Trademark Lawyer Blog

Microsoft has prevailed in its appeal from a $388 million dollar penalty levied against it in a patent infringement case. Uniloc, a California security software company, filed a lawsuit in 2003 against the software giant, claiming that Microsoft infringed on its patent for an antipiracy software-registration system.

Judge William Smith, of the U.S. District Court for the District of Rhode Island, overturned the initial decision and held that Microsoft does not have to pay any damages to Uniloc. The award would have been among the biggest ever granted in an American civil patent action.

Usually computer software is protected by copyright law, so this is a unique case in which a patent was issued. We don’t have all the facts, so it’s hard to draw any conclusions, but I find myself pulling for the little guy!

A thoughtful patent attorney can ensure that your rights aren’t bulldozed by big business.

A lawsuit commenced by guitarist Joe Satriani against a wildly popular British band and its record company has been dismissed. Satriani alleged that Coldplay stole substantial parts of his 2004 song “If I Could Fly” and improperly used them in their hit song “Viva La Vida.”

From court records of the case, it seems that there was a settlement between the parties. Neither side is admitting that any agreement was reached. Interestingly, another musician, Yusuf (Cat Stevens) is now claiming that “Viva La Vida” ripped off his song “Foreigner Suite” from 1973.

I went through an entire week with Coldplay's version of the song going through my head. I even downloaded it, and listened to it on repeat, hoping that I would get sick of it, and stop singing the song in the shower. It would have been interesting if this case had gone to trial to find out what really happened!

Blogging has become a popular and effective way to disseminate information about your business and personal life. While some bloggers prefer to use original content in their posts, it is also acceptable to borrow media and information from other internet sources. As a result, many blogs are the product of information that has been copied and modified. Because some of the materials on the internet may be copyright protected, it is important to observe the following guidelines when borrowing to blog.

Use ideas. Recall that a copyright only protects the expression of an idea. It does not protect the ideas or information behind the expression. Therefore you have more liberty to use other people’s ideas and information so long as you’re not copying the manner in which such information is arranged or expressed.

Public Domain. Materials created prior to 1923 or prior to 1977 without a copyright notice are considered to be in the public domain. That means they are not afforded copyright protection. Thus, you have free reign over public domain materials.

Beware of infringement claims. Realize that in the event of an infringement complaint, you may not be able to remove the troubles by simply taking down the infringing post. Most people take a lighthearted approach to the unauthorized copying of protected materials; they assume a case will be dismissed when they remove the protected materials. They also assume copyright infringement only applies when the copied work is misappropriated for commercial use or to make a profit. Such assumptions are not true. The act of infringement is committed, regardless of whether it’s for a commercial purpose, when the work is displayed without the owner’s permission or not pursuant to the fair use doctrine.

For more information on the proper use of electronic media, contact an experienced copyright attorney.

If you are thinking about registering a company trademark under an alternate domain name, think again. The American Automobile Association (AAA) recently sued James Van Johns, a Pennsylvania resident, for violating federal cybersquatting laws. According to the Anticybersquatting Consumer Protection Act, a trademark holder can sue anyone who registers or uses a domain name that may confuse consumers or mislead them into believing the website is endorsed by the mark holder. Van Johns had registered the website AAA.net which appeared similar to AAA’s website, AAA.com. This would have likely confused consumers trying to connect with AAA, especially since Van John’s site featured advertisements for AAA’s competitors.

Fortunately, the parties were able to settle and each side paid their own legal fees. As a result of the settlement, Van Johns had to release AAA.net to AAA without any payment. He is further prohibited from registering any other web addresses similar to AAA.

Louis Vuitton, the high-end fashion retailer, has been awarded $32.4 million dollars in its trademark and copyright infringement case against Akanoc Solutions, Inc., and Managed Solutions, Inc., a pair of website hosting companies. The case, Louis Vuitton Malletier v. Akanoc Solutions, Inc. et al., was held in the U.S. District Court for the Northern District of California and a jury rendered the verdict.

What’s unique about this case is that the defendants did not commit any direct violations themselves, but hosted sites that sold Louis Vuitton knock-offs. Contributory trademark infringement is a legal theory wherein a defendant may be liable for assisting trademark infringement or having control over others who directly infringe.

In order to be held accountable for the acts of others, the defendant must know or should have known that another’s conduct constitutes infringement and the defendant must give substantial assistance or encouragement to those that directly infringe. I think it’s fair that secondary actors and entities that enable infringement are liable for either actively helping infringers or looking the other way!

Want to keep your trademark safe from any type of infringer? A trademark lawyer can preserve the strength of your brand!

Businesses know it is important to protect their trademarks from infringement. If they do not protect their marks, they could lose their exclusive right to use the marks. Some businesses are more aggressive than others in protecting their marks. McDonald's aggressively protects their trademarks. They have filed several lawsuits over the years, attempting to protect the “Mc” term in restaurant and food product use. The key factors in trademark infringement cases are whether the use of a similar mark will cause consumer confusion as to the source of the goods or services or is deceptive in some way.

