It's a Crazy Intellectual Property World

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!

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

Register your copyrights. Now.

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.

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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/

Protect yourself. It's cold outside.

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.

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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:

1. Filing separate works as collections.
2. 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

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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.

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Google is still fighting to claim the ANDROID trademark.

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

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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.

Cather in the Rye Part 2: Electric Boogaloo

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.

Royalties and trusts

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.

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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.)

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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.

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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.

Coldplay and Fans on Youtube

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?

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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

Cartier goes extreme! Then it drops extremism.

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.

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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.

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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!

Names Will Never Hurt Me

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.

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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.


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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.

Re-use Art. Create something new.

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".

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

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.

Wintry Mix

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.

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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.


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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.