Trademark, Copyright, and Entertainment Law Forum

It's a Crazy Intellectual Property World

2011-05-31T14:04:00.001-04:00

It's a Crazy Intellectual Property World

From Apple trying to register a trademark of "App Store" to Apple suing someone for selling white iPhone kits, to CBS being the subject of a lawsuit for copyright infringement; it is a crazy intellectual property world.

Do not wade through the waters of intellectual property alone - let's go through some of the difficult stories.

Apple's "Appstore" Trademark

I do not believe that Apple will be able to either register "Appstore" or "App Store" as a trademark or successfully win its lawsuit for trademark infringement against Amazon.com. This is because many people for years have been using "app" as a shortened form for the word "application." To me, "app" is a generic term and "store" is a generic term used for "a store in which one buys applications." As the story says, "the threshold that businesses must cross in order to avoid being deemed to use a generic term" will be decided in these cases.

CBS and CNET are sued

A coalition of artists have sued CBS and CNET for wilfully facilitating copyright infringement. According to the suit, CBS and CNET received advertising revenue when users of the Limewire peer-to-peer downloading system downloaded unauthorized copies of work.

http://www.pcmag.com/article2/0,2817,2384913,00.asp

Do not forget my speaking engagement:

I will be speaking on June 2, 2011 at 6:00 PM to the Executives Club of New Jersey. The topic is Trademark, Copyright and Advertising Law Thoughts for Small-to-Medium Business. It will be jam-packed with thoughts and ideas.

Please come. RSVP by clicking this link:

http://bit.ly/mN4Nd6

Apple II

Apple has filed suit against a small company run by a teen that sells conversion kits to make your iPhone 4 white. To me, it seems more of an issue of trade dress than trademark infringement, though the website's name does use iPhone.

I hope you will be able to come out to see me speak!

2011-05-26T17:37:00.001-04:00

I hope you will be able to come out to see me speak!

Executives Club of New Jersey

I will be speaking on June 2, 2011 at 6:00 PM to the Executives Club of New Jersey. The topic is Trademark, Copyright and Advertising Law Thoughts for Small-to-Medium Business. It will be jam-packed with thoughts and ideas.

Please come. RSVP by clicking this link:

http://www.meetup.com/ExecutivesClubNJ/events/17542263/

Hangover II/Tattoo

I am sure many of you heard of the conflict between the producers and creators of "The Hangover Part II" and the tattoo artist that designed Mike Tyson's infamous facial tattoo. The artist has sued the producers and creators for copyright infringement. The first question is if a tattoo deserves a copyright. This will probably come down to the medium upon which the design is fixed. I am sure no injunction will be given, though, and we can all go to the movies this weekend. http://bit.ly/lQd9RW

Sweepstakes

Have you noticed the proliferation of sweepstakes and contests? I picked up a Nesquick bottle with a sweepstakes. I received an e-mail from the New York Islanders about a sweepstakes. What other companies are holding sweepstakes?

http://fb.me/Xi3heVwY

Continuing to visit and update

2011-02-22T12:29:00.002-05:00

Just as in the last update, I have been out visiting companies. This time, it was to Toy Fair 2011. I met with many interesting businesses of many different sizes. I also tried out many new toys - all were different. (And I did

I truly am excited about small business continuing to develop and innovate.

The development means that there are more ideas coming to fruition and that means more trademarks and copyrights to protect. It also means more advertising to be vetted. It is important to not forget these components to any business, especially in one where intellectual property and advertising is the business.

***
Trademark infringement is high in China - not because of counterfeiting (which is a different issue) - but because of a lack of knowledge of the trademark process. I see it often in the United States, too.

***
I am reminded that I spoke to someone recently who asked about a trademark registration. He said that he budgeted for placing the advertisement with a radio station. So, now, his company's trademark and advertisement were out in the ether, in use, but not vetted by an attorney. How does the company know that the mark does not infringe others or if the advertisement passes truthfulness, not misleading, and federal regulations?

***
Ford sues Ferrari for trademark infringement, as Ferrari planned to call its newest race car the F150. Ferrari backed off and proposes the use of "Ferrari F150 Italia" instead.

What I like here is the idea that more words in a trademark means that two marks that could be similar really are different: the target markets are different, the goods (while in the same industry) are different, and the marks themselves are different enough so that both can exist.

Traveleing and visiting

2011-02-11T10:20:00.002-05:00

It is always a pleasure to visit new companies and see what new innovations are being made.

At Kravitz & Verna LLC, we do emphasize the need for companies to comply with federal regulations from different agencies in advertising. As our world grows more complex, so do regulations and so do the needs of companies to comply with advertising regulations. (As an aside, did you know California now has its own anti-spam statute, apart from the federal CANSPAM statute?)

It was with pleasure, then, that Robin and I visited the offices of CMPLY, whose website is cmp.ly, which is a start-up out of New York, helping companies follow federal compliance regulations and trying to make it easy. While no solution is black-and-white and every advertising situation has its own shades of grey, the conversations we had about advertising regulations schemes in today's world, full of social media and microsites were most enlightening and fulfilling.

****

That said, I am looking forward to going to Toy Fair this year. It starts next week. I will be going there, and I hope to see anyone on this list in the toy industry at the convention. Let me know where you will be if you will be there. Just send me e-mail at averna@kravitzverna.com.

****

Here is an interesting story about the federal government asking for the power to veto domain names. What troubles me here is the clash of "Security" versus the freedom of speech. This is a story to keep an eye on - especially if the federal government wishes to block any particular domain names.

****

We should not be surprised, but Zynga, makes of the Farmville and Cityville games on Facebook, are enforcing trademark rights against anyone who uses "ville" in a similar use. We need to keep an eye out to see if Zynga is going to expand this use.

****

I like meeting with someone at the very beginning of a project. This means I can lay out all the intellectual property issues at the beginning. What copyright issues are there? What trademark issues are there? I like developing the intellectual property plan at the beginning to reduce risk as much as possible.

Teleseminar - Trademark & More 101

2011-01-20T07:51:00.001-05:00

On Saturday, January 22 at 12:00 PM Eastern, I will be hosting a teleseminar with Diane Kennedy, CPA on Trademarks & More 101.

Visit http://www.dianesseminars.com/ to sign up for this teleseminar. Yes, you can listen and participate from the comfort of your own home at your own phone.

Listen to what a trademark is, how they are registered, and how trademark law can affect your business.

Diane Kennedy, CPA, will be talking about tax consequences for your business.

We look forward to having you join us - virtually.

Sign up at http://www.dianesseminars.com/ to get the phone number to call in.

Advertising Law for Small Business

2010-11-29T12:08:00.004-05:00

One question I find myself answering is why I merged my practice with Robin Kravitz' practice. This is simple: to offer my clients more services. Protecting intellectual property is only one aspect to a business. The business needs to use its intellectual property in order to have customers and bring customers back.

This is why we will be speaking about advertising law issues in another free seminar.

Come and join us at North Jersey Federal Credit Union for the second seminar in a series of four presented by Kravitz & Verna LLC. We will discuss Advertising Law for Small Businesses on December 1, 2010 at 5:30 PM.

North Jersey Federal Credit Union
711 Union Blvd
Totowa, NJ 07512 US

We will watch commercials from various eras and review print ads and discuss the following topics:

How advertising is affected by the various areas of law
Truthfulness and claims
Creation, Production, Placement and what agreements are needed with agencies
Best business practices

Please RSVP to Anthony Verna by replying to this e-mail or James Giffin at jgiffin@njfcu.org.

Do not forget our seminar - free - Trademarks for Business

2010-11-07T11:14:00.002-05:00

This is a reminder that the Kravitz & Verna LLC seminar series startTake a look at the first of this series here:
http://events.linkedin.com/Trademarks-Small-Business/pub/458307

Our first seminar is on Trademarks for Small Business. It will take place at North Jersey Federal Credit Union.

North Jersey Federal Credit Union is located at 711 Union Blvd., in Totowa, NJ.

We will start at 5:30 PM.

Topics covered:

• What is a trademark?

• Why do I need to register a trademark?

• What is the registration process like?

• What common mistakes are made in trademark applications?

• How can I enforce trademarks?

• How are trademarks assets?

To RSVP, just reply to this e-mail or send James Giffin at NJFCU an e-mail at jgiffin@njfcu.org and say that you are going.

I look forward to seeing you there.

Trademark Seminar!

2010-10-18T16:59:00.002-04:00

Announcing. . . Kravitz & Verna LLC.

And how best to announce a new law practice than to do it with a series of seminars.

Take a look at the first of this series here:
http://events.linkedin.com/Trademarks-Small-Business/pub/458307

Our first seminar is on Trademarks for Small Business. It will take place at North Jersey Federal Credit Union.

North Jersey Federal Credit Union is located at 711 Union Blvd., in Totowa, NJ.

We will start at 5:30 PM.

Topics covered: Tuesday, November 9 for the seminar on Trademarks.

• What is a trademark?

• Why do I need to register a trademark?

• What is the registration process like?

• What common mistakes are made in trademark applications?

• How can I enforce trademarks?

• How are trademarks assets?

Thursday, December 2 for the seminar on Advertising.

• How advertising is affected by the various areas of law

• Truthfulness and claims

• Creation, Production, Placement and what agreements are needed with agencies

• Best business practices

Tuesday, January 11 for the seminar on Licensing and Copyrights.

• What is a copyright?

• What do I need to register a copyright?

• Why are copyrights important to my business?

• What is a licensing agreement? What can I license?

• What is a royalty payment? How can I structure them?

Tuesday, February 8 for the seminar on Promotion law.

• Contests and Sweepstakes Regulation

• How these regulations affect business

http://events.linkedin.com/Trademarks-Small-Business/pub/458307

A reminder!

2010-06-15T07:31:00.001-04:00

I am just reminding you about Wednesday night's teleseminar on How to Create and Build Intellectual Property Value, with Diane Kennedy, CPA.

Register here:

http://www.dianesseminars.com/

Video killed the radio star

2010-06-04T11:12:00.002-04:00

For those of you who are fans of my law practice on Facebook, you have been seeing video of me discussing various areas of law that I practice.

You can find all the videos here:

http://www.youtube.com/avernalawfirm

But, for today, I do want to focus on two videos specifically. The first one is about having a trademark search performed. http://www.youtube.com/watch?v=HDeW46gNsvk

I received a phone call from a client recently about a trademark application that is stuck for multiple reasons. It might be most cost-effective to restart. That is not the answer any client wants to hear with a mark already used in commerce. But use = registration. I want everyone to do it right from the beginning. Let us start with the trademark search and the advice that comes from the search is invaluable.

The other video is about the areas of law you might encounter on social media: http://www.youtube.com/watch?v=qf0Q_44b8qI

****

New Teleseminar! June 16 a 9 PM Eastern with Diane Kennedy, CPA. Diane and I will be speaking about How to Create and Build Intellectual Property Value. Register here to get the phone numbers to dial in:

http://www.dianesseminars.com/

Register now! I look forward to seeing you there on Wednesday!

Just a reminder about tonight's webinar!

2010-05-10T12:18:00.001-04:00

Just a reminder about tonight's webinar!

Reserve your Webinar seat now at:
https://www1.gotomeeting.com/register/874334848

I am hosting it with Christine Gallager, a social media trainer and coach.

Title: Social Media: Practical and Legal Issues for Business

Date: Monday, May 10, 2010

Time: 7:00 PM - 8:30 PM EDT

Reserve your Webinar seat now at:
https://www1.gotomeeting.com/register/874334848

After registering you will receive a confirmation email containing information about joining the Webinar. All registrations will also enter you on the mailing lists of Anthony Verna and Christine Gallagher.

Another webinar and some other odds and ends

2010-05-03T15:44:00.004-04:00

I hope the spring means that everyone is doing well. It has been a strange spring in New York City, meaning that it is blazing hot one day, and then rainy the next.

I was awakened last night by thunder that made a car alarm sound (obviously, it was a car alarm that needed to be moved).

We have another webinar coming up, next Monday, May 10.

Reserve your Webinar seat now at:
https://www1.gotomeeting.com/register/874334848

I am hosting it with Christine Gallager, a social media trainer and coach.

Brought to you by Anthony Verna of the Law Offices of Anthony Verna and Christine Gallagher, Online Marketing & Social Media Trainer & Coach for Small Business Owners, it's "Social Media: Practical and Legal Issues for Business."

Learn how to choose a good name (especially for use in social media), how trademark law affects that choice, how to create content, and how to control that content.

Title: Social Media: Practical and Legal Issues for Business

Date: Monday, May 10, 2010

Time: 7:00 PM - 8:30 PM EDT

Reserve your Webinar seat now at:
https://www1.gotomeeting.com/register/874334848

After registering you will receive a confirmation email containing information about joining the Webinar. All registrations will also enter you on the mailing lists of Anthony Verna and Christine Gallagher.

System Requirements
PC-based attendees
Required: Windows® 7, Vista, XP, 2003 Server or 2000

Macintosh®-based attendees
Required: Mac OS® X 10.4.11 (Tiger®) or newer

Space is limited.
Reserve your Webinar seat now at:
https://www1.gotomeeting.com/register/874334848

****

One series of user-made videos on YouTube is beginning to be removed. It is a scene from the German-Austrian film "Downfall" in which Hitler has a tantrum.

Of course, I like the clip where the subtitles in the film mock the new "Star Trek" movie and its reception. I am sure that will be removed sometime soon.

The issue is one of practicality vs. legality. Yes, parody is protected as free speech and then fair use under copyright law. (Those of us who remember the 2 Live Crew "Pretty Woman" case know that.) However, if I host a website that is mostly user-generated content, do I want to fight over each video in court or do I want to take advantage of the safe-harbor provision of the Digital Millennium Copyright Act and just remove them?

That's right. It's just easier to remove the videos.

****

A reminder for those of you who have trademark registrations: You have a duty to enforce them. So you need to do searches for your mark. You need to file extensions of time against those similar marks that go to publication. You need to file opposition proceedings against those similar marks. Your duty to enforce your marks means that your marks could be canceled for not enforcing them.

Call me at 917-348-0108 or send an e-mail to law@nyctrademarks.com to discuss trademark enforcement.

Register your copyrights. Now.

2010-03-08T10:42:00.002-05:00

I just had a conversation with the Library of Congress. Now, we all knew that copyright registrations were taking over a year to process.

However, the representative at the Library of Congress just told me that it is taking up to TWO years to process a copyright registration. This is an extraordinarily long time for a process where the sample is stored at the Library of Congress and a number is assigned.

Have you filed your copyright registrations? Now, courts will allow copyright lawsuits continue if an application has been filed - especially with this backlog. However, it is not a step I would like to see anyone take. File your copyright registrations because that is the first step to filing a lawsuit for infringement.

In two years, we all know that things change and infringements do happen. I highly recommend filing as soon as possible because the process is taking so long.

****

Lunch Event!
http://bizassetsnyc.eventbrite.com/

Anthony M. Verna III

of the Law Offices of Anthony Verna,

Steve Wechsler of Wechsler Associates, Inc.

& Daniel Holohan of B&B Holcam

present

Protecting Your Business’s Assets

A Lunch-and-Learn event for business owners

Tuesday, March 23 from 12:00 PM - 2:00 PM

Keene's Steakhouse
72 West 36th Street, New York, NY 10018

$45 for lunch and all this information!

You must RSVP at http://bizassetsnyc.eventbrite.com/

Intangible and tangible - the complexities of today's business world present numerous risks for business owners. Enjoy a free steak lunch at Keene's and learn how to protect your business's assets while avoiding the most commonly made mistakes in these crucial areas.

Our experts will explain:

* How trademark and copyright law protect your business…and

the four mistakes most business owners make.

* A crucial insurance policy that 95% of business owners don’t

have.

* The key elements of a buy sell plan…and a tax deduction you

probably aren’t taking advantage of.

This information-packed lunch will show you how to avoid the most dangerous pitfalls that threaten every business. Our experts will present time and money saving ideas that will protect your most important assets and contribute to your business’s growth and success.

