LegalMatch: Intellectual Property

How Blogging Can Lead to Legal Trouble.

When you start a blog online, what do you really sign on for?

You click through your client’s terms of service, install whatever proprietary software they want on your desktop, you pay your dues for ad-free space, and then you finally start to write. And because you’re writing (and publishing) in the United States, you’re granted the same First Amendment rights that have protected newspapers, magazines, and print publications for centuries. You get free speech!

But even free speech has its limits, and it’s important to know what you can (and can’t!) say in your corner of the web—and what you’re liable for as a blogger.

 

Blogging on the Wrong Side of the Law

A few examples go a long way, so here are a few bloggers who found themselves facing lawsuits, subpoenas, and (in one case) prison.

1. Perez Hilton: The infamous gossip blogger was served with a defamation lawsuit after alleging that DJ Samantha Ronson was the owner of cocaine found in Lindsay Lohan’s car.
2. Kareem Amer: While not a U.S. blogger, the story of Kareem Amer demonstrates some of the serious risks of unprotected speech. He is currently serving a four-year prison sentence in Alexandria for speaking out against the President and Al Azhar, a religious university.
3. PZ Meyers: Sued in 2007 for writing a negative review of LifeCode: The Theory of Biological Self Organization. The book’s author, Stuart Pivar, charged Meyers with libel after the blogger called him a “classic crackpot.”
4. Lucas Lechuga: This real estate blogger was sued for $25M and lost his job after the developer of Opera Tower filed a defamation claim. Lechuga had made the negative post about the Opera Tower condo development prior to his employment with EMW, the company who fired him.
5. Rick Frenkel: Still heating the presses is the story of Rick Frenkel, the Cisco lawyer who anonymously maintained the “Patent Troll Tracker” blog. He is now being sued by two East Texas patent attorneys who will bring forth charges of defamation.

 

Defamation, Slander, and Libel—Oh My!

While “Defamation!” seems to be the first cry of those wronged by bloggers, there are other speed bumps to watch for when building your blog. Legal trouble for bloggers can manifest in many ways, including: 

• Copyright infringement,
• Trademark infringement,
• Trade secrets violation,
• Defamation (libel),
• Right of Privacy, and
• Publication of private information.

Internet blogs and the law are inseparable. This means that your words must be your own, that you should cite borrowed information (especially if you make a profit off your blog or its ads), and that making false, personal attacks on people is going to get you into hot water faster than you can hit “Submit.” It’s probably also a really bad idea to publish the phone number of that girl who stood you up last Friday and encourage your readers to harass her.

Even if she did break your heart.

 

 

By Kate Beall

Creative Commons and Artistic Copyright.

Black Star Rising put up an insightful article today about the legal limitations of the popular “Creative Commons” copyright, arguing that for-profit organizations are the only true beneficiaries of this goodwill-and-sharing copyright option.

Creative Commons is a system that is intended to encourage the sharing and cross-promotion of photos and other artwork, and it does this via a very permissive copyright license. While it may have been designed to make sharing easier for artists (bypassing the necessity of getting copyright permission for every image posted to blogs, art forums, and other community sites), Black Star Rising claims that Creative Commons is being increasingly abused by for-profit companies who want free images:

“The real issue is commercial use -- and this is where we get to who really benefits, at least over the long term. Before Creative Commons, a corporation or ad agency that wanted to use your photo would have to contact you or your photo agency for permission to use it. You could negotiate a price based on the particular use, making sure you got a fair deal.

Through CC, hundreds of thousands -- if not millions -- of photographers have thrown this right away forever.”

But for artists who aren’t familiar with copyright laws, Creative Commons is often the only visible option for individuals using popular photo-sharing sites like Flickr. This kind of limited visibility is exactly why it’s especially important for artists—from amateur to auteur—to learn how they can best protect their work.

 

Obtaining a copyright license can be as easy as mailing yourself a sealed, stamped copy of your work—but in the digital world, lines are much more frequently blurred. In this case, it’s best to choose a copyright option that gives you full protection over your work. If it’s your first time establishing a copyright for your work, it may be a good idea to speak with an exclusive rights lawyer and make sure that everything is airtight. From there, you can do as Black Star Rising suggests and instruct would-be users to contact you for usage permission.

For more specific legal information about artwork and artistic copyrighting, please take a look at our law library article, “Protecting My Artwork.”

 

 

By Kate Beall

Toyota Bares Teeth Over "Lexus" Trademark Infringement

Toyota chose an unusual legal adversary when it wrote to EBoys Studio, a gay adult films producer based in Switzerland. The letter asks the company to desist from promoting one of its stars who goes by the name of “Lexus.” Toyota claims that “by using Lexus in connection with adult films, EBoys Studio is in violation of § 43 (c) of the Federal Trademark Act, 15 U.S.C. § 1125(c) and tarnishes Toyota’s business reputation” [1]. The gay star argues that his name is merely a tribute to the Greek god, Lexus.

