Monday, March 30, 2015

High Heeled Shoes: Low Level Legal Protection


Dear Rich: I make and sell high heel shoes. What I do is decorate with spikes, studs, feathers, embellishments etc., and sell them. But my biggest sellers which I call my signature design is the peacock feather that I place in certain areas of the shoe. So I wanted to know if I should copyright that design or do the design patent?
Design patents are sometimes granted for high heel designs -- here's one that incorporates a football motif -- but we don't believe your shoes are likely to qualify. One reason might be that you've already been offering the shoes (disclosures by the designer may be excused for one year prior to filing). Another reason might be a lack of novelty (others have made similar use of peacock feathers). And another might be that your designs, creative as they may be, are "separable embellishments." According to the USPTO:
"Design is inseparable from the article to which it is applied, and cannot exist alone merely as a scheme of ornamentation. It must be a definite preconceived thing, capable of reproduction, and not merely the chance result of a method or of a combination of functional elements."
Copyright. Copyright does not protect clothing, fashion and similar functional designs. You may be able to protect surface ornamentation for clothing if it is considered "separable" from the shoe itself.
Trade dress and trademarks. Trademark and trade dress law may assist if you can demonstrate that consumers associate the design or some aspect of it with you (an association that usually requires serious sales and advertising). That's the approach taken by the big guns like Gucci, Balenciaga, and Alexander McQueen. Otherwise, trade dress law is not likely to protect you (in light of this decision).
Bottom Line Dept. Sometimes -- and this is often true for custom made-clothing -- there is little legal protection available to stop fashion copycats (though Congress keeps trying). Although big fashion houses can wield trade dress claims, smaller designers with limited sales can't count on IP law, and must rely on the loyalty of customers seeking unique craft skills and vision.

Wednesday, March 18, 2015

Little Rascals/Affordable Care Fair Use Question

Dear Rich: My original music video concerning the Affordable Care Act would illustrate the song's narrative with very short clips cut from online video: The Little Rascals from the 1950s, a major league pitcher 'doctoring' a baseball, documentary footage of an ambulance. Would these uses likely be considered fair use? 
If the clips are very short—just a few seconds—they would probably qualify as a fair use because you're using them for purposes of commentary. Of course, claiming the fair use privilege doesn't mean you won't get sued. And if you were sued, you'd still have to prove your claims in court, a stressful and expensive proposition. So, a more important question is whether the footage is recognizable to the copyright owner and whether the owner will learn of your use. In general, we believe that owners of copyrights in Hollywood studio films are among most likely to complain about these kinds of unauthorized uses. However, note also that the use of someone's footage for political purposes, particularly, to espouse a point of view contrary to that of the filmmaker may also trigger infringement lawsuits.

Monday, March 16, 2015

Should I Register My Domain Name as a Trademark?

Dear Rich: In your book on trademarks there is a discussion of whether you should register "trademark.com" as a trademark if you've already registered "trademark." The example provided is a line of menswear that is now also going to be sold online. The conclusion is that you should consider registering the full domain name (trademark.com) if establishing services or goods unique to the Internet business. Could you please explain why? If the PTO considers the ".com" piece of the trademark as unprotectable, what benefit would be gained by registering the full domain name? If you have a business that only sells online, should you register both "trademark" and "trademark.com"? 
If you register a domain name as a trademark with the USPTO, you won't be able to claim any rights to the ".com" (known as a top level domain or gTLD) by itself. The USPTO considers elements of the domain address such as "http://" and  "www." and gTLDs as unprotectable features of the website address. Although they are unprotectable by themselves -- that is, you can't stop others from using .com --  a mark that combines these elements with a protectable term is registrable if it is unique to an Internet business.
More than an address. The main thing to keep in mind is that you should register the .com if it is more than an address, that is if it is a source-indicating trademark use. For example, Zappos.com, an online footwear and clothing company refers to itself as "Zappos.com" at its site. In this way, Zappos.com, like Amazon.com, is more than an address on the web, it's the brand itself. (The USPTO's Trademark Examining Rules for domain names are located here.) The benefit of registering .com depends on the company. Some want a deep trademark portfolio, one that enables the broadest claim to trademark rights. Amazon has registered over a hundred "Amazon" marks and about 25 "amazon.com" marks (12 of which are still live). For smaller businesses, it may not matter much whether you register with or without the .com.
One more quirk. When registering a domain name, an applicant is permitted to furnish a drawing of the term within the address. For example, if registering Amazon.com, the applicant could furnish a drawing of the term "Amazon." (See TMEP Sec. 1215.02(c)))