RSVP at http://bizassetsnyc.eventbrite.com/

Looking forward to tonight's call!

2010-02-15T17:32:00.001-05:00

Don't forget that for audio, use these numbers:

Dial-in Number: 1-518-825-1300
Participant Access Code: 1155320

To view video, click this link:

http://www.freeconference.com/SharePlusConnect.aspx?E=409a1cbb2635870c51a7a0b8003ee846&B=8364842&AC=1

Date: Monday, February, 15, 2010

Time: 9:00 PM - 10:25 PM EST

I look forward to seeing you online!

-Anthony

Another Phone and Web Seminar

2010-02-13T09:32:00.001-05:00

Join us for a Phone and Web Seminar on February 15.

Dial-in Number: 1-518-825-1300 (East Coast)
Participant Access Code: 1155320

This will be a phone and web seminar on copyright and trademark law for small businesses.

Learn to protect your intellectual property.

Learn what a trademark is. Learn what a copyright is. This is going to be a primer so that you're familiar with the terms and with the differences between these areas of intellectual property. Don't hesitate to protect your trademarks and copyrights!

Registration for the webinar includes registration to the free mailing list about current trademark and copyright law issues by Anthony Verna.

Come and learn and discuss.

Title: Trademark and Copyright Law for Small Business

Date: Monday, February, 15, 2010

Time: 9:00 PM - 10:25 PM EST

To view video:

http://www.freeconference.com/SharePlusConnect.aspx?E=409a1cbb2635870c51a7a0b8003ee846&B=8364842&AC=1

Reserve your conference seat now! Hit the "Reply" button now, saying, "I want to be in the February 15th conference!"

The Four Items Most People Get Wrong in a Trademark Application

2010-01-10T18:58:00.001-05:00

Many business owners believe they can save money by doing a Federal trademark application. But what they do not know are the pitfalls in filing the application themselves.

1. Incorrect Trademark. Yes, this might seem very basic – but many times, business owners register what they think their mark is instead of registering the mark that the business is using.

2. Incorrect Owner. People and corporations are different legal entities. Very often, a small business owner puts himself or herself as the owner of the trademark when it is the corporation who owns and uses the trademark.

3. Incorrect Date of First Use. What is the date of first use? It is the date that the trademark was used on any material related to the goods or services your company sells.

4. Incorrect Description of the Goods and Services. As a part of filing for a Federal trademark, the application must list the goods and services that a mark represents. This list must be complete. If the mark is not used in conjunction with any of the goods or services listed, then the registration is open to attack.

If any of these items in a trademark application is incorrect, then the trademark application or registration is subject to cancellation.

Fraud Upon the United States Patent and Trademark Office can be triggered by even an innocent mistake. If a trademark application is fraudulent, the trademark application or registration can be cancelled.

See an attorney to discuss all aspects of a trademark application – from what the mark really is, to who the owner is, to the first date of use, to the goods and services it represents.

Anthony M. Verna III, Esq.

Law Offices of Anthony Verna

law@nyctrademarks.com

(917)348-0108

Would you like to see this as a PDF to save and print? http://nyctrademarks.com/temp/wrong.pdf

Happy New Year

2010-01-01T10:58:00.002-05:00

Happy New Year, everyone.

I wish everyone a healthy and prosperous 2010.

This year marks new milestones for me, too. I have left Weiss Imbesi PLLC. Of course, I want to thank them for the time that I spent with them. It was fruitful.

Right now, I am forming a partnership with a wonderful attorney - but since there is nothing official, I am working as a solo attorney. I am still handling my clients' matters - and they have seen that there has been no stoppage of work.

Do you have a trademark or copyright issue? Does your company have a social media policy? Does your company have a blog? Talk to me about how to do it all - correctly.

Did you receive a copy of my Intellectual Property Self Survey? It has a $600 value - and I am still giving it to my readers at no charge.

You can still find me at http://nyctrademarks.com and http://nyccopyrights.com - that does not change.

I am still on Facebook at http://facebook.com/anthonyvernalaw - that will not change.

I am still on Twitter at http://twitter.com/avernalaw - that will not change.

Happy New Year!

Music - now and then

2009-11-13T17:00:00.003-05:00

This was a good week.

I hope it was a good week for everyone else.

Now that Friday is almost ending, I hope everyone has some kind of relaxing weekend plans. Even if that means just letting your brain rest after a long week of work. (I know many of you out there had that.)

Can I share some music with you? I have been listening to and digging Raul Midon a lot lately. Yes, certainly, the classics of my playlist are R.E.M., Paul Simon, Tori Amos, The Clarks, Charlotte Martin, and Marvin Gaye. They still go round and round in my head, but Raul Midon has been taking up more and more space. Besides his being an amazing guitarist, I love the ups and downs that his songs record. It is always a personal journey through his lyrics, and his music mixes pop, rock, jazz, r&b, and latin beats.

Check him out. I know you will love it.

***

Speaking of music, there is a ticking time bomb in copyright law - that is the ability for musicians and composers to recapture their copyrights in music they make.

Music has always been treated as an exception to the Work-for-Hire provisions of copyright law.

This means that musicians are going to be recapturing their copyrights in about 2013. So, bands will be taking their music and selling their music directly. Yes, for all the musicians out there reading this who are not signed to a major label, you are already doing this. In fact, is this not what all businesses do? We sell our goods and services ourselves.

But, in exchange for keeping only a percentage, the major labels have better reach in sales and publicity than just the musician would.

So now those recording labels will have. . . a lot less music to sell.

Will the law change? Will record labels survive without these big back catalogues from the 1970s? It looks like they will have to churn out more current content that consumers can buy.

Do you have a copyright question? Call us at 212-201-5473.

***

Two years ago, ICANN (the international organization) started to test the ability to have Internet domain names be in alphabets outside of the usual Roman characters.

ICANN will begin to take applications for domain names to be in other languages and alphabets starting on November 16th. The first domains will appear live next year.

What does this mean from a trademark perspective?

It means a lot more websites to protect from trademark infringement and trademark dilution.

Let me give you an example. Your company has a website. Your company probably has several different forms of the website (for example, http://coca-cola.com and http://coke.com lead to the same place). If it does not, it should.

What happens if Chinese characters sound similar to "Coca-Cola"? Will the company want to buy all those domain names? Will the company want to police all those domain names for cybersquatting issues.

Can your company afford not to? http://nyctrademarks.com
***

If you are new to the list, do not forget to hit "reply" in your inbox and ask about your free copy of our Intellectual Property Self Survey, it is a $600 value which we will give to readers at no charge. Start a dialogue with us about your trademarks and copyrights.

Do not forget to read up on our Intellectual Property Security System. We can speak to you about it.

Do you have a question about copyrights or trademarks? Call us! 212-201-5473

Protect yourself. It's cold outside.

2009-11-06T12:37:00.003-05:00

It has been a busy, busy two weeks here. Yes, the Yankees won the World Series, defeating my Phillies 4 games to 2. I also did go to Game Four with my father and my sister. Family baseball fun in. . . November. We all wore lots of layers of clothing.

It was cold and chilly with the wind whipping around the upper tiers of Citizens Bank Park. (I drove to Philadelphia for the weekend.) It was a wonderful game, with Phillies third baseman Pedro Feliz hitting a game-tying home run in the bottom of the 8th inning. In the top of the 9th inning, Phillies' pitcher Brad Lidge had the game in hand, had two outs, had two strikes to Johnny Damon, who was able to get on base. Then he stole second. Then he stole third on the exact same play.

It was disheartening, but I went to a World Series game and I went with family and had a lot of fun. It was cold and you had to protect your skin with lots of layers of clothes.

***

Speaking of protecting yourself, many clients ask me about filing copyrights. I do file copyrights. Remember, when a work falls under copyright law, the creator of the work has a copyright in the work. No lawsuit can be filed without registering the copyright in the work, however. Also remember that damages that can be recovered go down when the copyright is not filed before infringement happens.

As for the filing copyrights, there are two mistakes that many people and businesses make when filing the copyrights themselves:

Filing separate works as collections.
Not understanding who the copyright owner is.

The main issue I find in copyright registrations is that a lot of people file many different works in one copyright registration. This is most common in the photography industry, where it is easy to collect photographs.

The problem? When a copyright represents many different works, then the copyright really represents a collection. Infringement upon a collection is weaker than infringement upon an entire work. So, make sure that you file each work (no matter what medium the work is on - be it canvas, film, or digital).

Another problem is understanding who the copyright owner is. The creator of a work that falls under copyright law is the copyright owner. The only exception to this is when a work-for-hire agreement is made and signed (it MUST be a written agreement). Make sure that the correct owner is listed in the registration (and make sure that the creator is listed, too, but just as a creator).

Copyright questions? Call us at 212-201-5473 or send an e-mail to law@nyctrademarks.com for more information

***

I have not been making a big deal of the Shepard Fairey copyright case or the revelations that Fairey himself has changed his story on the witness stand. But his lawyers are still on the case. Permit me to yawn. Ultimately, this case will turn on the work - not testimony from people. Whether or not the original Associated Press photograph was the inspiration for the "Hope" poster that Fairey made is not the issue - the issue is whether the poster is transformative enough.

***

Google is still fighting to claim the ANDROID trademark.

***

Yahoo settles a lawsuit that Mary Kay filed for allowing unauthorized Mary Kay resellers to advertise on Yahoo.

***

Lil' Wayne is sued for copyright infringement. This sounds like it has been said before.

Copyright law questions? Trademark law questions? Call 212-201-5473 to speak to Anthony Verna or send e-mail to law@nyctrademarks.com for more information.

A Text Will Lead You

2009-10-22T23:36:00.005-04:00

Good evening!

My Phillies are in the World Series. AGAIN! The Angels just defeated the Yankees to force a return to New York - my current home. But you never give up your teams. So I stay with my Phillies, and we have lots of Philadelphians here in New York making it big in the big city, so I never have home that far away.

***

Another week means it is time for another announcement. Text "avernalaw" to 50500 and you will receive my electronic business card. Do it right now if you are in the United States. In the "to" space, the number is 50500. The entire message is "avernalaw."

(Cellular phone company charges may apply.)

Do not forget to become a fan on Facebook at http://www.facebook.com/anthonyvernalaw.

***

There has been a great response to last week's announcement to the Intellectual Property Security System and to the Intellectual Property Self Survey - which helps with the first step in the system: Review.

Once again, if you have not asked for it, ask for the survey. It is a $600 value, which will go to you - my loyal readers - at no charge. It will help your company re-focus its intellectual property efforts. Send an e-mail to law@nyctrademarks and ask for the Intellectual Property Self Survey for your company.

What is great is that in the last week, I have received clients who are trying to focus on step two: Registration. You must register in order to receive all the benefits that the law provides.

***

We have all seen the "Hope" poster, with President Obama as the subject, that was created by Shepard Fairey. During the trial, Fariey admitted that he lied when he said he did not use the Associated Press' photograph as the inspiration for the photograph. Now the art world is up in arms about it.

I do not want a client who will lie to the press and then change his or her story when on the stand. It does not help the case one bit. Certainly, juries will not look happily upon a witness who changes his or her story - especially when that witness is one of the parties of the case.

I do want to look at this logically. This blog has tackled Fair Use before and I want to emphasize this: Fair Use is all about the work. It does not matter if Fairey used the original Associated Press' picture as inspiration or not. George Harrison was found to infringe a song even though he did not know he was writing a new song based upon the original work. If Fairey knows or does not know, the legality of the "Hope" poster does not change.

The original picture and the new poster are so similar that - purposefully or not - the picture has to be the inspiration for the new poster. The legal question is if the new work has transformed the original work so much that the inspiration was fairly used.

And that question is still very difficult to answer.

You must follow the system.

2009-10-16T12:20:00.002-04:00

Good day, everyone!

I was in Los Angeles last week for a seminar, and as soon as I returned to Newark, NJ, the cold weather hit me.

(Though I was staying in Santa Monica, where it is colder because of the ocean.)

Last night was fun, as my Phillies played - and won - in the first game of the National League Championship Series. Today's game is a 4 PM Eastern start, so it looks like baseball fans have to cut the work day short to watch the early game. That's the conundrum for baseball - the 8 PM playoff games end late, but the early games do start early. So, what is baseball to do? It, so far, has been putting the Yankees-Angels game late - New York and L.A. - as it knows the Yankees get ratings. But it still inconveniences a lot of people who are fans of the Phillies and Dodgers (especially a 1 PM Pacific start on a weekday).

Lots of my clients have conundrums, too.

What do I do when my trademark is registered?
Do I need to continue with the trademark opposition proceeding that has been filed against me?
Do I need to register? (You already know my thoughts on this from being loyal readers.)

It's here where I'd like to introduce a few new items:
1) The Intellectual Property Security System. There are four simple steps to the system - Review, Search, Register and Monitor. I can lead you through all these steps to help you and your company protect its intellectual property better. Call me at 212-736-0007 x4 and ask me about the Intellectual Property Security System.

2) A part of the system is our Intellectual Property Self Review kit. It's a fantastic kit that is developed for companies to help re-focus and understand their intellectual property. Companies, with the review kit, will be able to clearly understand what intellectual property they have and the importance to register each piece of intellectual property. This is a kit with a $600 value - it is what we sell it for - but because you are all loyal readers of the blog and newsletter, I am willing to give it to you at no charge. Just let me know that you read the blog or newsletter. Call me at 212-736-0007 x4 and ask me about your free copy of the Intellectual Property Self Review Kit. We'll mail it out to you.

*****

Do not forget to become a fan on Facebook: http://www.facebook.com/anthonyvernalaw

Do not forget to follow me on Twitter: http://twitter.com/avernalaw

*****

Recently, a judge in New Jersey ruled for a company in a trademark infringement lawsuit and awarded $570,000. What that tells me is that there is an importance for the last step in the Intellectual Property Security System - Monitoring. Many companies believe that it is acceptable to register the IP and go on with life. In fact, that is only a part of the solution.

Intellectual Property owners must monitor their marks in order to see how it is being used in our large, complex modern world. Is it on the Internet? Is someone speaking poorly of those marks? Is someone co-opting your mark? If you are not monitoring your trademarks, you do not know and you miss out on the ability to enforce the rights you are given by registering your mark that is in use.

*****

In the Republic of Ireland, the Church of Scientology lost a trademark battle to a company called Prosperity Recruitment, which is an advertising recruitment agency.

I find it funny because of one of the quotations: Prosperity Director, Gary Mullan said: “It is amusing that an Irish recruitment company’s services could be considered to be a close match to the goods and ’services’ described by the Scientologists”.

Continuing the Theme on Thursday

2009-09-15T22:15:00.002-04:00

We'll review the basics in a webinar on Thursday at 12:30 PM!

This will be a webinar on copyright and trademark law for small businesses. Learn what a trademark is. Learn what a copyright is. This is going to be a primer so that you're familiar with the terms and with the differences between these areas of intellectual property. Don't hesitate to protect your trademarks and copyrights!

Host: Anthony Verna

Call Title: Trademark and Copyright Law for Small Business
Call Date: Thursday, September 17, 2009
Call Time: 12:30 PM Eastern
Confirmation Number: 25417784
Primary Dial-In: 800-749-9945
Passcode: 7413 501#

You will need to dial in to hear and click the link at the time of the meeting to see the web portion.

To join the web conference: http://web.meetme.net/r.aspx?p=2&a=70542541778473
For a current list of alternate numbers: http://web.meetme.net/r.aspx?p=6&a=70542541778473

Click here to add to your Outlook or iCalendar!

Copyright Event this Week

2009-09-15T17:11:00.002-04:00

The FCC and the Copyright Alliance (a non-profit group aimed at helping to protect artists' rights under copyright law) are combining for a workshop in person and online.

On Thursday, September 17th, 2009, The Role of Content in the Broadband Ecosystem will take place. Its website is: http://www.broadband.gov/ws_bb_ecosystem.html

The event is fully interactive - notice that the FCC is now on Twitter - and questions will be accepted from the room and from the web.