If you’re having trouble remembering what “Lexus” was the god of, you’re not the only one. There is no “Lexus” in the Greek lexicon.

 

But Greek or not, Lexus (the adult actor) is definitely walking on thin legal ice. The Lexus trademark, like many others, is protected from both infringement and dilution, but dilution is the issue in this case. Dilution occurs when well-known and established trademarks (like “Lexus”) are tarnished by the usage of those trademarks in an unrelated way—often in a different line of business. So when Lexus the Olympian decided to bring a Toyota trademark into the adult entertainment arena and Toyota decided it didn’t like these new affiliations with the Lexus name, dilution was the card to pull.

Of course, if I were in Lex’s shoes, I’d be reading up on my defenses to trademark infringement—and kicking myself for not buying that pretty illustrated copy of D'Aulaires Book of Greek Myths.

by Kate Beall

Chef Develops a Taste for Litigation.

A recent story from the New York Times (“Chef Sues Over Intellectual Property”), illustrates just how far intellectual property law is beginning to extend.

While we might think of intellectual property as being largely tied to pirated software downloads and academic writing (and a widespread campaign against plagiarism), property laws actually move through spheres that appear to have nothing to do with them.

And apparently, the restaurant business is the latest hotbed for intellectual property litigation.

Rebecca Charles, founder of the New-York-based “Pearl Oyster Bar,” claims that Ed McFarland infringed on her intellectual property when he “copied” her “white marble bar, the gray paint on the wainscoting, the chairs and bar stools with their wheat-straw backs, the packets of oyster crackers placed at each table setting and” (and this was the coup de grâce) “the dressing on the Caesar salad.” McFarland was her former sous-chef, and had served under her guidance for six years.

Even with all of these facts in place, is it really feasible to defend these details under intellectual property law?

“In recent years, a handful of chefs and restaurateurs have invoked intellectual property concepts, including trademarks, patents and trade dress – the distinctive look and feel of a business – to defend their restaurants, their techniques and even their recipes,” reads the New York Times article, “but most have stopped short of a courtroom.”

 

Let’s take a step back and examine these claims.

How do trademarks, patents, and trade dress interface with the small restaurant business? Aren’t these normally reserved for more “serious” corporations?

Well, with small businesses, trade dress law is as good a place as any to start.

Trade dress, unlike trademarks, is a distinctive, nonfunctional feature that distinguishes a merchant’s or manufacturer’s goods or services from those of another. The bovine-inspired packaging that marks Gateway’s products and stores?  The maroon-and-gold color scheme that makes McDonald’s immediately recognizable as McDonald’s? Both of these are excellent examples of a defensible “trade dress.” But do a marble bar and gray paint really qualify as “trade dress” items?

It’s difficult to say, but it’s also unlikely. While the two rival restaurants provide similar service (right down to the Caesar salad, apparently), Charles would be pressed to build a case on some minor décor. Unless there is a likelihood of confusion between the two eateries, the trade dress declaration may not stand.

 

The Caesar dressing, on the other hand, may yet bear some legal fruit.

If Charles can prove that she had an implied confidential relationship with her sous-chef (and prove that he broke that established confidentiality), she could sue for damages even without a patent. And her words certainly seem to support that kind of relationship: “When I taught him, I said, ‘You will never make this anywhere else.’”

What’s more, if Charles can peg her Caesar recipe as a bona-fide trade secret (something that has independent economic value as a result of its secrecy), she may be able to enlist a trade secret lawyer and burn him for filching her (legally) secret recipes.

So much for a “simple” meal!

by Kate Beall

Registering Your Trademark.

A trademark is a name, logo, phrase, etc. that identifies goods that a party sells. A service mark is similar, but identifies services rather than goods. A “mark” means either a trademark or service mark. Sometimes the name of a business is also used as a mark (particularly with services), but often that is not the case. North American Industrial Appliance Company may not want to use that name on its appliances, preferring WASH WIZARD instead. In that case, WASH WIZARD is the mark. (Of course, some companies use both their company name and a brand name on their goods; then both are marks.)

A newer mark infringes on an earlier one if it causes “likelihood of confusion” due to similarities in words, sound or meaning. (PHYDEAUX might conflict with FIDO, for example.) The basic test is whether it is probable that an appreciable number of reasonable customers or potential customers will be confused, mistaken or deceived regarding the two marks. There is no likelihood of confusion if the two marks are used in completely different commercial fields. For example, THUNDERBOLT used as a mark for software does not conflict with use of THUNDERBOLT for aircraft.

You develop “common law” rights in a mark just by using it so that people start associating your mark with the product or service you offer. Common-law rights can be strengthened by adding a superscriptTM (for trademarks) or a superscriptSM (for service marks) after the mark. This puts others on notice that you are claiming that mark as your own.