Thursday, March 12, 2015

Five Lessons from the "Blurred Lines" Case

We've received many inquiries as to the verdict in the "Blurred Lines" case (in which a jury determined that the song, "Blurred Lines," written by Pharrell Williams and Robin Thicke, infringed Marvin Gaye's song "Got to Give It Up"). The jury awarded Marvin Gaye's heirs $7.4 million, reflecting the profits earned by "Blurred Lines," which (hard as it may be to accept) was the longest running number one single of the entire decade (racking up sales of $14.8 million copies). The case's outcome is dumbfounding, particularly for musicians. Hindsight, affording us excellent vision, reveals five lessons.
  •   Declaratory actions don't always succeed - The Gaye family didn’t file the lawsuit; it was Thicke and Williams who filed, using a procedure known as a declaratory action (used when a party has been threatened with a lawsuit and seeks a pre-emptive ruling). It's like the reverse Pacman strategy in which the pursued becomes the pursuer. The procedure has its advantages – Thicke and Williams got to pick the location for the case -- but the procedure can also backfire, as some legal experts believe happened here. By initiating the lawsuit, Williams and Thicke may have ruined the chances of a quiet resolution before the song became a super mega hit.
  •  Don't bother with the "high as hell" defense –Sometimes, one party to a lawsuit is perceived as a villain, and its all downhill from there. Thicke admitted during the trial that he wasn’t present when the song was written and was too high on Vicodin and alcohol to compose anything, anyway. That testimony painted him unfavorably as a lying pop star who wanted credit when the song was a hit but who denied liability when accused of infringement. Character judgment shouldn't be a factor when determining substantial similarity … but any case can get derailed when one party's veracity is put into question.
  • Don’t announce you want to copy someone’s song. Thicke told GQ Magazine, “Pharrell and I were in the studio and I told him that one of my favorite songs of all time was Marvin Gaye's 'Got to Give it Up.'  I was like, 'Damn, we should make something like that, something with that groove.” Similar comments were made to other publications. Later when asked by the Gaye Family lawyers what he meant, Thicke's defense was that his comments couldn't be trusted because he was “high and drunk” when he did interviews.
  • Don’t prevent jurors from hearing both versions. Many music listeners don't hear much similarity – aside from the uncopyrightable "live party" elements -- when comparing the recording of "Blurred Lines" with Gaye’s performance of "Got to Give It Up". But the jury never got the chance to make a similar comparison because they never heard Gaye's version. Lawyers for Thicke and Williams argued that Gaye deposited sheet music when he registered his copyright back in 1977 (standard operating procedure for the time) and therefore, the Gaye family’s claim could only be limited to the elements in the sheet music. In hindsight, limiting Gaye's claim to the sheet music may have worked against the "Blurred Lines" crew because it allowed the family's lawyers to take a non-holistic approach to the songs. Instead of getting a total feel for each song, the lawyers disassembled the sheet music and focused on eight distinct notated similarities.
  • Juries are unpredictable. 'Nuff said.

Wednesday, March 4, 2015

My Boss Made Me Appear in Yelp Commercial

Dear Rich: My employer at a small law firm has required his whole staff (about 8 of us) to appear in a Yelp commercial video. Please note that all the employees had no choice but to do it, and although we signed a release, no consideration was provided in exchange for the release. The day of the shoot, we all signed a release form (no one had to actually read it - just told to sign). My employer wanted me to speak on this video, even though I didn't want to. I was told we will get to edit prior to posting it on Yelp. I reluctantly spoke (and did a bad job so I could get edited out). I asked to view it right after my employer filmed me, and he said he was short on time, but that I could make edits to the final version. When the final version came out, I asked that very first day to be edited out on the part where I am speaking one-on-one (something that could easily be taken out without altering the rest of the company video). My employer kept saying "think about it," and that "I'm so pretty blah blah blah ask others opinion on it before wanting to be taken completely out." I told him its a personal choice that I don't want my face, name and video on the Internet so please remove it. Then two weeks later I saw that the final version still included me in it - and I requested over and over again not to post it until he removes me. He refused saying, "the window to edit is now over, and I'm too pretty to be cut out." I got upset and said I want to be cut out immediately. His response, via text, was: "You signed a release. You work for me. Case closed.” What do I do!? I don't feel comfortable and I feel violated! I know this will ultimately cost me my job, but this just isn't fair. I shouldn't be forced to be in it when so easily I can be cut out!
We sympathize with your predicament. Nobody wants their image used for purposes of commercial endorsement without consent. The purpose of a release -- assuming its drafted properly -- is to grant consent. We think that you're in a tough spot and may be bound by the terms of the release. Most courts consider a written agreement as the "final" statement on the deal and your release may even have a clause entitled "Entire Agreement" or "Integration" that guarantees this result. The fact that you didn't read the release (or were advised not to bother) does not excuse you from the obligation.
Duress? You also imply duress -- that you were pressured to sign. In a sense you describe a form of economic duress. That is, you'd lose your livelihood if you objected. But to prevail on a "duress" argument under contract law, you would  likely need more evidence of physical or mental coercion to demonstrate that your consent was not voluntary.
Consideration. As for additional consideration to sign the agreement, that's a tough call and may depend on your state law. In some states, such as Pennsylvania,  additional consideration by at-will employees may be required for certain agreements. In other states, like Wyoming, Colorado, and Ohio, it may not be required for contracts that establish non-competes (that is, keeping your job is sufficient consideration). (We're also not sure how much of this legal minutiae matters as we're assuming you don't want to take this matter to court.)
You're so pretty. We find your boss's comments about your appearance, such as "you're so pretty," as troubling but by itself, not enough to form the basis for a lawsuit.
For more information on using employee photos in social media, you may want to check out this blog post by one of our favorite employment law experts.


Monday, March 2, 2015

Quoting Dialogue From Raising Arizona in Novel

Dear Rich: I'm self-publishing my novel and I'm trying to track down Circle Films for permission to use four lines from "Raising Arizona." (I did get permission from the Cather Foundation to quote "My Antonia.")  The problem is, I can't even find a website for Circle Films. 
You might be able to find Circle Films information by signing on for an imdb.com PRO subscription which offers contact information for producers and studios (the first month is free). Alternatively, you might try contacting producer Ben Barenholtz who apparently was the owner of Circle Films.
Why bother? After reviewing your use -- two characters talking about the film and quoting four lines of dialogue -- we don't believe permission is required. Yours is a classic example of fair use because you are using a small amount of copyrighted material for a limited and “transformative” purpose, something that authors who comment on pop culture (for example Elmore Leonard -- scroll down to "Spark") commonly do. Alternatively, you've taken so little from the movie it might qualify as a de minimis taking -- one that is so trivial that it shouldn't matter.