This workshop will address issues pertaining to online content and its role in the broadband ecosystem. Questions to be addressed include:

How does the illegal copying of online content impact job creation in sectors of the economy that produce digital content?
What measures should be taken to address piracy and other mechanisms for illegal delivery of content? What agencies should have jurisdiction?
What are the tradeoffs between content protection and innovation in industries other than content?
Are there business and regulatory models that preserve innovation, increase consumer choice, and deliver economic returns to content owners?
What are other countries doing to protect content online and to encourage the availability of content that may help drive broadband adoption? What are the best practices in these areas?
Do measures to address piracy have the potential to raise barriers to market entry by, for instance, making it more difficult to market their products?

I hope you are able to join this event.

***

Do not forget that you can find me on Facebook at http://facebook.com/anthonyvernalaw and on Twitter at http://twitter.com/avernalaw for more daily discussions on trademark and copyright law.

How to set up your IP

2009-09-11T10:48:00.003-04:00

In the past couple episodes of ABC's "Shark Tank" (which itself is one version of a show called "Dragon's Den" in most countries), intellectual property has played a part. (Once again, the premise of the reality show is that businesspeople show their wares to self-made entrepreneurs who decide if they want to invest in the small business.)

One of the business men (who calls himself "Cactus Jack") decided to show all of his patents to the panel - ostensibly proving his value as an inventor and as a businessman who can make money on his inventions. One question I have been asked (though I do not practice patent law) is, "What percentage of patents make money?" The answer is hard-to-impossible to find, but the answer that I hear all the time is 5%. Where does that number come from? I wish I knew - I can't find it. But, needless to say, the point is that if the businesspeople behind the intellectual property are bad, then the intellectual property itself is bad. Now, Cactus Jack said he made $7 million on one product, which I think proves the point.

Another episode featured two women with a wonderful playpen cover. The issue that came out during the deal is that the patent was not a part of the business. The patent owners were the two women and the ex-husband of one of them. The problem there is that a person is a legal entity - but so is a corporation. So if a business is using the patent without an assignment or license from the owners, the business is technically infringing the patent.

This is something I see all the time. When a client comes to me anew, I always have to ask what the business plan is. How does the client see the intellectual property? When I am thrust in the middle of an issue, and I see that intellectual property at the USPTO is in the name of the owner, but not the corporation, I then have more issues to deal with.

Who is my client?
What assignments do I need to create and have executed?
What side of those assignments am I allowed to be on?

So, the IP needs to be a part of the business.

If you're a current client of mine, I've made sure that your IP is a part of the business. That's only correct.

How is your IP set up? Is all your IP registered? If you have a question, send me one at law@nyctrademarks.com.

***

There seems to be a recent change in the definition of contributory trademark infringement. And I say "seems" because I am not sure of all the ramifications of a recent ruling. Louis Vuitton (which is a company that defends its IP) has sued some companies that host parked web pages. A parked page is one that only lists links to other companies on a domain name that might be popular for one reason or another (for example, a misspelling).

But, on second thought, maybe there's nothing new here - except the large amount of damages. Louis Vuitton alerted the company and the company with the parked pages still had infringing websites. It is the job of any company who is alerted to trademark infringement to not contribute to it.

***

A trademark client of mine was featured in the New York Daily News recently, and you can click here for that article.

***

Don't forget to become a fan of mine on Facebook at http://facebook.com/anthonyvernalaw and follow me on Twitter at http://twitter.com/avernalaw for daily updates and discussions on the world of intellectual property and entertainment law.

Cather in the Rye Part 2: Electric Boogaloo

2009-08-17T12:19:00.002-04:00

Most of us have read J.D. Salinger's classic novel The Catcher in the Rye.

Not many of us ever tried to write a sequel to it.

(As a side note: In high school, I had an English class in which our assignment was to write a continuation of To Kill a Mockingbird, and I am sure that Harper Lee would never have approved of my sense of humor in that assignment.)

Frederik Colting is a novelist who wrote 60 Years Later: Coming Through the Rye, which is a sequel to Salinger's novel.

Oops. The problem with this idea is that it is a straightforward case of copyright infringement, as said in the last link.

This is a derivative work. Just like any "Weird Al" Yankovich song, any "Mystery Science 3000 Episode," The Wind Done Gone (maybe Scarlett was more appropriate in this analogy) or any of the "Star Trek" sequels in television and movies.

The characters are from Salinger's creation, and any story that follows from those characters are only allowed to come from Salinger (or anyone he appoints). He controls any derivative work.

Now, there are some arguments to be made for the sequel's right to exist and it might fall under Fair Use, but I think they are weak.

I think it's an interesting case, because we, as a society, have become used to freely taking and using characters (do a search on Google for "star trek fan fiction" or "x-files fan fiction" to see how some people use another's characters). However, only the copyright holder of the original work is allowed to control sequels to that work.

Housekeeping!

2009-08-02T19:07:00.003-04:00

I have some housekeeping to take care of and will write something of substance later on this week.

I have joined the law firm of Weiss Imbesi PLLC. You can view their website at http://weissimbesi.com for more information. For those of you who are clients of mine, this changes nothing. I will soon contact you personally to discuss this. What it means for everyone is that we can help you with a greater range of legal needs - from intellectual property (cradle-to-grave intellectual property protection) to commercial litigation to real estate law to employment law, we can help you.

Don't hesitate to contact me at law@nyctrademarks.com for more information on Weiss Imbesi PLLC.

We are holding a live trademark seminar to mark my beginning there. For those of you in the New York City area, please come! Please forward this to all your business contacts, too!

Trademark 101: Basics of Trademark Registration for Businesses

Weiss Imbesi PLLC

http://weissimbesi.com

http://nyctrademarks.com

http://nyccopyrights.com

Join Weiss Imbesi PLLC for a seminar on the Basics of Trademark Registration for Businesses. Learn what a trademark is, how the registration process works, the importance for registration, and keys that an attorney looks for in clients’ trademarks.

We will have drinks and light snacks at a convenient time after work.

Join us. We will do some networking for the first 15 minutes and then start the seminar.

When: August 10, 2009 5:30 PM – 7:00 PM

Where: Weiss Imbesi PLLC

462 Seventh Avenue, 12th Floor

New York, NY 10018

Cost: $50 for the entire seminar

RSVP: http://www.weissimbesi.com/pay.htm

Questions? law@nyctrademarks.com

Turn your TM into ®

Royalties and trusts

2009-07-02T07:35:00.003-04:00

Did you know that you can find me on Facebook? Just go to http://facebook.com/vernalaw - become a fan! There is more content there and more thoughts. Did you know you can follow me on Twitter? Just go to http://twitter.com/avernalaw - I post a couple (obviously short) thoughts a day there.

***

When it comes to Michael Jackson, the big intellectual property question is who owns the rights to all his royalties. According to his will, a trust has been created and all his property (real and personal) will be a part of the trust. Executors have been named for the trust and they have the ability to continue all businesses.

So, Michael Jackson as a person - through his music - has been entitled to collect royalties. It's a complex system - from his rights as a songwriter, to his rights as a copyright holder (through other companies), to his rights as a performer.

"Artist royalties" is not a traditional intellectual property type of royalty, but it is the right that an artist has to collect based upon being the performer of a song. Any time that a song is publicly performed, an artist receives a royalty payment.

Royalties are also collected by the songwriter (even if the songwriter is not the holder of the copyright) and by the copyright owner.

Certainly, spending has gone down (it was reported that Michael Jackson has spent more than $30 million a year) with his death and album sales have gone up and radio play of his songs have gone up (many radio stations did go all-Michael Jackson for a day or two after his death), there are more royalties coming posthumously. (As a sidebar, many radio stations pay ASCAP and BMI a flat royalty rate, but each song played is still tracked so that if one artist is played inordinately more than another, that artist will receive the correct amount of royalties.)

***

For those of us with an entrepreneurial spirit, ABC has a show starting later this summer called "Shark Tank." For those of you familiar with "Dragons' Den" that is shown on BBC America in the United States, "Shark Tank" is the American version. The premise is that an entrepreneur presents his idea to some business people who are acting as venture capitalists. The "sharks" or "dragons" critique the idea and decide if they want to invest in the business and what the terms would be.

I am a fan of "Dragons' Den" and am looking forward to the American version.

***

Speaking of ABC and Americanized foreign television shows, I was made aware of a lawsuit that seems to be in a holding pattern. ABC's "Wipeout" bears many similarities to a Japanese show called "Takeshi's Castle," which was turned into the overdubbed show "MXC." ("MXC" is owned jointly by the owners of "Takeshi's Castle" and an American production company.)

The similarities are such that the makers of "Takeshi's Castle" had filed a copyright infringement lawsuit against ABC and the makers of "Wipeout." There is precedent for winning an infringement claim when there are similarities to a previous work, such as a commercial having elements of James Bond movies.

Video! Announcing a new video feature

2009-06-24T09:38:00.002-04:00

Announcing a new video feature of this blog:

Ask the trademark and copyright lawyer! (Yes, entertainment law questions are welcome, too.)

Post a quick question on YouTube that I can answer. Comment here on the website (http://tmcentlawforum.com) or send an e-mail to law@nyctrademarks.com with the link to your YouTube video. I'll edit and answer next week.

Why Register?

2009-06-09T13:01:00.003-04:00

The web seminars that I have been doing have been nothing less than fantastic.

One question that someone always asks is, "Why should I register my trademarks or copyrights?"

There are a few reasons for registering.

Public notice. In both a trademark and a copyright registration certificate, the owner of the intellectual property is listed. Trademark certificates are filed with the United States Patent and Trademark Office. Copyright certificates are filed with the Library of Congress.
Public descriptions. In a trademark certificate, the goods and services are listed. In a copyright certificate, a brief description of the work is filed, along with two copies of the work itself. The owner of the intellectual property is also listed.
Geography. All registrations are good in all fifty states and all territories of the United States.
Barriers to lawsuits. If a trademark is not registered, it is considered a common law trademark. The goods/services and geography of the mark must be argued in court if there is infringement. No infringement lawsuit can be filed on a copyright that is not registered. Should there be infringement before registration of a copyright, the copyright owner loses damages (statutory damages up to $150,000 and attorney's fees) and is only allowed to collect actual damages for the copyright infringement.
The power of federal law to help with damages in any intellectual property lawsuit comes only with registration.
Ease of cataloging. This is a thought that not many people have. If a mark or work is registered, then there is a number. Should the mark or work be sold or licensed, then it is easy to state in a contract what the number is and what the property is.

*****

People also ask me for examples in different industries. Here are a few.

Syrup manufacturers are gearing up for a trademark dispute: http://www.nola.com/news/index.ssf/2009/06/snowball_wars.html
Tony LaRussa (manager of the St. Louis Cardinals) and Twitter settle their trademark dispute: http://www.stltoday.com/blogzone/bird-land/bird-land/2009/06/tony-la-russa-and-twitter-settle-lawsuit/
Intel and Psion settle their trademark dispute: http://jkontherun.com/2009/06/01/psion-intel-settle-netbook-trademark-infringement-case/
The Naked Cowboy (owner of many trademarks) sues a station for trademark infringement: http://tinyurl.com/lldt3l

****

New Webinar on Thursday afternoon!

This will be a webinar on copyright and trademark law for small businesses. Learn what a trademark is. Learn what a copyright is. This is going to be a primer so that you're familiar with the terms and with the differences between these areas of intellectual property. Don't hesitate to protect your trademarks and copyrights!

Title: Copyright and Trademark Law for Small Businesses

Date: Thursday, June 11, 2009

Time: 3:00 PM - 4:00 PM EDT

After registering you will receive a confirmation email containing information about joining the Webinar.

System Requirements
PC-based attendees
Required: Windows® 2000, XP Home, XP Pro, 2003 Server, Vista

Macintosh®-based attendees
Required: Mac OS® X 10.4 (Tiger®) or newer

Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/268310634

When Areas of Law Cross

2009-06-02T19:19:00.004-04:00

There is an interesting lawsuit recently filed by Ozzy Osbourne against former fellow band member Tony Iommi over the Black Sabbath band name.

BLACK SABBATH is a registered trademark number 2399391. Iommi registered it back in 2000.

There are a couple issues in this situation that do not seem to be covered in any article. How long has Ozbourne not been using the name (which is briefly touched upon elsewhere)? Was there any agreement (doubtful) when band members broke up? And, what do state laws have to say about bands?

Yes, state laws. There are many states who are protecting band names as long as there is at least one member of the original group in the current group.

In this situation, I do have to wonder about Osbourne's claim since he has not been using the name of Black Sabbath himself for many years and now suddenly he wants to reclaim the rights to the mark. Federal law should prevail over state law, but that issue is never clear-cut.

****

The web seminars have been popular, so I will continue to do them.

Copyright and Trademark Law for Small Businesses

Join us for a Webinar on June 5

Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/346743610

This will be a webinar on copyright and trademark law for small businesses. Learn what a trademark is. Learn what a copyright is. This is going to be a primer so that you're familiar with the terms and with the differences between these areas of intellectual property. Don't hesitate to protect your trademarks and copyrights!

Title: Copyright and Trademark Law for Small Businesses

Date: Friday, June 5, 2009

Time: 11:00 AM - 12:00 PM EDT

After registering you will receive a confirmation email containing information about joining the Webinar.

System Requirements
PC-based attendees
Required: Windows® 2000, XP Home, XP Pro, 2003 Server, Vista

Macintosh®-based attendees
Required: Mac OS® X 10.4 (Tiger®) or newer

Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/346743610

Coldplay and Fans on Youtube

2009-06-01T04:50:00.003-04:00

As some of you may have heard, there is a copyright lawsuit between Joe Satriani and Coldplay about Coldplay's song "Viva la Vida." Basically, Satriani is claiming that Coldplay infringed Satriani's copyright on his song "If I Could Fly."

Of course, Coldplay is denying any copying.

Are the songs close? You can judge for yourself. Just click on any of these different links in order to hear comparisons between the two songs (and many others, as you can tell) and to read comments left by other users. There are even people leaving erudite videos about the differences and similarities between the two songs.

What is the difference between this and past cases? It's not really the possibility of infringement - even Yusuf Islam (born Cat Stevens) has made his own public claims (but has not filed a lawsuit) about infringment. Infringement can happen accidentally. George Harrison experienced this. The issue there is if there is enough originality in the original work(s) to have a copyright not just in the full expression of the song, but in each and every phrase as well. This is well-worn copyright territory.

Or [prior art] may simply reflect these oft-quoted words from the Second Circuit: "It must be remembered that, while there are an enormous number of possible permutations of the musical notes of the scale, only a few are pleasing; and much fewer still suit the infantile demands of the popular ear. Recurrence is not therefore an inevitable badge of palgiarism." Darrell v. Joe Morris Music Corp., 113 F.2d 80, 80 (2d Cir. 1940)

What is very interesting here is that all the amateur musicologists may have an impact upon the case. The various videos with analysis are amazingly detailed, and the opinions are recorded on YouTube as well. The videos could be previews of the two sides' arguments. The comments could be previews of what jurors might think.

Is this infringement? Is there enough originality in the riff to have a copyright in the expression or is it just another pleasing popular music riff?

***********

Another Webinar on Trademark and Copyright Law for Small Business!
These have been popular, so I will keep doing them.

Join us for a Webinar on June 2
https://www2.gotomeeting.com/register/469346619

This will be a webinar on copyright and trademark law for small businesses. Learn what a trademark is. Learn what a copyright is. This is going to be a primer so that you're familiar with the terms and with the differences between these areas of intellectual property. Don't hesitate to protect your trademarks and copyrights!

Title: Copyright and Trademark Law for Small Businesses

Date: Tuesday, June 2, 2009

Time: 11:00 AM - 12:00 PM EDT

After registering you will receive a confirmation email containing information about joining the Webinar.

