A Text Will Lead You

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.

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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.

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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.

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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.

How to set up your IP

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.

1. Who is my client?
2. What assignments do I need to create and have executed?
3. 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.

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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.

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

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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.

Why Register?

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.

1. 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.
2. 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.
3. Geography. All registrations are good in all fifty states and all territories of the United States.
   
4. 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.
5. The power of federal law to help with damages in any intellectual property lawsuit comes only with registration.
   
6. 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.

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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

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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

Thumbs Down

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.

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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.