Registration Strengthens Your Rights

By registering the mark with the state, the federal government – or even foreign countries – you strengthen your rights to the mark. State registration covers the whole state and federal registration covers the whole country. If the first user of a mark does not register, that user retains the right to use the mark in that field of business within those geographic areas even if someone else obtains federal registration for the mark. When that occurs, though, the first user generally will not be able to expand use of the mark beyond that user's original geographic areas where goods or services were provided. For that reason, registration is generally a good idea.

State registration is relatively simple and quick, but it gives protection only in that state – though other parties are likely to be reluctant to use a mark in the same field nationally if it has already been registered in California.

Federal Registration

Federal registration provides nationwide protection, although the application process is far more complicated and takes far longer. One problem is that the United States Patent and Trademark Office (“USPTO”) now has an unofficial policy of objecting to every application. To continue the registration process, one has to respond with legal arguments. As a practical matter, this makes it difficult to obtain federal registration unless you have an attorney. (Note that the initial application can be important in this regard, since the USPTO generally will let one reduce the scope of the description but not allow substantial changes in the subject matter.)

While federal registration requires sales across state lines or to foreign countries, you can “reserve” a federal mark prior to actual use by filing an “intent to use” application stating that the mark will be used within the next six months. This period can be extended in six-month blocks for up to approximately two years total so long as progress is being made toward getting the goods or services sold outside the state. Once the mark is in use, the registration is retroactive back to the initial reservation date (rather than the date the mark was first used out of state, which is the usual effective date).

Note that with services the USPTO deems the services to be offered across state lines once a web site advertising those services goes live. If you are offering services, be sure to keep track of the date that you first advertise those services on your web site. Actually, for all marks, it is important that you keep track of the first few sales using that name both 1) within the state and 2) across state lines or to a foreign country. (Sometimes that is the same date.)

With a federally registered mark, an ® must be used after the mark to get the full legal benefits of registration. This symbol can ONLY be used for marks registered with the federal government. (Registration on a state register is not sufficient.)

Choosing a Mark and Name Searches

Care should be taken in choosing a mark. The more fanciful a name is, the easier it is to register and protect; the more descriptive a name is, the harder it is to register and protect. Arbitrary and fanciful names make the strongest marks then, in descending order, suggestive names and descriptive names.

Generic terms cannot be registered – or someone would be able to register the word “car”. In addition, deceptive names (for example, false descriptions of origin), national insignia, and the name or image of a living person who does not consent cannot be registered.

Obviously it’s far better to perform a name search in advance of registration rather than spend the money on a registration application – and spend time and money building up the brand – then receive a “cease and desist” letter from an earlier (“senior”) user. A key question is whether someone else is using a similar name in the same field.

The following should be done for a name search:
(1) Perform Internet key-word searches (be sure to check for variations on the name).
(2) Check to see if the domain name is taken (check other endings such as .biz and .net as well):
http://www.networksolutions.com/cgi-bin/whois/whois

is one place to do this; http://www.tucowsinc.com/ is another.

(3) Check the California business-name list: http://kepler.ss.ca.gov/list.html

(4) Conduct a search of the federal trademark register. (Be sure to search for variations on the name): http://tess.uspto.gov/bin/gate.exe?f=tess&state=1lg2ke.1.1
http://strategis.ic.gc.ca/cgi-bin/sc_consu/trade-marks/search_e.pl
http://www.dialog.com/contacts/forms/member.shtml

The service you want is probably DialogSelect.

(5) Possibly perform an Canadian search.

(6) Do a Dialog or similar search for state registries and business-name registries. On this one there is currently no free search. You start setting up a Dialog account by completing the form at
Alternatively, have your attorney conduct a name search.

Trademark Registration of Domain Names

To register a domain name as a trademark, it is necessary to have a functioning web site that offers a service or product associated with that domain name (versus just reserving a URL). You have to use the full domain name (including the “.com” or other ending) for this to work. In addition, a domain name is registrable as a mark only if it is used in a manner that will be perceived by potential purchasers as branding the goods or services – and not as merely as the path used to access a web site. AMAZON.COM is registered as a trademark.

In disputes between owners of domain names and owners of marks, generally whoever began using the name first (usually the trademark owner) wins – assuming they are using the name in good faith.

Disputes over domain names (as in the case of alleged trademark infringement) are handled by mandatory ICANN (Internet Corporation for Assigned Names and Numbers) arbitration – unless someone files a lawsuit. ICANN has the power to cancel or transfer a domain name. Basically ICANN will look at whether the “defendant” started using the domain name in bad faith or whether the “defendant” has a legitimate interest in the domain name. Bad faith is demonstrated if the “defendant” has registered the domain to prevent an existing owner of the mark from using the domain name, to disrupt a competitor’s business, to create confusion with an existing mark, etc.