System Requirements
PC-based attendees
Required: Windows® 2000, XP Home, XP Pro, 2003 Server, Vista

Macintosh®-based attendees
Required: Mac OS® X 10.4 (Tiger®) or newer

Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/469346619

Webinar on TM and C law - May 29th

2009-05-27T17:13:00.001-04:00

Join us for a Webinar on May 29

This will be a webinar on copyright and trademark law for small businesses.

Title: Copyright and Trademark Law for Small Businesses

Date: Friday, May 29, 2009

Time: 11:00 AM - 12:00 PM EDT

After registering you will receive a confirmation email containing information about joining the Webinar.

System Requirements
PC-based attendees
Required: Windows® 2000, XP Home, XP Pro, 2003 Server, Vista

Macintosh®-based attendees
Required: Mac OS® X 10.4 (Tiger®) or newer

Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/574490082

Cartier goes extreme! Then it drops extremism.

2009-05-27T15:40:00.005-04:00

In today's world, sometimes the hammer is not good to use, because all it brings is weird and strange publicity.

I think that Cartier leapt before it looked when it filed suit against Apple for apps for the iPhone and iPod Touch. The app were a fake watch and a fake gold watch, both with the distinct Cartier mark and look. This means that the company who made the software could have caused confusion in consumers who might have thought Cartier approved the software. Apple reviews all software for the iPhone and iPod Touch, so Apple also caused the infringement.

However, (and as we will soon see) would not a letter to Apple's internal legal department have been enough? A company with as much on its own name as Apple would know and understand the problems this software created and the app could easily be removed from Apple's iTunes store. Of course, this is exactly what Apple did, but why the lawsuit, then? It makes me wonder about the machinations - sometimes it's good to wield the hammer, but that does not mean that it always needs to be used. Did Cartier contact Apple first? Did Apple respond? I really would love to know what happened.

***

Is literary fan fiction copyright infringment?

Fan fiction can be classified as the stories written by the fans of a literary (or other media ) franchise. Many people write fan fiction (and it probably started with "Star Trek" and the "X-Files" back when I was in college online - but I'll accept any earlier examples). The stories are not sold and only appear as if they are written for fun.

This is the key - the stories are NOT sold. One of the guidelines to determine if a work falls under Fair Use is if it does not harm the market for any original work. Here, since those fan fiction stories are not sold, the markets for original stories are not harmed, so I would argue that fan fiction is not copyright infringement.

***

They are popular! Thank you all for logging on! I will have another trademark and copyright law seminar online on Friday, May 29th at 11 AM. I will send details as soon as the website URL registers. Please join then!

Another web seminar

2009-05-20T09:31:00.002-04:00

Due to the success of this week's web seminar, and because I received some requests from people to do it again on a different day, I will be doing one on Friday, May 22 at noon (EDT).

1. Point your web browser here:
https://www2.gotomeeting.com/join/647724971

2. Use your microphone and speakers (VoIP) - a headset is recommended.

Or, call in using your telephone.

Dial 218-844-4920
Access Code: 647-724-971
Audio PIN: Shown after joining the meeting

Meeting ID: 647-724-971

Once again, we'll go over the basics of trademark and copyright law for small business.

New Webinar Scheduled

2009-05-17T18:59:00.003-04:00

A new webinar on trademark and copyright law has been scheduled. I will keep it an hour long and explain basics about trademark and copyright law for small business. You can do it on the web or on the phone!

11 AM (EDT), Tuesday May 19th.

Web directions:

1. Point your browser to https://www2.gotomeeting.com/join/272827610

2. Use your microphone and speakers (VoIP) - a headset is recommended.

Telephone directions:

Dial 218-844-4928
Access Code: 272-827-610
Audio PIN: Shown after joining the meeting

Meeting ID: 272-827-610

I look forward to having everyone there to discuss these topics!

Names Will Never Hurt Me

2009-04-30T16:03:00.006-04:00

Good afternoon!

It's a wonderful spring day here in New York City. That means that there is a lot of strange intellectual property and entertainment law issues popping up. Let's take a look at a few of them.

If your business in the United Arab Emirates, "Dubai" can no longer be a part of the trademark. This is the first time I heard about a certain place being banned as a trademark. My guess is that there are too many companies with "Dubai" in the mark, rendering it almost meaningless as a trademark. This reminds me of two issues with trademark law here in the United States: 1) Having the name of a place in a trademark is difficult to register and 2) There are a few words or phrases that are not allowed to be a part of any trademark in the United States.

1) Having the name of a geographic location in an American trademark paints you into a corner. The first corner is if the goods/services come from that location - then the mark becomes descriptive of the goods/services. The second corner is if the goods/services do not come from that location - then the mark is misleading. If a client comes to me with a mark that has a geographic location, then I have to counsel that client accordingly.

2) There are some explicit words that cannot be used in a trademark. Today, that can be found as 36 U.S.C. §220501, which bans the use of the word the word "OLYMPIC" and other related words the United States Olympic Committee "owns" in non-USOC trademarks. Also, let me quote 15 U.S.C. §1052 here for other words that cannot be used in a trademark. A mark cannot "[consist] of or [comprise] immoral, deceptive, or scandalous matter...." So, if a mark has one of the seven words you cannot say on television, it will not get far in the registration process.

*****

Rapper Lil 'Wayne has been sued for using a song sample in one of his songs. Now, he is trying to go after the producer of the song for indemnification of those royalties and damages due to the infringement. He seems to have this problem again and again and it makes me wonder why nobody is making the clearances more quickly.

It is a simple process (though the paperwork does get to be plentiful when there are multiple samples that an artist has on an album), so I do not understand why those managing his music and his career cannot get the clearances once the recordings are made.

*****

When registering an Internet domain name, if a trademark is to be used, the domain name must be registered in "good faith." I am fairly sure that the owner of goldmansachs666.com is not a domain name in good faith.

If this situation does not fit into the domain names rules, then I certainly believe it falls under trademark dilution, which I have discussed before in this blog.

Seminar via Skype

2009-04-22T08:37:00.002-04:00

Tomorrow, Thursday April 23rd, 2009 at 4 PM EDT, I will be doing a trademark and copyright law seminar for small businesses and artists via Skype. It will be in the form of a conference call. My Skype name is avernalaw, so add me to your list now and be online before 4 PM EDT tomorrow.

Topics covered:

What is a trademark.
How the trademark registration process works.
What makes a good, strong trademark.
What to do after a trademark is registered.
What is a copyright.
How a copyrighted work is used in other works properly and improperly.
And many more.

Just log in to Skype, add avernalaw to your list, and I'll bring you into the conference call at 4 PM EDT when you log in.

We've been busy

2009-03-12T10:32:00.004-04:00

There is a lot happening in the intellecutal property world.

First off, I have been making lots of appearances elsewhere.

View an interview I did with New York Business TV on dead trademarks (bring them back to life). Just click on my picture on the right menu.
You can find me quoted on a new ESPN article by Paul Lukas on sports uniforms.
I also have two articles at Communicate Value, a blog that my friend Christine Gallagher writes on new media and businesses. There is a trademark basics article and a copyright basics article.

You can now find me on Twitter. I post two or three intellectual property thoughts a day. Click here to follow me on Twitter.

You can still become a fan of the Law Firm of Anthony Verna on Facebook and get extra updates.

The companies founded by Jimi Hendrix' heirs (his father and sister) are suing other companies for trademark infringment that sells other Jimi Hendrix-branded merchandise. In fact, one of the defendants was enjoined from using "Hendrix Electric Vodka" in a previous lawsuit. I find this suit fascinating, because it is a mix of different areas of law. One one hand, you have the trademark interests of the company that doles out the intellectual property of a celebrity who has been dead for 40 years and has not been creating anything new, but on the other hand you have a company creating its own trademarks that resemble another company's trademarks.

There are a couple of very interesting and different copyright infringement lawsuits. The famous one now is about the picture of President Barack Obama above the word "Hope" being modeled after an associated press picture. The artist answers that the nature of the use - painting the picture and placing the word below the face and using it in a political sense - is transformative enough to make it a fair use of the original photograph. It's a difficult argument in my opinion, because Fair Use is never an easy argument to make. It is a topic that has appeared here a few different times, because the guidlines of how much change is needed to transform a copyrighted work into a compltely new, original work is really not known. Here, the artwork is much more stylized than the photograph - the colors are completely different, and the contours of the face are brought out along with a red, white and blue scheme for the political arena. It's certainly not a photograph, but is it transformative?

Also, a local Brooklyn band is looking towards French President Nicolas Sarkozy for possible copyright violations - such as not paying enough money for use of a song from the band on Sarkozy's political party's website.

The Ford Futura. Wait, What?

2008-12-14T17:29:00.004-05:00

The Lincoln Futura: Car enthusiasts will remember this concept car from the 1950s. Television enthusiasts will remember that it was the basis for the Batmobile from the Adam West "Batman" series.

In 2005, Ford (owner of Lincoln) wanted to name a new car line the Futura. The problem? Ford (and all subsidiaries, such as Lincoln) hadn't used the Futura name in years (50 years, to be exact).

Pep Boys makes and sells Futura-brand tires. The problem now? If Ford and Pep Boys - which are both in the automotive industry - would that not cause consumer confusion? Would Futura tires be made specifically for the Futura car? (No. But we know that there would be consumers who would think so.)

There are over 250 registered "futura" trademarks in the USPTO database. So, in other industries, the mark is not an issue.

The limit for reclaiming a "dead" trademark (one that the company no longer is using) is three years. Pep Boys registered the "Futura" mark for tires in 1990. This means that even though one is tires and one is automobiles, because their industries are similar and the consumers are similar and the goods would appear in similar (even if not the same) sales channels, the marks conflicted.

Ford, unable to use "Futura," went with "Fusion." Anyone who is extremely knowledgeable about cars or is European (or, like me, has European friends) knows that Ford didn't really help itself because the Fusion in the Americas is not the same car as the Fusion sold in Europe. That's a problem, though, for a different blog.

Pardon the Interruption

2008-11-07T10:44:00.003-05:00

I just wanted to let everyone know that I did an interview with New York Business TV which can be found at http://newyorkbtv.com/ (it will be the main interview that loads with the site until November 10, 2008).

It is a short interview about the basics of trademark law and why businesses need to be wary of protecting their intellectual property.

Re-use Art. Create something new.

2008-11-04T06:19:00.002-05:00

The blog has tackled the copyright law concept of Fair Use before. It's a fun concept, with no helpful guidelines, that allows the use of copyrighted works in new works; meaning that there is no copyright infringement.

The main reason for this exception is to allow comment or criticism of copyrighted works.

(Please note that if you have any questions about the very complex exception called Fair Use, do see a copyright attorney and ask.)

One of my favorite re-uses of copyrighted materials comes in the form of "Garfield Minus Garfield," which was created by Dan Walsh. In the worlds of Dan Walsh on the site, "Garfield Minus Garfield is a site dedicated to removing Garfield from the Garfield comic strips in order to reveal the existential angst of a certain young Mr. Jon Arbuckle. It is a journey deep into the mind of an isolated young everyman as he fights a losing battle against loneliness and depression in a quiet American suburb."

It's hilarious. It's wonderful. And it's completely dependent upon Jim Davis' own "Garfield" comic. In fact, Jim Davis has made his own book entitled Garfield Minus Garfield in which Dan Walsh has written the foreword.

Dan Walsh was kind enough to answer some questions about his creation. All thanks to Dan for taking some time out to answer the questions.

What gave you the inspiration to create "Garfield Minus Garfield"?
The premise of removing Garfield from the strip had been knocking around message boards for a couple of years before I first saw it, but when I did it genuinely made me laugh out loud. I decided that if I found it funny, my friends probably would too.

Do you think you criticize the "Garfield" comic itself, since you try to highlight the character flaws in the main "Garfield" character, Jon Arbuckle? What other comments about the comic do you try to make?
That's the strange thing about this project, even though I remove the title character, the strips still remains as almost an ode to Garfield. I guess that why even Jim Davis likes it.
I think also Jon has been slightly crazy all along: Garfield has actually been a distraction from just how lonely Jon actually is. I think I try to say: "look at how insane this guy is that you've been laughing at since you were a kid - isn't it odd that we didn't notice before?

How did you first begin to create your comic? Is there any difference between how you do it now or how you did it when you first began? How do you decide which of Jim Davis' entries to use?
In the beginning I took a particular interest in amending the strips that made Jon seem well, a little manic depressive, I don't know why but they made me laugh the most. So I made that my angle and around January 08 I posted a few to my blog travors.com. I enjoyed making them so much that I eventually created a blog devoted to them. I still try to find strips that highlight Jon's instability now but they're getting harder and harder to find!

How does the creation of your comic differ now that you have the book deal and are - in a way - "authorized" than when you first did it and were on the outside?
Well first thing - I didn't receive a book deal, nor do I think I should have. A few months ago Paws Incorporated were kind enough to offer me a fee to write a foreword to a book by Jim Davis inspired by Garfield Minus Garfield and I accepted. I was very surprised! But absolutely delighted, it was a very flattering to be asked to write the foreword. But the creation of the strip hasn't changed at all, the only thing Paws Inc asked me to do was to include a link to Garfield.com on the site, which I gladly did.

How did people react when you first started?
The fan mail has always been really positive, it's been really nice to see such a kind side of human nature - when you make people laugh, they're really appreciative. The media were fantastic too, G-G has been featured in Time magazine, Rolling Stone, The New York Times, The Washington Post and The New Yorker oh.... and the Irish Sunday Tribune :)

When did you decide to bring it out from a secret to a website and did you have any hesitation?
After the interview with The Washington Post that also included Jim Davis - he actually praised the site, so I felt it was ok to "come clean".

Another video about the websites

2008-10-16T11:16:00.001-04:00

Here is a video about the copyright website of the Law Firm of Anthony Verna - nyccopyrights.com:

(For those of you unable to view embedded objects, the website for the video is: http://www.youtube.com/watch?v=PwfuFNWSF5E)

A video about my website.

2008-10-01T00:02:00.004-04:00

Here is a video about the website for the Law Firm of Anthony Verna. I hope that if you have any questions on how to use my website, this video will help you greatly:

Ch-ch-ch-changes

2008-07-26T00:07:00.004-04:00

The NBA's Seattle Supersonics have moved to Oklahoma City and will play there from now on. The team's new name is not yet known. However, the NBA filed the applications for six different trademarks with the U.S. Patent and Trademark Office. Those names include Barons, Bison, Energy, Marshalls, Thunder and Wind.

What does this mean?

Apart from the name being chosen from one of these selections, not much. Filing a trademark application at this point in time only means that the NBA has a bona fide intent to use the mark in interstate commerce. This does not mean that the NBA is using the mark and, in fact, the NBA is unable to own a registered trademark until the mark is used in interstate commerce (and can provide proof). As you can guess, in trademark law parlance, this is called an intent-to-use trademark application or a 1(b) application, after the applicable section of law.

What makes this a little difficult to swallow is that the NBA does NOT have a bona fide intent to use five of the six trademark applications. Only one of those names will be chosen.

The U.S. Patent and Trademark Office does not review intent-to-use trademark applications for their good faith. Still, I am troubled because the attorneys for the NBA know that only one mark will be used and five of those six will not be used.

Thumbs Down

2008-07-22T10:06:00.003-04:00

Does it seems as if fewer movies have received a the approval of two movie critics as "Two thumbs up"? That is because the phrase has not been in use since late 2007.

As many people know by now, At the Movies with Ebert and Roeper will be ending its television run, which started with the now-famous pairing of Gene Siskel and Roger Ebert in 1975. The pair of movie critics (now Roger Ebert and Richard Roeper) will most likely start their own venture in television.

As Ebert's statement on his website says, "We made television history, and established the trademarked catch-phrase 'Two thumbs up.' The trademark still belongs to me and Marlene Iglitzen, Gene's widow, and the thumbs will return."

