Plus I don't want to sign an exclusive source deal. As far as I know I don't know of any trade secrets that they gave me, just common knowledge that can be found on the web. The Dear Rich Staff is sorry we're not giving you our full attention but we're trying to figure out why our most recent weekly Google Analytics report shows zero visitors since October 1. Oh we see why! Somebody snatched our tracking code. Was it the Chinese bots? Pardon us while we reinsert our code. Ahh ...  that feels better!
Right, you had a question. We're guessing that your primary concern is whether you can ditch the foreign company and go with somebody else without violating the NDA. That shouldn't be a problem, assuming that (1) the document you signed is strictly an NDA, and (2), you don't violate the NDA by giving up any confidential information provided by the foreign company.
Strictly an NDA? Probably you signed a typical NDA that prohibits disclosure of secrets. But be aware that some documents titled Nondisclosure Agreement, Confidentiality Agreement, or even Disclosure Agreement, go beyond just addressing trade secret issues and can include other restrictive provisions --  for example, it may temporarily prohibit solicitations of competitors or contact with customers. So, numero uno, be sure that you didn't sign paperwork that presents additional hurdles. If the agreement is more than an NDA, you may need to consult an attorney.
What can't you do? Assuming it is a straight NDA, keep in mind that their language is often overly restrictive and purposely vague. Those who insist on them sometimes rely on their ambiguity to instill a sense of fear. However, an NDA only prevents disclosure of trade secrets -- confidential information that's unknown by competitors and which is kept confidential via reasonable security efforts. Many such "secrets" don't qualify as trade secrets, and -- if you're confident that they're not protectible -- you are free to disclose them regardless of the NDA. In other words, if all of the information disclosed to you is publicly available, the foreign company will have no basis to sue under the NDA should you go with someone else.

Friday, October 7, 2011

Trademark v. Domain Name: Can We Co-Exist?

Dear Rich, I have a situation similar to one in a previous post. I acquired a unique domain name in 2008 with much trouble. I was planning to build an online store. The name is related to fashion accessories. My website was built in 2009 and it was open to the public. People can see it on the internet but the product and payment part was not done so there was no transactions. But at the same time, I used the same name in a local funding rasing event in California in 2009. I generated some transactions there. I was not able to do too much since then. Two months ago, in June 2011, I found a U.S. software company tried to register a trademark for that exact name for some computer software. I also found that it is online downloadable and it became first in Google listing for that name. My questions are: 1) Will I lose the domain? 2) Can I still apply for trademark? 3) Can we co-exist? The short answers to your questions are No, Yes, and Yes (To save you some time, we've provided an explanation of eCommerce trademark basics.)
A classy distinction. Our big takeaway is that trademark law only protects marks in regard to the class of goods or services being offered under that mark. That's why you can wear American Apparel while you're flying American Airlines, or look for jobs at while listening to speakers connected by Monster cables, or fasten Arrow staples to your Arrow shirt. Only those marks that are rock stars in the trademark world --  think Nike or Coca-Cola -- can claim a likelihood of expanding into a broad array of goods and services, and more importantly can prevent another company's use of their famous mark because a third-party use dilutes it.
Domain names and trademarks. A registered trademark owner can only dislodge a domain name holder if the domain name is identical or substantially similar, and the domain name owner acquired or is using the domain name in bad faith. That generally means the domain name holder is exploiting the trademark owner's rights. You won't have that problem because you have a bona fide intent to use the mark for fashion accessories not to compete or trade off the software company's name.

Thursday, October 6, 2011

Can I Use 'Fortune 500' ?

Dear Rich: I am working on a research project about architecture and Fortune 500 companies. I want to publish my research but would like to learn more about trademark and copyright. The questions I have are the following: Can I use "Fortune 500" in the name of my book? Do I need permission from Time Inc? Can I use a company's name from the list of "Fortune 500" in my book? Do I need permission from Time Inc. and/or each listed company? I have made original architectural drawings that contain the logo of the company and the design of their existing space, such as McDonald's. Do I need permission to publish my drawing? Here we go: 'Yes ' you can use Fortune 500 in your book title. We found at least eight books that made similar uses from dating as a business strategy to spirituality in marketing. Avoid duplicating the Fortune font and logo. And, no, you don't need permission from Time Inc. Yes, you can use a company's name or logo in your book without permission because your work is "informational." For the same reason, you can publish company logos and your drawings of the buildings - yes, buildings can be the subject of trademark protection. Buildings are also protected by copyright law, but not if they were created before 1990. Even with that protection you can take photographs or make other "pictorial representations" of post-1990 buildings. So you're good to go all around


Wednesday, October 5, 2011

One More Time: How to Register a Blog Name

Charles Dickens:
The world's first blogger?
Dear Rich: I read your entry on whether you can register a blog name as a trademark. It's helpful but doesn't really explain how to register the name. Can you provide a step-by-step explanation for registering a blog name at the USPTO? It would be much appreciated. The Dear Rich Staff is here to serve. We posted this article explaining the registration process.

Tuesday, October 4, 2011

Eat Pray Ask Permission?

Dear Rich: I'm interested in knowing if you have ever encountered clearing an "inspired by" situation. For example, I have written a piano solo inspired by the novel, "Eat Pray Love." I have not put that information on the cover of the piece because my instinct tells me "Eat Pray Love" would need to be cleared. The Dear Rich Staff kind of missed the boat on Eat Pray Love. It's not that we don't like Chicklit or RomComs or Julia Roberts (We felt bad for her when she broke up with Kiefer Sutherland ... and then felt happy for her when she started dating Jason Patric because he was so great in that Kathryn Bigelow vampire movie). Anyway, we're glad you found the movie (or book) inspiring enough to write a piano solo. (This movie might inspire us to write a song, however.)
Right, you had a question. From a purely legal POV, there's nothing preventing you from calling your composition Eat Pray Love or from stating that it was inspired by Eat Pray Love. Many artists have named compositions after books and films (and vice versa). But you will run into problems if you imply that the owners or creators of the book or movie somehow endorse what you're doing. That might be the case if you have included an image of the book cover or a picture of Julia with your sheet music or performance. You also may run into problems if  buyers are confused with the song that's become associated with the movie.

Monday, October 3, 2011

When Will the 1-Year Grace Period for Patents End?

Dear Rich: I filed a provisional patent application this week. I've been selling my product that I hope to patent for the past three months. The new patent law ends the one-year grace period. So where does that leave me and my application? You should be fine, provided that you file your regular patent application within a year of the provisional filing. The aspect of the law that you're referring to doesn't go into effect until March 16, 2013, and only applies to patents filed on or after that date.
What about the one-year grace period? The one-year grace period -- which allowed applicants to obtain patents even if if they had been selling or had published their patent less than a year before filing -- will terminate (with some exceptions) on March 15, 2013. As David Pressman, author of Patent It Yourself, recently explained in his excellent analysis of the America Invents Act:
"The one-year grace period has been decimated so that any publication, public use, or offer of sale of an invention before an application’s actual filing date will bar the application. An exception: if the actual inventor-applicant created the publication and it was made up to one year before the filing date, it will not bar the application. However it is still unwise for an inventor to publish before filing since they will lose their foreign filing rights and another person may see the publication and file their own application on it before the true inventor files, thus requiring an expensive and uncertain derivation proceeding."
Check out the article for more details, and for more on the AIA, you can read about the USPTO's implementation plans, and you can review a timeline for AIA implementation.