Registering marks takes some effort and money, but can be extremely valuable in protecting your marks and keeping competitors from using confusingly similar marks.

Bruce E. Methven
Methven & Associateswww.methvenlaw.com
bmethven@methvenlaw.com

How Do I Name My Business?

In our capitalistic society, businesses are continually being formed and just as quickly being dissolved. In the land where anyone has the chance to start a successful business, many people get so excited over their idea, that they forget to take the appropriate steps to protect their business interests in the future. What exactly do I mean? Well as a Professor once told me, “Lawyers are deal killers, because they are always thinking about what could go wrong, unlike the businessman who is always thinking about what could go right.”

One area of common confusion for new entrepreneurs is the area of trademark law and the possible repercussions that can result from not properly registering your business’ mark or logo with the United States Patent and Trademark Office or the appropriate state agency.

The first thing that people must realize is that there is a distinct and profound difference between registering the name of your corporation, partnership, or proprietorship with the state in which you reside and registering your trademark with either the state government, if you only conduct business in that state or locale, or with the Patent and Trademark Office when conducting interstate commerce, whose application one may now complete online.

So, what is a Trademark and do you have to have one. Well, first, a trademark is a word, phrase, logo or other symbol, used to identify a product, the source of a product and the manufacturer or merchant. A trademark is usually used to distinguish one product and its manufacturer from another. And second, unlike a business name, you do not have to register for a trademark, but if you do not, you may not be able to prevent someone else from using your name or logo. In addition, if a competitor decides to register the same mark, and you have not, they can prevent you from using that mark in the future.

How do you earn the right to a particular trademark? Well, there is both a formal and informal requirement for the use of a trademark. First, one must conduct a thorough search, either through their own efforts or through that of a trademark attorney, and determine whether that name or one in which there would be a substantial likelihood of confusion between your proposed name or logo and one that is already in use ().  An overview of the PTO website, the phone book, and state and federal business directories are all good resources when conducting this search.

Second, one must begin to use that name either in association with their products or services, because in the end, trademarks are really designed to protect consumers, and help them identify one business’ services or products from another. The use of a trademark carries several requirements for effective use. (). Establishing your business in compliance with state and federal trademark law can carry the benefit or creating a lasting name or logo for your business, a name that, along with you business, will hopefully endure for a long time.

By Evan Anderson

Welcome to the LegalMatch Intellectual Property Law Blog!

Are you seeking legal advice or representation on an intellectual property law-related issue? Perhaps you're an attorney who specializes in intellectual property law? The LegalMatch Intellectual Property Law Blog is the online source for relevant and informative articles and information.LegalMatch offers an authoritative and trustworthy voice on the issues of the day as they concern the legal industry and you as a consumer. Please note, the articles and information in this blog are for informative purposes only. Always consult the professional advice of a lawyer for your particular legal issue. Enjoy!

To Share or Not To Share…

Recently the United States Supreme Court unanimously decided that internet file-sharing services and software providers will be held liable if their intent is for their customers to use the services to share songs and movies illegally.  This decision overturns the lower courts ruling that these parties would not be responsible for the piracy of 3rd party users.  Who will be affected?  The hardest hit will be websites that offer sharing of illegal copies of music and movies. 

The issue at hand:  Copyright Infringement.  Copyright infringement is the unauthorized use of copyrighted material that infringes on the exclusive rights of the copyright owner.  According to music industry estimates, 90% of movies and music copied on the file-sharing services are downloaded illegally.  The copyright owners include music and movie artists who estimate that they lose billions of dollars in revenue when people illegally share copyrighted material.

The new standard set forth by the Supremes: Intent.  Previous court decisions revolved around technical issues such as where the illegal files were stored.  Now courts will focus on the intent of the file-sharing services.  When they design and distribute their services, what is their intent in doing so?  Do they know that their services will be used for illegal purposes?  Of course.  Do they make a lot of money selling their services?  Of course.  But now they must be careful because they may have to pay out millions to artists for copyright infringement.  Opponents such as Michael Petricone from the Consumer Electronics Association have said, “I am very concerned that this new liability theory of intent will freeze the introduction of new technologies.”  The music industry could not disagree more.

The reason for this crackdown?  It is too costly to go directly after the millions of people who illegally share music or movies.  Yes, it is illegal for you to download free music and movies and yes you can be found guilty of copyright infringement.  The Recording Industry Association of America (RIAA) is actively monitoring file-sharing services to find out information about those who are illegally downloading copyrighted files.  Recording companies have already sued thousands of people for illegally downloading music and/or movies.  At least 600 of those cases were settled for approximately $3,000 each. 

Piracy can carry stiff penalties so be careful and think twice about file sharing illegally.  It may be more economical just to pay for the songs or movies that you want.

By Lisa Zanassi