Quite true. The trademark for "Two thumbs up" is owned by The Ebert Company, Ltd. and Siskel Productions, Ltd. How smart. Knowing of our own mortality, the two friends started shell companies (which is what they really are) in order to keep the trademark going, knowing its importance in the entertainment industry, in order to continue it.

There were varying reports, with Disney (the producer of the show) saying that Ebert wasn't allowing Disney to use the trademark while negotations on Ebert's role continuing and Ebert saying that Disney pulled the use of the mark itself.

Either way, I wanted to point out the intelligence of having two corporations own the trademark - as corporations can theoretically live on forever, while people (we know) cannot and I wanted to point out that, all too often, reports misidentify simple points of intellectual property. Looking back at the USA Today story, the report says that Ebert owns the "copyright" on "Two thumbs up," which is exactly what I heard this morning on the news - and my ears perked up.

Getting back to basics, it's quite simple. The trademark refers to some kind of goods or services in a business (in this case, "Two thumbs up" refers to, quite simply, "television programs and appearances in the field of motion picture critiques"). A copyright is a right in a work of art (usually) that prevents anyone but the creator from making copies.

****

An article in the Montreal Gazette - the main English-language newspaper in Montreal - discusses how the United States sees Canada lax in intellectual property protection. I found it to be a short, but interesting read.

Housework. And sex keeps selling (but you knew that).

2008-06-02T13:41:00.005-04:00

I did receive a few e-mails about the last entry, so a mailbag will be the next entry to everyone on the mailing list.

In the meanwhile, the blog (oh, how I hate that word) did receive a few accolades and I would like to acknowledge them now.

LexisNexis recognized this blog in its Trademark and Copyright Law Centers. Just look for this blog in the "Top Blog" page just off the centers' main web pages.

The ABA Journal's website has included this blog in its listings.

This blog can also be found on Justia.com's listing of blogs.

Thank you everyone.

*****

There are some sexy trademark battles, after all.

Victoria's Secret is fighting Sexy Hair Concepts LLC over - yes - the word sexy. The Trademark Trial and Appeal Board ruled that Victoria's Secret's use of the trademark "So Sexy" for its own hair care line causes consumer confusion with Sexy Hair Concepts LLC, which uses the word "sexy" in its own family of trademarks for haircare.

Victoria's Secret has asked a federal court to review the decision because of a study showing that there is not a distinctive association between the word "sexy" and haircare products with Sexy Hair Concepts LLC.

I am in the wrong market (being male, I think, eliminates me from using any hair care products described as "sexy"), but Sexy Hair Concepts does seem to have created a multi-million dollar business (its own briefs filed with the Trademark Trial and Appeal Board state that the company's sales went from $15 million in 2001 to $23 million in 2003).

So, the company has established a trademark that is not descriptive ("sexy" does not describe something intrinsic to hair products - only how the company hopes that the consumer's hair looks after using the products), has strong sales and many advertising campaigns to tie the phrase "Sexy Hair" to its company. Doesn't it - effectively - have the rights to the word "sexy" in hair care?

The goods are similar (hair care products). They are sold in similar channels (with other hair care products). The marks are similar enough (they both have the same main, dominant word - "sexy"). These are the basic reasons that the TTAB upheld the "Sexy Hair" family of marks to stand as strong marks, but Victoria's Secret "So Sexy" marks in the same industry are not allowed.

I do not expect a federal court to overturn this decision.

For all the readers, since the next post will be a mailbag, can you think of a time when the same trademark exists in more than one product?

Wow. That's a world of infringement. Or is it?

2008-03-30T22:53:00.004-04:00

Blizzard Entertainment (a video game company that has made games such as "Starcraft," "Warcraft" and the hugely popular "World of Warcraft") is suing a person in Arizona for making software that allows the game to be played . . . automatically, so that no person has to be around for a player's character to be in the game, interact with the game, and play. (Why would anyone want a game to be played automatically? Money.)

There are two main issues here: Copyright law (infringing the copyright of Blizzard Entertainment - do not forget that computer programs are treated as literary works in copyright law) and a violation of the End User License Agreement (which governs software when you install it on your computer - and we can fully admit that you don't read it).

I am reminded of a copyright case that is 25 years old and others that have followed it. According to Midway Manufacturing Co. v. Artic International, Inc., 547 F. Supp. 999 (N.D. Ill. 1982), a video game has two distinct components: the program code and the audiovisual display components. (At the time, both could be registered so a computer program could have two copyrights - but this is not the case today. Today, only one copyright - either the code OR the audiovisual work - may be registered in a computer program.) Artic International bought arcade machines (like "Pac-Man" and "Galaxian") and altered the circuitry in order to change the games. The court in Midway ruled that the alteration is a violation of Midway Manufacturing's copyrights. This was because the works were fixed in the circuity of the machines and repeated themselves.

Eventually, the world was introduced to the Game Genie. What's the Game Genie? It's a device that, for console video games (think Nintendo and Playstation instead of PC), allows the player to cheat by entering codes at a start-up screen. The device does NOT alter the video game code, but it changes the results by intercepting the while it is being processed by the device, changing the outcome. So it does not fall under the same situation as the Midway case. What do you do if you are Nintendo? Of course, you file a lawsuit against the makers of the Game Genie - and you claim that the Game Genie infringes the copyrights of the games you make. Lewis Galoob Toys, Inc. v. Nintendo of America, Inc. (9th Cir., 1992) states that a user owns the copy of the work and can do what he or she wants to with this one work - what copyright law defines as fair use. Game Genie does not alter the code of the product, but it allows the owner of the copy to experiment with the work.

Going back to the original situation - under the two cases, can a person create software to play a game automatically (called a "bot")? It almost seems as if that is possible under copyright law - as the owner of the copy of the work can experiment (as long as the code is not changed). The facts here are quite different than either case, so it is possible that a different decision could be made down the line.

Broken Dreams

2008-03-18T22:41:00.002-04:00

Imagine that you are a big fan of a presidential candidate and that you wanted to show your support for this presidential candidate. What would you do to show that you are a big supporter? Wear buttons? T-shirts? Show up at rallies? How about print t-shirts with the candidate's name on them in the fonts of various baseball teams.

There was a website set up by a Barack Obama supporter called obamaofdreams.com that did just that. On the site, various t-shirts came in the styles of Major League Baseball teams. According to the creator of the site, Morris Levin (scroll down to see the reference), “One of my underlying goals is to marry Obama with mainstream culture through baseball, and I’d like to think that everyone here can appreciate the results, regardless of your political affiliation."

The website, however, is now closed.

What happened? Quite simply, an attorney contacted Levin contending that Levin violated the league's trademarks.

Before you continue reading, please click on the last link to take you to thesmokinggun.com's article on the site (it also has a few examples of the t-shirts). Did you read it? Good.

Thesmokinggun.com brings up two different thoughts without probably realizing it: 1) distinctiveness of trademarks and 2) transformation of trademarks.

Both ideas in trademark law underscore the biggest philosophy - consumer confusion. Consumers must be able to understand the source of goods and services and the quality of those goods or services - else trademarks fail as a system.

Here, if Levin's t-shirts are so transformative that consumers can tell that one of the t-shirts does not come from a baseball team - even if the marks used are so distinct - then it can be argued that his marks do not infringe or dilute the trademarks of baseball teams. On Levin's side is that certainly, baseball teams do not routinely print t-shirts of political figures in their own fonts. On baseball's side is that the marks are so distinct that those fonts are only representative as a source of goods from a baseball team. Plus, baseball teams make t-shirts (as well as many other kinds of clothing). It's a difficult argument, but there arguments for both sides.

One other issue - is a font a trademark? Generally, I would answer that a font is not a trademark. However, many of these teams have operated for many years using the same font and the same (or similar) colors. At some point, those fonts are associated with that team and with that team only.

Wintry Mix

2008-02-25T15:01:00.003-05:00

Good afternoon, everyone. I am recovering from Toy Fair last week and another winter illness that hit me this weekend. I hope everyone is in good health!

The College Board is suing a company called Karen Dillard's College Prep that has its own review courses for the SAT and PSAT, claiming that some of the questions in the review course are active questions on the SAT and PSAT. Those claims would mean that KDCP is infringing the College Board's copyright on those questions.

This reminded me of PMBR (now partnered with Kaplan), one of the companies that has a review course for the bar exam. PMBR's specialty is aiding in getting a better score on the Multistate Bar Exam, the multiple choice test that is a part of most states' bar exams. PMBR finally lost a case in 2006 in which copyright infringement was alleged by the National Conference of Bar Examiners, who writes the Multistate Bar Exam. PMBR was fined almost $12 million. Wow.

The standardized-review-test industry is in a difficult position. If a company exists, it has to have a mix of its own questions (which may or may not be good enough) and questions that have been used on exams (they're good enough because they were on exams). If I remember correctly - and I can find no outside source to confirm this - one of the founders of PMBR claimed to have a photographic memory (do any lawyers who took this course remember those claims) and that PMBR had been sued before for copyright infringement (but no success were in those suits). It's a tough balance, having to rely upon a template in an industry that comes from another.

****

An attorney is trying to register a trademark. That's not unusual. His mark? "Cyberlaw." Seriously.

I find this to be rather egregious. After all, I took a class in law school called Cyberlaw that was a mix of law and technology. It's easy to find a Wikipedia page on the topic. Even though the word was registered as a trademark in 1995, it expired in 2000 and today it must be considered a generic term that's not right for a trademark registration in legal services.

****

I look forward to reading more about the case a man filed in Maryland, claiming that the Baltimore Ravens used the logo he created. The Ravens have claimed that they never saw the logo and then changed their logo when they were made aware of the possibly infringing logo.

International Quick Hits

2008-01-31T13:24:00.000-05:00

Yes, if you are on the RSS feed, you are getting this. A new goal for 2008: to post more. Readers of the website and on the RSS feed will receive this. Those getting the e-mail will not.

RapidShare

Similar to the infamous Napster cases in the United States (from the earlier part of this decade), and using something similar to a new provision (well, it's new in copyright terms) in the U.S. Copyright statute, German content licensing authority GEMA won a copyright infringement case against RapidShare, which allows users to save and share files.

Here is a description of RapidShare: The site allows any user to upload files of up to 100 MB and up to 2000 MB for premium members. The user is then supplied with a unique download URL which enables anyone, with whom the uploader shares it, to download the file. No user is allowed to search the server for content; all files have to be downloaded by following a given URL.

It certainly allows a user to upload any file - whether that user owns the copyright or not - to the RapidShare service, and then give the URL to the file to any of the user's friends. Certainly (under U.S. law - §512 of the Copyright statute, but it also seems as if German law is similar), it is the website's responsibilty to take down any copyrighted material that the website does not have permission to hold.

CRB

The Copyright Royalty Board is holding hearings on the rates on digital reproductions of songs in the United States.

Verizon

Verizon does not want to install software on its networks to play copyright police.

Red Hot Trademark Infringement. . . or Not

2008-01-29T13:15:00.000-05:00

This is the first post of 2008. I wish everyone is having a happy and healthy 2008.

Several months ago, the Red Hot Chili Peppers sued Showtime Networks and others in relation to the television show, "Californication."

Click here for a copy of the complaint.

There are two important sentences from the story linked above: The complaint alleges that the composition entitled "Californication" and the album achieved "extraordinary critical and commercial recognition."

"'Californication' is the signature CD, video and song of the band's career," band frontman Anthony Kiedis said in a statement. "For some TV show to come along and steal our identity is not right."

The complaint poses one important question: Can a band release an album or song that is so successful, that it defines their career as a trademark?

Frankly, the answer is, "No."

To understand this, the purpose of trademark law needs to be remembered. Trademarks exist in order to show that goods/services come from a certain source and have a certain quality. (And, yes, that is a link to Wikipedia. I reviewed it and think it is good for an overview.) Does the title of a CD show the source of goods (the goods here are the songs on the album) and the quality of those goods?

Again, the answer is, "No."

Why? Philosophically, the trademark is the name of the band. The Red Hot Chili Peppers have a different sound than R.E.M., who has a different sound than Bruce Springsteen, who has a different sound than Jay-Z, who has a different sound than Reginald Dwight (er. . .Elton John).

How to describe the Red Hot Chili Peppers music? Billboard magazine does it well. Looking at some of the discography of the band, album titles such as "Freaky Styley," "Mother's Milk," and "Blood Sugar Sex Magik" highlight the earlier part of the band's career while "Californication," "By the Way" and "Stadium Arcadium" highlight the latest part of the band's career. While "Californication" was the best-selling album for the band, "Blood Sugar Sex Magik," was probably the album that put the band on the popular music map (and probably marked a turning point in their sound due to the popular slow-tempo song, "Under the Bridge").

All the albums show characteristics of the band's style. The style, too, has changed over time (probably because of the numerous personnel changes in the band - which brings to question if band names should be trademarks themselves). The source of all the songs on the albums is the band. The quality of all the songs on the albums comes from the band. The quality is not represented by the album title, but by the musicians playing the song, bringing the products (songs) to the listener.

Coming from the legal perspective is similar. Personally, I have filed more than one trademark in the class of music recordings.

No title can be a trademark, unless the title is of a series of recordings. Then the trademark applicant must show that the musician controls the quality of the recordings, such that the name has come to represent an assurance of quality to the public.

Evidence musst be shown that there is evidence of a series includes copies or photographs of at least two different CD covers or similar packaging for prerecorded works. Evidence that the name is recognized by others as a source of the series includes advertising that promotes the name as the source of the series, third-party reviews showing use of the name by others to refer to the series, and/or declarations from the sound recording industry, retailers, and purchasers showing recognition of the name as an indicator of the source of a series of recordings.

Evidence of a series includes copies or photographs of at least two different CD covers or similar packaging for prerecorded works. Evidence of control over the quality of the recordings and use of the name includes licensing contracts or similar documentation.

Ultimately, "Californication," while a great height in the band's career, cannot be a trademark for the band as the band's name itself would be the mark.

*****
As for the next installment, I've been receiving a few e-mails and will answer your questions - just send an e-mail and ask away.

Copyright Clarification

2007-11-19T14:51:00.000-05:00

A few weeks ago, I flippantly said that, "One musician's copyright violation is another musician's viral marketing campaign."

Several readers were confused.

I will begin with a basic description of copyright law. Copyright law only covers these eight types of works:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.

What rights does a copyright owner have?
"[T]he owner of copyright ... has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

(A “derivative work” is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work”.)

Now that you're happy I cut-and-pasted straight from the Copyright Statute, let me explain. Any copyright owner is allowed to hold on to these rights as tightly as the owner wants to. The copyright owner can let any of these rights go, also.

What is a Viral Marketing campaign? Simple, it is a campaign where someone's work is allowed to spread as much as possible (like a virus) so that people become interested in the work and then follow the work to the source. It is, basically, a free sample. It can be listening to 30 seconds of a song and telling friends to go hear the song. It can be one video being passed along so that people then go to the source of the video (a website that hosts that video and others or, for example, a TV show).

In a Viral Marketing campaign, the owner of the copyright in the work(s) has allowed some rights in the copyright(s) to be let go. Generally, it is allowing copies of the work to exist elsewhere and allowing others to distribute the work. All of this is done for no compensation, only to hope that compensation comes down the road in another form.

***

Lastly, I'd like to announce that I'm doing a trademark and copyright law seminar in San Jose on November 29th from 11AM to 1 PM at November 2033 Gateway Place on the 5th Floor. RSVP to law@nyctrademarks.com if you would like to attend and I will give you more details.

Strike Two!

2007-11-06T10:32:00.000-05:00

In a phone call with a client last night, I was asked what I thought about the strike started by the Writers Guild of America that is now affecting the television industry.

According to the WGA website, there are big issues to be resolved, including:

Jurisdiction for most of new media writing.

Residuals for Internet downloads of television shows.

Residuals for streaming video of theatrical product.

Right now, anytime a consumer views a TV show on the website of a network or channel, no fees are given to writers of the show. Quite often, there are commercials that appear before any video clip, so the television networks are making money when each show is viewed. (Then the networks pay the television production companies - represented by the Alliance of Motion Picture and Television Producers, who then pay all cast and crew members.)

So, this boils down to a licensing question: Do the writers (and their unions) agree to license their work (scripts in the form of a television show) on new forms of media? The strike says that they do if they are paid for it. Back in 1988, the television writers' strike cost the industry nearly $500 million in advertising revenue. How bad will the carnage (for this industry) be this time?

We're back!

2007-07-11T14:13:00.000-04:00

After months of technical issues, we're back. The problem I learned was that when Google (which sends out the e-mails) and Blogger (which hosts this log on the web) merged, the accounts merged as well and it took forever to make them separated. But all is back to normal! I hope to send out a biweekly update, as done in the past.

The NFL recently backed off its attempt to register a trademark in the phrase "The Big Game." Why? There are several reasons. Although I disagree with the use of the word "insanity" in this article, mainly because the law did work and the correct results were seen, sports and intellectual property continue to intersect more and more.

Why did the NFL try to register "The Big Game" as a trademark? Because it ruthlessly protects its trademark of "Super Bowl" from being used outside licensed properties. (Intent to use U.S. Serial No. 78804122 ).

And this is something we are all familiar with. How many advertisements can we think in our head come from electronics stores asking us to buy a HDTV so that we can watch THE BIG GAME at home with the best set available? Also, don't hesitate to look at a page on Wikipedia, which shows other uses of the phrase "The Big Game."

***

In some copyright news, some people believe that Prince is being unfair because Universal Music Group is responsible for taking down a home video on YouTube posted by a mother of her infant being seen dancing to a Prince song.

Section 512 of the Copyright statute discusses the ability of a copyright owner to ask that infringing material be taken down - especially from a site whose content is user-generated. Fair use - again, the ability to use small clips of copyrighted works - would still apply. Here? It does seem as if the song is being fairly used in the home video (the sound quality is awful as it is a recording of a home system through the air, it is not the entire song, the point of the video is the kid moving around - not the song). Google, do not forget, bought YouTube for $1.65 billion - so there are lots of dollars floating around the ads on a YouTube clip, even one that might contain the fair use of a copyrighted work.

In short, if a client came to me asking what my rights were to a clip that was on YouTube, then I would have to speak to my client for a long time. It's a touchy subject that requires a lot of balance. One musician's copyright violation is another musician's viral marketing campaign.

Now! A part of the Technorati!

2007-02-23T11:26:00.001-05:00

Technorati Profile

Lieutenant Dan Got Me Invested in Some Kind of Fruit Company.

2007-02-22T10:03:00.000-05:00

Cisco and Apple finally settled their dispute over the use of the trademark "iPhone."

It comes as no surprise since Cisco's complaint was filed back in January. The complaint alleged trademark infringement, unfair competition, false description and injury to business reputation (the charge of injury to business reputation is a California state claim; all the others are federal claims under the Lanham Act - the act that makes trademarks the domain of federal law).

Cisco had two main arguments in its infringement argument. The first that Apple's use of "iPhone" in its cell phones would confuse customers because Cisco's iPhone used for "computer hardware and software for providing integrated telephone communication with computerized global information networks." (That's from the description in the trademark registration.) The second is that even if Cisco and Apple make different products now, in the future, technology would allow their products to converge and the same mark would then compete head-to-head from two different companies.

One of the last paragraphs of the Associated Press story says, "Legal experts said Cisco's argument that the phones could eventually compete seemed like an unlikely scenario. They added that the products and markets they serve are currently so dissimilar there's little likelihood of future trademark tangles."

I agree that the "future" argument is weak. I am concerned, though, because at first blush, Apple's iPhone "combines three products — a revolutionary mobile phone, a widescreen iPod with touch controls, and a breakthrough Internet communications device with desktop-class email, web browsing, maps, and searching — into one small and lightweight handheld device" (according to the iPhone website). If that is not "computer hardware and software for providing integrated telephone communication with computerized global information networks," then I'm not too sure what is.

What I find interesting, however, is Cisco's trademark attorneys' lack of using trademark dilution as well as infringement in their arguments. Dilution is the use of a famous trademark in another mark which lessens the uniqueness of the mark. The issue here: Was "iPhone" famous before Apple's cellular phone announcement? I would have made the argument, especially since the Trademark Dilution Revision Act of 2006, or H.R. 683, was signed into law. The new law revised the definition of dilution so that the plaintiff only needs to show the defendant's mark is likely to cause dilution (in the past, only evidence of actual dilution was to be considered).

I'm not sure this is finished. Apple and Cisco, as a part of the agreement, are going to try to work together to have products (like the iPhone) that work with Apple and Cisco technology. I'm curious how well that will go.

Bucks for Becks. And insults.

2007-01-18T20:30:00.000-05:00

The big international sporting news is that the most famous person on the planet, David Beckham, is coming to America to play with the Los Angeles Galaxy of Major League Soccer.

The big drama is when Beckham might start playing with Los Angeles. It certainly does not help that the president of his current team, Réal Madrid, talked about Beckham's inability to be loyal to his current team now that a contract was signed that starts after his current contract runs out and that he's washed up.

It's not hard at all to find opinions on this being a good or a bad signing - certainly it is about growing the sport in the United States as much as it is about the Galaxy's ability to win the MLS Cup, the MLS Supporter's Shield, or the just-formed North American tournament called the SuperLiga.

However, the focus here is on the belief that a player cannot work (play) for one sports team in one league after signing a contract that begins once his current contract ends. Oddly enough, there's a case from 1974 that rejected that notion. Bill Bergey, a defensive player who is still well-liked in my hometown of Philadelphia, was playing for the Cincinnati Bengals (of the National Football League) at the time when he signed with the Virginia Ambassadors of the then-new World Football League. Bergey's Ambassadors contract was to start only after his Bengals contract expired at the end of the season.

The Bengals sued and the case is now known as Cincinnati Bengals v. Bergey 453 F.Supp 129 (S.D. Ohio 1974).

The parallel isn't quite the same as both football leagues were in competition with each other in the U.S. and now the two soccer leagues are international and regulated by international agreements on how players can move from league to league. But it's the notion that a player can't play for the team in this league with a contract that starts later in a new league.

The court rejected that notion. Why? Bergey had "no intention of seeking an early release" from his Bengals contract. The court in this case found that Bergey had every intention of fulfilling his Bengals contract. He was not breaching the contract. He was not interfering with the business of the Bengals, either. "The Court concludes that there is no incentive to Bergey to compromise with his pride in his playing ability which impels him to be the aggressive player that he is."

What a quaint notion.

Happy New Year

2007-01-14T13:32:00.000-05:00

Happy New Year, readers!

The forum has taken some time off in order to do work and take care of personal business.

The big news story in the technological world comes from Apple. There's no shock there, as Apple has been making waves in personal devices, like the iPod. In fact, this forum noted that Apple has been protecting its marks feverishly by taking steps to stop any mark that begins with a lower-case "i" followed by a word.

So, the big news story is that Apple has released a cell phone called, of course, the iPhone.

And now the battle begins for the name, iPhone. What's that? You never heard of iPhone before? Cisco owns the mark and has begun to try to enforce its rights in the name, saying that Apple's iPhone mark is in the same goods and services (or a similar set) as Cisco's.

If anyone is curious, the text of the complaint can be found on the Web.

The iPhone name was first registered in 1996 by InfoGear, a maker of Internet appliances. Cisco acquired InfoGear, and the trademark, in 2000.

Apple even tried to negotiate the use of the iPhone mark.

Looking at the mark, Cisco's iPhone represents "computer hardware and software for providing integrated telephone communication with computerized global information networks."

As in most trademark issues, the issue swings upon the difference between the two products. Is Apple's cell phone/music player/video player/internet browser different enough to Cisco's products? It'll be interesting to keep tabs on this one.

Google Loses a Trademark Case in France

2006-11-28T10:09:00.000-05:00

Back in 2004, Louis Vuitton sued Google in France for improperly using its trademarks in advertising.

Recently, Google has lost its appeal in the case. The lawsuit claimed that Google's use of "Louis Vuitton" in its AdWords program (in which companies bid on keyword advertising on various websites) resulted in "trademark counterfeiting, unfair competition and misleading advertising."

Louis Vuitton applauded the ruling (of course). "It was absolutely unthinkable that a company like Google be authorized, in the scope of its advertising business, to sell the Louis Vuitton trademark to third parties, specifically to Web sites selling counterfeits," a company representative said in a statement. (Personally, I'm having a hard time substantiating Louis Vuitton's claim that Google WAS sending consumers to counterfeit goods. Any article talking about the suit seems to only say that was a fear of Louis Vuitton.)

Louis Vuitton should be glad they sued in a French court. Why? Google recently won a smiliar lawsuit in the U.S. brought by Geico.

Either way, Google seems to not care much, especially since their AdWords policies have changed to remove trademarks from the AdWords program.

This case brings us to a topic in American trademark law that can be overlooked. It's called "nominative (fair) use." There are times when it is permissible to use another mark. The purpose of the nominative fair use defense is to allow a third party fairly to describe another's product. If someone types "Louis Vuitton" into Google, shouldn't advertisers selling Louis Vuitton bags be shown, even if they are paid advertisements? How else can "Louis Vuitton" bags be described? "Overpriced fabric boxes that hold clothing that will be damaged on the flight to the vacation"?

Quick Hits

2006-11-24T14:39:00.000-05:00

I hope that everyone had a happy Thanksgiving.

Here are some short items right now.

Other Law Blogs

You can read the New York Small Business Law blog of Imke Ratschko at http://www.newyorksmallbusinesslaw.com/.

MySpace

Universal Music Group has sued MySpace for copyright infringement. This is because users continuously post videos and songs on their profiles for everyone to listen and watch - for free.

How does this work? Briefly, §512 of the Copyright Act (more commonly known as the Digital Millennium Copyright Act of 1988) states that owners of copyrighted material must inform the owner of the website that its copyrights are being infringed when the website's material is generated by the users of the site. Then the website owner is to take down the offending material.

Poker

There is a lawsuit over the use of WSOP in the poker world. Does WSOP stand for the World Series of Poker - whith is owned by Harrah's (which bought it from Binion's - the casino host to the World Series of Poker) or does WSOP stand for the World's Standard of Online Poker, owned by Frederico Schiavo? WSOP.com owner, Schiavo, has updates on the case on the website.

I'd like to propose a settlement, which may or may not work here. Take a look at scrabble.com and see that Hasbro and Mattel have worked out their worldwide rights to the Scrabble trademark.

Silliness

Andy Griffith sues Andy Griffith. The star of the old "Andy Griffith Show" has sued a man who changed his name to Andrew Jackson Griffith. According to the article, "The lawsuit, filed Nov. 3 in U.S. District Court in Madison, alleges that William Harold Fenrick, 42, violated trademark and copyright laws, as well as the privacy of actor Andy Samuel Griffith, when he used his new name to promote his candidacy for sheriff in southwestern Wisconsin."

Once again - I ask if actors have any trademark rights in their name. The lawyers reading this can find my article at 14 Seton Hall J. Sports & Ent. L. 153 (2004) where I argue that actors don't necessarily have trademark rights in their names. After all, Andy Griffith played more than one role in his life. Trademark law looks for more specifics than just "acting," it looks for a quality of the goods or services as well.

Ack! It's not Coca-Cola! (Is that so bad?)

2006-11-02T22:08:00.000-05:00

My coworker, Carolyn, picked up a red can with white lettering, which she assumed was Coke. As she's drinking it, she looks at the can and wonders what Berkley & Jensen is (at this point she still hasn't realized it's not Coca Cola). Even though the can was a lighter shade of red, and the white lettering says 'Cola Clasic' (classic is slightly smaller than Cola.) she said they fooled her-she thought it was real Coke she was drinking. The lettering isn't script, but Cola Classic is also in a lighter pink, and sprinkled over the can-sort of like somebody just dumped it on...(sorry I wish I could describe that better). I also wish I could find a picture of the can online (of course, if you're familiar with BJs wholesale foods, you might already know what it looks like.)

-Ella Shurr (Cleveland, OH)

Ella, you have stumbled upon what is called Trade Dress. It's not trademark law, but certainly a subset of it. Just like trademarks, the Trademark Act of 1946 (also called the Lanham Act) covers trade dress. The case that every law student who studies trademark law reads is Two Pesos, Inc. v. Taco Cabana, Inc. (91-971), 505 U.S. 763 (1992) (the link is to a summary of the case). As the previous link states "§ 43(a) of the Trademark Act of 1946[ ] provides that "[a]ny person who . . . use[s] in connection with any goods or services . . . any false description or representation . . . shall be liable to . . . any person . . . damaged by [such] use." The title of this section of the Act is called "False designations of origin and false descriptions forbidden."

What does this mean? It means that two different goods from two different sources cannot look alike, as if they come from the same source. (And here, "source" means "producer.") In the Two Pesos case, one Mexican restaurant was sued by another Mexican restaurant. Why? According to the published opinion, Taco Cabana opened a restaurant that had "a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme." Two Pesos then opened a similar-looking Mexican restaurant.

(I don't know about you, but this description seems to fit many average-quality Mexican restuarants I've been in.)

To make a long story short (too late), the case restates that trade dress is important to mark goods and that you can sue for trade dress infringement. Of course, Two Pesos lost its suit, infringing on Taco Cabana's design.

Here is another example of trade dress: Adidas likes to put three stripes on all of the shirts and shorts it makes. So you know it's from Adidas, even if you can't see the mark, because the design is similar. (Many thanks to Paul Lukas and his Uni Watch Blog for the first couple links.)

There's your crash course in trade dress. I wish I could find a pic of BJ's Warehouse cola, just to compare it. But be on the lookout - it's not just the name, but it's also the packaging and design of the product that matters in trademark and trade dress.

When is a trademark "descriptive"?

2006-10-12T12:08:00.000-04:00

I'm steamed a little bit.

I have a client who has "24 7" as a part of several different trademarks. Two of them were recently rejected and (partially) one was because "24 7" is descriptive of "continuous."

It's hard to disagree with a part of the statement, but a consumer has to make what is called a multi-step logical thought process in order to go from seeing "24 7" to knowing it means "24 hours a day, 7 days a week." Also, I was unable to find any other trademarks with "24 7" that were rejected because "24 7" was deemed to be descriptive as "continuous."

Remember, in trademark law, the best mark is one that has no elements of the product - in other words, one that does not describe the product.

Let's take a quick look at two marks that registered today - EZ-COROSA and EZ-HYPERIC - and a quick look at a mark many commuters know - E-ZPASS.

Is not "E-Z" just a description for "easy," or "simple," or "facile"? E-ZPASS represents a system to make payments at toll booths easy, right? The goods/services description reads "services provided to travelers; namely, collection of tolls using an electronic system to expedite passage of such travelers through a toll facility." In other words, it makes paying tolls easy! (The mark is too old for the USPTO to store all its paperwork on the USPTO website, but you can see that the mark was never rejected!)

EZ-COROSA and EZ-HYPERIC both come from a Danish company for selling dietary supplements. Hmm. Is this because the goods both marks represent are to make our lives easier? You'll find phrases like "preparations to promote digestion," and "weight-reducing and meal replacements mainly consisting of processed cereals," and "nutritional supplements and food supplements for medical purposes...." In other words, yes, they're to make our lives easy.

So if a part of my clients' mark that has "24 7" is descriptive of "continuous," why are all these marks not descriptive of something that is easy when they all contain something that sounds like "Easy" in the marks?

Is There Branding in Sports Uniforms?

2006-10-03T23:23:00.000-04:00

After a brief vacation from writing, the Law Form is back up and running. Don't forget to view the archive at www.TMCEntLawForum.com.

I spoke with Paul Lukas, an expert on sports uniforms. You can read his Uni Watch column on ESPN.com's Page 2 and read his Uni Watch Blog (which is a semi-daily update of his uniform knowledge).

What kind of branding is involved with sports uniforms? Is it the team or is it the company that makes the uniforms?

Sports teams used to individually make a contract with an outfitter to make their uniforms. Several different companies made uniforms in every professional league. In college, it is still true that each school has a contract with an outfitting company.

One quirk comes in 1997, the year the Denver Broncos changed their uniforms. Nike was the first outfitter to design a uniform. What does this mean? The nostril of the bronco logo forms the Nike "swoosh" logo. Also, when a player is bent over (as in a three-point stance at the line of scrimmage), the Nike swoosh logo is apparent in the right leg (check out this picture, though the swoosh is backwards on the left leg). And in another ironic twist, Nike competitor Reebok is the current outfitter for all NFL teams.

"Teams are brands," says Paul Lukas. It's a form of "intense loyalty" to a brand. One example of people leaving a brand when it did not taste like it used to is New Coke. When sports teams do badly, fans may not go to games, but they do not abandon their teams. Mets fans do not root for the Yankees during the (many) lean years. If the Mets and Yankees traded their rosters, would fans change their allegiance? Probably not. Oakland Raiders fans will not be seen wearing San Francisco 49ers jerseys during their trying times.

The big branding experiment has come in college football, though. Nike has designed uniforms for many teams, and they do look similar. Wake Forest and Illinois (rear view) are two examples of the typical Nike pattern. Nike also has taken the same different approach at Virginia Tech, Florida, and Miami, where one shoulder is a different color. It all is a part of being a part of "Team Nike," as Lukas said.

It does appear as if there is more than one type of branding in sports uniforms. The fans may root for the laundry of the uniforms and keep that brand loyalty, but it looks as if the teams themselves are falling under another type of branding from outfitter companies.

Is There Branding in Television Networks?

2006-09-06T09:50:00.000-04:00

The UPN and WB television networks are merging for this upcoming television season. The new network is called CW and features the most-viewed shows from the two old networks.

Does the CW stand for a certain type of programming?

I spoke with Ellen Gray, the television critic of the Philadelphia Daily News, recently about the changes that the new CW network will (or will not) bring to television in this upcoming season.

In recent times, I had been thinking of WB as the teen angst network, as their shows consisted of "Smallville" (Superman's teenage years), and "One Tree Hill" (two estranged brothers growing up in a small North Carolina town called Tree Hill ). I was thinking of UPN as being the network for African-American TV shows, with the hilarious "Everybody Hates Chris" (Chris Rock's pre-teen years), and "Girlfriends" (four successful African-American women take on Los Angeles).

However, I was reminded that was not always the case. The networks "tried to have distinct identites" at the beginning, according to Ellen Gray. She reminded me that WB started with (and continues to have) family-friendly shows like "7th Heaven" (which will continue on the CW). The next step in its evolution was to target "young girls" with shows like "Gilmore Girls."

UPN, Gray reminded me, premiered with the two-hour pilot episode of "Star Trek: Voyager," and tried to build its audience from there. It has also tried to brand itself as the place to watch professional wrestling. (When Ellen Gray pointed that out to me, it brought back memories of those laughable ads where pro wrestler The Rock was a guest star in an awful episode of "Voyager" in which his character wrestled one of the Voyager's crew members.)

The traditional television networks do not have brands, either, Gray reminded me. CBS is no longer the network that only older people watch. CBS has had a "fair amount of success" thanks to "Survivor" in reaching a younger audience. NBC does not necessarily attract a younger audience anymore and is in fact premiering a show this new season starring Jeffrey Tambor and John Lithgow called "Twenty Good Years" about two men who ponder the last 20 years of their lives.

The CW, it turns out, will be more of the same as most of the programming will come from the two previous networks and only two new shows will be debuting. "Runaway" seems to be a mix between "The Fugitive" and "7th Heaven," as a family on the run from the law as the father was convicted of a crime he did not commit. "The Game" is a spin-off of "Girlfriends" in which a three women date NFL players. (Does anyone remember the English show "Footballers Wive$"?)

There is no cohesive schedule to the network. Monday seems to be family night, featuring "7th Heaven," Tuesday is the night for the younger girls with the pairing of "Gilmore Girls" and "Veronica Mars," Wednesday seems to be miscellaneous with "One Tree Hill" and "America's Next Top Model," Thursday is the action/teen night with "Smallville" and "Supernatural," Friday is wrestling, and Sunday is the African-American night with "Everybody Hates Chris" and "The Game." Gray hesitated to call Sunday the African-American night, talking about how universal "Everybody Hates Chris" is, but maybe that Sunday at 7 PM would be a better slot for the show, but not surrounded by the other shows that night.

CW's advertising has been a mix of messages. The ads' tagline "Free to Be" is open-ended. "You're free to be whatever you want as long as you watch the CW," joked Ellen Gray.

So it seems that there is not a true brand to what the CW programs for viewing, which is true for all of television. It does seem as if CW might be undecided in its personality, though.

Stop Pooring my Coffee!

2006-09-01T15:20:00.000-04:00

Standard & Poor's, known to many as a financial institution of some sort, has sued a Texas-based company called Standard & Pours Coffee & Stocks, which is a cafe, for trademark dilution.

As stated in an earlier post, "[d]ilution comes in when the defendant's use of a mark either blurs the connection in consumers' minds between the plaintiff's mark and the goods and services is weakened or the defendant's use tarnishes the plaintiff's mark."

Now, it's silly to think that someone is going to confuse the two. Who is going to walk into the cafe to then ask the person behind the counter for a hot stock tip? We all hope that the answer is "Nobody."

Since these marks are in different indusries (finance vs. cafes), why can this be? This mark - Standard & Poor's - could be defined as having such notoriety that it cuts across all markets and industries. Again - think of Apple. You're not thinking Apple Records, are you?

The name of the cafe had to be chosen in order to be close to Standard and Poor's and, therefore, can dilute the name of the finance company.

S&P is taking the correct action to not dilute its corporate name and identity.

You can't google it. You also can't xerox a xerox. Still.

2006-08-22T18:58:00.000-04:00

Do you remember the ad campaign that said "You can't Xerox a Xerox on a Xerox?" You can briefly hear me talk about this (warning: link to MP3 file) on The Rollye James Show a few months ago.

Google is now beginning to take steps to protect its trademark. Google has been sending letters to media organizations to state that its trademark is not a verb. So, someone cannot say "Google it for me" or "I googled it and here's what I found."

Those of us who are fans of sports commentator and new (reluctant) Monday Night Football announcer Tony Kornheiser used to hear him say to use "The Google Key" in searching for something on the Internet. My friend Vicki jokes that she gets help from "Professor Google" in searching. Both of those are good uses of the word "Google" to search the Internet.

Why?

In trademark law, the trademark must NOT be a generic word. You cannot register "ball" as a trademark for a ball. It's generic. There is no Beer-brand beer. Even to your eyes and ears, it is somewhat silly to say that. If a trademark turns into a generic word, then the owner loses all rights.

(And now, a boring legal citation on the topic. A mark is deemed to be abandoned when "any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark." This is USC Section 1127.)

Turning "Google" into a verb meaning "to search the Internet" which Merriam-Webster has accepted into the language means that there is no longer a unique link between the trademark and the services provided. That is why marks are registered in the first place. A company wants to protect not only the names it has chosen, but also the quality of the product. A generic word strips that connection that ordinarily would not be there.

And don't forget, you may make a photocopy of your document on your Xerox-brand copier.

I feel prescient. Apple defends "Pod."

2006-08-18T10:59:00.000-04:00

Back on July 20th, I wrote, "Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness."

Now here is the twist. Apple is claiming the word "pod" as its own trademark in all situations. The worry is that any use of "pod" in a trademark could dilute the "iPod" mark.

Let's start with what trademark dilution is. As I defined it on my trademark website of NYCTrademarks.com, "Trademark dilution ... is reserved for strong trademarks. Those trademarks with the strongest in identity in a market cannot be used in other noncompeting markets. This is to avoid "diluting" the strong, recognizable mark by its use in noncompeting markets.
"Dilution is best described in an example. A mark that is recognizable is 'Barbie.' The mark 'Barbie' brings up an idea of a girl's doll of an adult woman and friends in a pink box. Most likely, 'Barbie' would not be allowed to be used in another market, even if it did not compete with children's toys because of how strong the mark is and how identifiable the mark is to the goods."

I based this example from a real case, Mattel, Inc. v. MCA Records, Inc. 296 F.3d 894 (9th Cir. 2002)(the link opens a PDF file). In this case, the song "Barbie Girl" by the group Aqua was found to dilute Mattel's trademark in the word "Barbie." (One interesting question never propsed: What if the song wasn't called "Barbie Girl"?)

Dilution comes in when the defendant's use of a mark either blurs the connection in consumers' minds between the plaintiff's mark and the goods and services is weakened or the defendant's use tarnishes the plaintiff's mark. (Tarnishing means that the defendant's use is unsavory or unwholesome or the mark is used in connection with inferior products.)

The issue in any upcoming fights will be two-fold: Is "iPod" as a mark strong enough to warrant that it can be diluted and can any mark with "pod" in it dilute "iPod"?

Higher Ticket Prices!

2006-08-14T11:02:00.000-04:00

There are several different articles about several fans suing the Chicago Cubs for scalping their own tickets to games.

How would this happen?

According to all reports, the Cubs set up their own company, Wrigley Field Premium Tickets, owned by the same company that owns the Cubs (the Tribune Company), run by a Vice President of the Chicago Cubs, and had the Cubs do the accounting.

Since it was adopted in 1923, Illinois' Ticket Scalping Act states that entities that put on sporting events can sell a ticket for more than the face value.

Apparently, the Cubs sold the tickets to Wrigley Field Premium Tickets at face value and then WFPT sold tickets at a much higher rate.

Here, it seems as if the judge's opinion is as follows: Although both companies (the Cubs and WFPT) are owned by the same parent company (the Tribune Company), WFPT does not actually hold the sporting event. Apparently, neither does the Tribune Company. Therefore, WFPT can sell tickets at a higher rate than the face value.

All reports say that the plaintiff fans will appeal to the Illinois Supreme Court.

It is no stretch to see how this can harm consumers. A team can sell tickets to a sibling corporation, and then the sibling corporation raises prices through the roof. The team, being a part of this larger corporation, keeps all the profits of the larger price. The "face price" for tickets could possibly NEVER go up, but the reality would be different as the prices are raised significantly by the sibling company.

Also, throughout the years, many have asked if the Tribune Company (which publishes the Chicago Tribune) has a conflict of interest in covering the Chicago Cubs, the baseball team it owns. Why? Because the Tribune Company holds the sporting events. The Cubs might be a subsidiary of the Tribune, but the relationship is there to make many wonder. Why is a sibling company treated differently? It is all a part of the one.

(Another strange example of the lines between subsidiaries bleeding: ABC Sports will change to "ESPN on ABC" starting in September.)

Fantasy Baseball players can relax.

2006-08-09T10:14:00.000-04:00

A judge has ruled that players' names and statistics (as a result of games) are not the intellectual property of Major League Baseball.

In what seems to be a logical ruling, the judge said that the names and statistics are not "copyrightable" and that if there were a right of publicity to be infringed, those rights are lost because newspapers publish the exact same information every day.

Why would Major League Baseball think that players' names and stats fall under copyright law? Is it because the games are broadcast in a fixed medium on TV and radio?

In the United States, the following classifications of expressions of ideas are bound by copyright law: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.

But those broadcasts would be audiovisual or sound recordings. They would not be the games themselves. Here, there needs to be a separation of thought. The rights in the broadcast vs. the rights that may exist in the game itself.

(Unless baseball is a pantomimed or choreographed work? But, somehow, I think that only describes professional wrestling.)

Will LimeWire go Legit or Belly-Up?

2006-08-08T11:15:00.000-04:00

Record labels have sued the file-sharing service LimeWire with a copyright infringement suit.

That it happened is no surprise.

The history of file-sharing lawsuits is an odd mix, however.

Here is a little history.

The first case on the subject is A&M Records, Inc. v. Napster, Inc. 239F.3d 1004 (9th Cir. 2001). The result is that the appeals court found that Napster infringes two of the copyright holders' rights: the right of reproduction and the right of distribution.

What I found odd about this case is that the court argues that "Napster may be vicariously liable when it fails to affirmatively use its ability to patrol its system and preclude access to potentially infringing files listed in its search index. Napster has both the ability to use its search function to identify infringing musical recordings and the right to bar participation of users who engage in the transmission of infringing files." This seems to say that how Napster saved files on its system, via a search index system, was a part of copyright infringement. It is as if it left a door open for file-sharing programs to perform the same act in a different manner.

This was followed by Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 380 F.3d 1154 (2005). This case shut the door left open by the Napster case. Anyone who distributes a device (and device can be software) with the object of promoting its use to infringe copyrights is contributing to copyright infringement.

LimeWire fits that description. It is software and it is known as software to download music. The software is used often for that by many people every day.

With Grokster settling the rest of its lawsuit, one must wonder if peer-to-peer file sharing is dead. Most likely not. Others will appear (like Bittorrent - though that is a little different, since it is an algorithm for faster downloading and searching, and hasn't been advertised as a way to pass around copyrighted material, even though people do).

However, it appears as if all the doors are closed and there are no loopholes in peer-to-peer file sharing. The creators and owners of any software can be held responsible.

Mailbag!

2006-07-20T22:13:00.000-04:00

The last post about Apple's new trademark "NUMBERS," put a thought in the mind of Bryan Adams of Teaneck, NJ.

"Is that why the TV show is called 'Numb3rs'?"

Well, that's hard to say. If I were to guess, I would say that is more of a stylistic choice than a choice because of trademark law.

This is for a few reasons. First off, not many television shows have their titles registered as a trademark. The simple reason for that is there was a time when television shows were not as marketed as they are today. The only association for the name was, probably, the show.

Today, with the advent of t-shirts and DVDs and a million different action figures based on so many television shows, it should come as no surprise that more titles are being registered.

"NUMB3ERS" recently registered on January 31, 2006. Its registration number is 3055208 (for those who would like to look it up). It is registered in International Class 41 under the goods/services of "Entertainment services in the nature of a dramatic television series." (This does make me wonder how a television series provides services of any nature if it's dramatic. It seems more like goods than services to me.)

"NUMBERS" for Apple has not yet registered, but was allowed to continue. It is in International Class 9 for goods/services of "computer software for home, education, business, and developer use."

Can "NUMBERS" and "NUMB3RS" exist next to each other? Absolutely. One of the hallmarks of trademark law is that marks are defined by their industry, goods/services the mark is related to, and the strength of the mark.

Here, the two marks are in completely different industries. One is for a television show and the other is for computer software. You can also argue that the two marks are not that strong.

Trademark strength is defined by how it is related to its mark. The types of marks are defined as:

Fanciful
Arbitrary
Suggestive
Descriptive
Generic

A fanciful mark is a mark that has no definition in the dictionary. These are the strongest trademarks because the only relation that exists is to the product sold. Think "Kodak" for cameras and film, or "Clorox" for bleach.

An arbitrary mark is a mark that is a word that is not used in the context of the mark. Think of "Oracle" for computer software or, even "Apple" for computers.

A suggestive mark suggests some quality or characteristic of the mark. "Coppertone" for sun tanning products is the classic example.

A descriptive mark is the weakest kind of trademark. There is a direct link between the mark and the products without any thought needed by consumers. Think "Jiffy Lube" for automobile oil change services. These marks can become stronger with time and use.

A generic term is not a trademark and has no protection. Think "Ball" or "dish."

How does this relate to "Numbers"? Well, both are probably suggestive marks. "Numbers" for a spreadsheet program describes what the software does. There might be more to it, but on the most basic level, the mark describes the product. "Numb3ers" is a television show about a person who uses advanced mathematic principles in order to solve mysteries. It can adequately suggest the premise of the show.

Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness.

Do the different spellings mean anything? No. They are pronounced the same and would be treated as the same word. Note that "doughnut" (the correct spelling) is treated just like "donut" in trademark law. They sound the same and they also look relatively similar.

So, "Numbers" can describe software and "Numb3ers" can describe a television show. The marks are not strong enough to cause confusion in consumer thought. The spelling differences will not mean much, either.

Apple has a new trademark.

2006-07-18T22:37:00.000-04:00

According to a story on MacsimumNews.com, Apple has registered "NUMBERS" as a trademark.

"Numbers," so say the rumors, is going to be the name of Apple's new spreadsheet software for a new suite of office software for the Mac. The article deals with Apple's European trademark filings, so a look at the U.S. Patent and Trademark Office database reveals that "NUMBERS" is Published in Class 009 (which is where computer software is classified - as electrical and scientific apparatuses) for the goods and services of "computer software for home, education, business, and developer use."

Unlike the European applications, Apple is only claiming software but also claims what is called priority. This means that Apple is basing this trademark application not only on its own use of "NUMBERS" in the United States, but also on an application in another country so it can have the filing date and details of the earlier application. In this case, it is Malaysia. That means Apple is most likely going to try to apply "NUMBERS" in the same classes and same goods as it is in Malaysia (like Apple is doing in Europe).

Also, the U.S. application for "NUMBERS" has no date to indicate the first use of "NUMBERS" in commerce. That is because there is no date that Apple has used "NUMBERS." This is called an intent-to-use trademark application.

Apple has filed based upon its intent to use it in for the goods and services claimed in the application. When this trademark is allowed (the trademark registrant receives a Notice of Allowance from the U.S. Patent and Trademark Office), Apple has six months to show that the company is using the mark in the goods and services claimed. After that period, the trademark may be registered.

Mene Gene Redux - Though it is not Over

2006-07-12T18:23:00.000-04:00

First off, I want to thank Lou Raguse, the journalist who covered the Mean Gene story for KELO-TV in and its website, www.keloland.com, for helping me sort out some of the facts. You can also read the complaint and the judge's written decision for the case.

Jeff Okerlund, former president of Hot Stuff Foods had a handshake agreement with his uncle, "Mean Gene" Okerlund to use the name "Mean Gene" on a food product. When all the Okerlunds left the company, the mark was still used on food. Hot Stuff applied for federal trademark registration on April 14, 1998 and the mark registered on March 14, 2000. Hot Stuff even uses it in press releases.

The brand still sold well, so three of the Okerlunds started their own company with the "Mean Gene's Pizza" mark. This means that they were in direct competition with a registered mark.

It makes me wonder if they even consulted a trademark attorney. On one hand, it is difficult to contest a mark that is registered. (The lesson - ALWAYS register your trademarks.) But maybe this was purposeful. Maybe they are trying to show that the "MEAN GENE'S BURGERS" trademark is not as strong as the Patent and Trademark Office believes. Maybe this is their way of combatting by arguing that the real mark belongs not to Hot Stuff Foods, but to Gene Okerlund. It is a tenuous argument, to say the least. (Why would Hott Stuff have registered the mark if they did not believe it was strong enough to register?)

The decision in the case is not a final decision. A trial did take place in June, but the judge only ruled on a preliminary injunction. The judge has asked for more briefs in order to rule fully on the issues of the case.

Here is my best guess as to the Okerlunds arguement. "MEAN GENE" itself is a "common law" trademark. It belongs to Gene Okerlund. Common law trademarks are established in connection with specific goods and services. Those rights only extend towards markets and geographic areas where the mark is used. Similar marks may exist if they are used in different (or remote) territories or in connection with unrelated products.

The big problem is that even if there is a common law trademark in "MEAN GENE," the arguement returns to the industry. Is it wrestling? What else can it be?

Why should a business register a trademark?

"Weird Al" Yankovic vs. Those Who Do Not Understand

2006-07-04T19:19:00.000-04:00

According to a recent NPR story, James Blunt's record label, Atlantic Records has told "Weird Al" Yankovic that he cannot release a parody of Blunt's hit song, "You're Beautiful" called "You're Pitiful."

Can a record label do this (since it owns the copyright to the music and lyrics)?

Read what Yankovic himself said in the story.

"The legality in this case is somewhat moot," Yankovic writes
when contacted via e-mail. "James Blunt could still let me put it on my album if
he really wanted to, but he obviously doesn't want to alienate his own record
company... and my label could release the parody without Atlantic's blessing,
but they don't really want to go to war with another label over this. So really,
it's more of a political matter than a legal matter."

Yankovic is absolutely correct. Although he does ask permission of artists, he need not. The infamous 2 Live Crew case states this principle. The case is called Campbell, aka Skyywalker, et al. v Acuff Rose Music, Inc. 510 U.S. 569 (1994). Many people don't remember 2 Live Crew's parody of "Oh, Pretty Woman," the Roy Orbison hit song. (That's, frankly, a good thing.)

Luthur Campbell, lead rapper of 2 Live Crew, argued that their version of the song was not copyright infringement under the Fair Use Doctrine, which is defined in U.S. Code Title 17, Chapter 1, Section 107. A basic reading (for now) is that re-recording is allowable for criticism or comment. The United States Supreme Court agreed, stating that when a new piece of art is created in the parody, it can be seen as comment or criticism of the original work.

The problem with the Supreme Court's opinion (in my opinion) is that it does not help to define what comment or criticism is. How much of the new work has to hearken back to the original work? Using Yankovic as an example, many of his parodies are funny, but do not really comment on the original work (except to use the same music), such as his first professionally recorded song "My Bologna," a parody of "My Sharona" by the Knacks. Compare that to "(This Song's Just) Six Words Long," parodying "Got My Mind Set on You," which was recorded by James Ray in 1962 and George Harrison in 1987. Weird Al's version dissects the trite love song genre the original song belongs to.

It is settled law that any parody is Fair Use under the United States Copyright Statute (U.S. Code Title 17). Unfortunately, it appears as if Yankovic and his team are not willing to duke it out. Thankfully, they've gone the route of just putting the song on the Internet. Enjoy!

Mailbag

2006-06-27T20:44:00.000-04:00

It's always wonderful to receive letters. If you have any comments or questions, do not hesitate to write to averna@anthonyverna.com.

If the persona Mean Gene was created by Titan Sports or by Gene Okerlund while employed or to get employed by Titan Sports, I would think Titan Sports owns the mark, registered or not. Gene Okerlund's complaint against Hot Stuff Foods is then moot. Titan Sports would have the only valid complaint. And since Titan Sports declined to pursue registration of "Mean Gene", Hot Stuff Foods seems to be in the clear.

-Mark Hagenau (Derry, NH)

Mark, I can understand why you'd want to think this. What is tricky about trademarks, however, is that they live and die. Trademarks can also come back to life - you can think of it as resurrection or reincarnation. That is, a trademark can come back in the same exact form as it was. "MENE GENE" as a wrestling personality, involved in professional wrestling telecasts and appearances vs. "MENE GENE" in some other form. Of course, the other form relates back to the original - "MENE GENE" in the wrestling industry. Titan Sports may have dropped the application, but the ultimate lesson here is that the mark could come back in some form if Okerlund isn't a part of Titan Sports and the WWE and, therefore, Titan Sports no longer uses it. If Okerlund himself only uses it to sell himself, then the argument can easily be made that the mark, although not registered, belongs to him.

(On a side note, when a trademark is unregistered, it is referred to as a "common law" trademark. I'll use the proper terminology from now on, but wanted to introduce everyone to the concepts first.)

...[T]he economics are clear, namely, that big pharma can only develop new drugs like this, and give away drugs to third world nations, if it continues to milk the middle class of America for all it is worth.
....
But the purpose of anti-trust laws are to protect the consumers and smaller companies. Anti-trust laws keep big companies from controlling markets to the loss of consumers and smaller companies that would make the market more competitive. This is what Slate seems to be pointing to.
But Anthony, how do we protect stock values and markets and make drugs affordable?

-Brian Sipe (Philadelphia, PA - www.attorneysipe.com)

No letter from a fellow attorney is complete without a plug to his firm's website.

As you can read, this e-mail was much longer, but needed to be cut else this entry would be too long.

Part of what's missing in the Slate article referred to on Schering-Plough, the FTC, and the DOJ is the relationship between all intellectual property laws and and anti-trust laws like the Sherman Act. Intellectual property laws allow the owners to have a monopoly. It effectively carves out a monopoly on what is owned. A trademark allows the owner to use those words or that logo for that product in that industry. A copyright allows the owner to make that piece of art (usually) alone. A patent allows an inventor to make that invention alone. So this is the tug-of-war that is going on here. The monopoly is carved out and if someone else wants to make a generic version of a drug, then all the patents must be expired.

Wrestling's Golden Era

2006-06-21T09:59:00.000-04:00

Mean Gene Okerlund - remember him? - is suing his nephew's company.

Jeff Okerlund was president of Hot Stuff Foods, based in Sioux Falls, SD. Hot Stuff Foods had a Mene Gene line of foods. This includes Mean Gene's Burgers and Mean Gene's Pizza.

According to this brief article, Hot Stuff Foods wrongly registered trademarks on both brand names without permission of Gene Okerlund. Of course, Hot Stuff Foods denies that its trademark registrations were done improperly. Jeff Okerlund insisted on the stand that if it were done properly, Gene Okerlund would have registered his name as a mark and then it would have been licensed to Hot Stuff Foods.

I would agree if Mean Gene Okerlund was the name that Gene Okerlund used himself to promote himself. I remember it always in connection to wrestling, however. A quick search of the USPTO trademark database finds that "MEAN GENE" (U.S. serial number 74099624) was a mark that Titan Sports, Inc, doing business as The World Wrestling Federation filed, but never registered. That application is now abandoned, though I'd argue that "Mean Gene" Okerlund was always associated with wrestling.

What else strikes me as interesting is that "MEAN GENE'S PIZZA" was filed by both Eugene Okerlund and Orion Food Systems (which seems to be a predecessor to Hott Stuff Foods) in different applications. In Okerlund's application, a final refusal to register the mark was recently mailed. "MEAN GENE'S BURGERS," however, is owned by Hot Stuff Foods only.

Certainly, this is a confusing mess and I don't envy the decision maker in this trial (since day two of the trial was yesterday, June 20, 2006). With nobody owning a registered trademark, is Gene Okerlund trying to assert what is called "common law" trademark?

Does Gene Okerlund then really own the mark of "MEAN GENE"? Would he have been "Mean Gene" Okerlund without the wrestling industry? I would argue that he would not be known at all. That leads me to believe he would not own any rights in "MEAN GENE" as a mark - but maybe he has been able to assert common law marks by making public appearances outside of wrestling matches and television shows owned by Titan Sports, Inc.

The more that I think about it, the more interesting this case becomes.

Philosophy - Why do we do this?

2006-06-19T12:57:00.000-04:00

According to this article on Slate.com, the Federal Trade Commission and the Justice department disagree on an agreement between Schering-Plough and two manufacturers of generic drugs.

Schering and the two generic manufacturers agreed to delay the marketing of a generic version of a Schering potassium supplement. The FTC claims that Schering bought off competitors and wants to pursue antitrust violations. The Justice department does not want to pursue these claims, because the department claims that patent law makes an agreement like this allowable.

Why? Well, this is because of why we practice trademark, copyright, or patent law - collectively known as Intellectual Property. (I do not practice patent law, however.) We do it because we believe that entities (people or businesses) own their own work. We work to protect that work. Patent law protects the inventions that entities create. Trademark law protects the names of products or services that are sold - quality of the brand name is at stake. Copyright law (generally) protects works of art and helps to link the artist to the art.

Although the Slate article discusses who represents the United States in an argument, maybe the discussion is better framed as what rules: Antitrust law (to prevent monopolies) or Intellectual Property law (which exists to allow monopolies in certain instances).

I, obviously, am taking the side of the Intellctual Property law. Those monopolies - in inventions, names, or art - exist so that there can be fruits of labor.

For a much more thorough explanation, see, an article by Justin Hughes whose citation is 77 Geo. L.J. 287 (1988).

RSS Feed

2006-06-13T21:46:00.000-04:00

For those of you out there who are able to receive an RSS feed, the web address for that is http://feeds.feedburner.com/TMCEntLawForum.

We'll also continue the e-mail distribution of the forum!

Dale Earnhardt Jr. does not own the trademark in his own name.

2006-06-13T16:49:00.000-04:00

According to the following story by ESPN's Darren Rovell, NASCAR driver Dale Earnhardt Jr. does not own the trademark in the name everyone calls him - "Dale, Jr."

http://sports.espn.go.com/rpm/news/story?series=2&id=2480863&lpos=spotlight&lid=tab1pos2

What is shocking to me is not the consent form that Dale, Jr. signed - but that the rights in the "Dale, Jr." trademark went into the estate of Dale Earnhardt, Sr. This means that Dale Earnhardt, Sr., somehow owned the trademark of "Dale, Jr." Was RDE Administrative Trust some kind of sole proprietorship that Dale Earnhardt, Sr. ran? (In most states, a sole propietorship dies with the death of the owner, and all assets are turned into a part of the estate of the deceased.)

This is a situation where a trademark would be worth millions of dollars, and should be owned by a corporation. This way, death would not cause the kind of transfer of a trademark that has been seen in this situation. The corporation would continue to exist and the mark would rest in there.

There are too many strange agreements in this situation for me to be comfortable, also.

If this were someone who had never been around trademarks and a business situation, I would not be surprised. (A 19-year-old and his mother visited my office last week about a copyright infringement case - their lack of knowledge did not surprise me.) This family, though, should know better. The Earnhardt family knows or should know the value of the family name, having been around NASCAR for so long. They also know or should have known that two drivers have different ownerships of their own names. I am shocked and surprised at the lazy way the value of the names (which is what trademark law provides) were protected. It seems as if the mark was not protected well at all.

Kanye West, Ludacris win copyright trial

2006-06-07T23:24:00.000-04:00

Here is a link to the AP account on this judgment: http://news.yahoo.com/s/ap/20060602/ap_en_mu/music_trial_8

According to the article, "At issue at trial were the words 'like that,' repeated more than 80 times in each song, though one song precedes the phrase with 'straight' while the other precedes it with 'just.'"

What is confusing here is that the article does not provide much context or legal description. Copyright law provides very little aid in helping to determine if two works of art are similar or not. Cases like this come down to a determination of facts.

This is most famously seen in a case like Bright Tunes Music Corp. v. Harrisons Music, Ltd. 722 F.2d 988 (2d Cir. 1983), where George Harrison's "My Sweet Lord" was found to infringe upon The Chiffons' "He's so Fine." There, the repetition of several notes in "He's so Fine" was also in "My Sweet Lord," with a little variation. There is much reliance on the expert testimony in the decision. The paintiffs in this case won because the music was so similar and because of the popularity of the plaintiffs' song "He's so Fine."

This leads to the issue of discussing the facts in the current West-Ludacris case. The problem is that the plaintiff's witness was dismissed, and so one side had more expert testimony than the other, which could certainly influence a jury during a trial with complicated issues as most copyright cases have. The plaintiffs in the current case, I.O.F., do not appear to be as popular in current popular music as The Chiffons were at the time. Also, one wonders if the art form - rap - has an effect. Is a pattern of a rhythm in the West-Ludacris case the same as the notes in the "My Sweet Lord" case? Does popularity matter?

We will try to update you more as more information can be found on the case.

Welcome!

2006-06-07T23:05:00.000-04:00

Welcome to the Trademark, Copyright, and Entertainment Law Forum. The Law Firm of Anthony Verna can be found at http://www.nyctrademarks.com.

This forum is for the discussion and review of current issues in trademark, copyright, and entertainment law - the practice areas of the Law Firm of Anthony Verna.

Once a week, there will be a mailbag edition of the forum. Please send any questions to averna@anthonyverna.com and selected questions will be answered on here.

Thank you! I look forward to this being a fruitful forum.

-Anthony M. Verna III
The Law Firm of Anthony Verna
14 Wall Street, 20th Floor
New York, NY