In the latest installment of the “Mc” lawsuits, a Singapore restaurant franchise has finally won a trademark infringement case brought against it by the international franchise giant McDonald’s. The lawsuit started in 2001, when McDonald’s sued Malaysian Chicken Curry, which advertises itself as McCurry, for trademark infringement for the use of the term “Mc”. McDonald’s claims exclusive right of the “Mc” term in restaurant and food product advertising. The Malaysian Chicken Curry restaurant started in 1999 and serves Malaysian style cuisine. The restaurant is named after one of its popular dishes, Malaysian Chicken Curry. McCurry lost the case at the trial level, but after appeals, the court ruled in favor of McCurry.

While McCurry must be happy with their result, this finding will have dramatic effects on the strength of McDonalds' "Mc" designation in Malaysia. Will there be a snowball effect if other countries follow in the High Court of Malaysia's footsteps? Do you think the American court system would have come to a conclusion different from its Malaysian counterpart? Do you think sometimes businesses go too far in trying to protect their trademarks? There are so many possibilities--let's discuss!

Franchisors and franchisees must protect the trademarks and service marks that identify their services or goods, but they also must be careful not to infringe upon other’s trademarks or service marks. Litigation can be costly, and whether you win or lose, a lawsuit could potentially bankrupt your business.

One such example of a franchise having to litigate a case is Paris Hilton’s lawsuit against Hallmark Cards. The dispute is over the use of a likeness of Paris Hilton’s head and the slogan “THAT'S HOT." This phrase was the topic of a previous Celebrity Trademark spotlight I did, featuring the scrawny blonde drama queen's trademark application, which is still pending with the USPTO. Hallmark Cards used the likeness and slogan on a card sold in its franchise stores. Paris Hilton has trademarked the slogan she made popular in the television show, “The Simple Life”. The case is has not been finally decided; however, Hallmark Cards recently lost its appeal for dismissal. The 9th Circuit Court of Appeals has remanded the case to the trial court so the disputed issues can be decided.

The whole purpose of trademarks and service marks is to give businesses something to uniquely identify their services or goods. Obviously, you want to use your franchise’s trademarks and service marks as often as possible for branding purposes; however, when preparing advertising or marketing material for your franchise, it might be a good idea to consult with an attorney to make sure any likenesses or images used are not already protected.

Some of the reparations sought by the plaintiffs in a class-action suit against YouTube, the ubiquitous video sharing website, have been thrown out by a U.S. federal judge. Judge Louis Stanton, of the Southern District of New York, denied a number of plaintiffs’ claims for statutory damages.

YouTube is a subsidiary of Google and receives 1.2 billion video views per day. Its level of exposure has soared as amateurs and professionals alike post over 65,000 new videos every day. The clips uploaded run the gamut from home videos to pro sports highlights to news updates.

The judge ruled that statutory damages for all domestic and foreign works that are not timely registered are barred by the Digital Millennium Copyright Act of 1998. He further declared that some of the videos in question were foreign works not governed by U.S. copyright law and therefore punitive damages would not be available for them. This decision appears to have no bearing on several of the other plaintiffs as their works fall under the Copyright Act.

YouTube is by no means out of the woods yet, as another, far more ominous lawsuit has been filed against Google by Viacom, to the tune of $1 billion dollars. At this stage, Google’s main defense seems to be that as long as it immediately takes down illegal videos once it becomes aware of a violation, it is in compliance with the Copyright Act.

I, for one, really enjoy YouTube videos and hope that it can find a way to operate within the bounds of copyright law. It would be a shame for such an innovative site to be shut down, so hopefully some sort of licensing agreement or other permission can be secured.

What’re your feelings on YouTube? Please post your comments or contact me to discuss!

Computer giant International Business Machines, Corp. has been taken to court by MOSAID Technologies, Inc., a Canadian intellectual property development firm, for suspected unlicensed use of MOSAID’s technology. It is claimed that IBM manufactured and sold microprocessor and circuit products that use Dynamic Random Access Memory patents belonging to MOSAID. The suit was filed in U.S. District Court in Delaware and alleges six different counts of infringement.

MOSAID has been a trailblazer with respect to DRAM and has enjoyed a virtual monopoly over the DRAM licensing market. MOSAID has agreements in place with Fujitsu, NEC, Toshiba, Hitachi, Mitsubishi Electric, and Oki Semiconductor. Interestingly, MOSAID says that its hand was forced regarding IBM due to stalled talks between the parties regarding possible licensing for the patents in question.

This is not the first time that MOSAID has cried foul; it has filed suits against Samsung, Infineon, and several other companies in the past for similar conduct. Samsung ultimately settled with MOSAID and came away with a five-year license agreement to use MOSAID’s inventions.

I think MOSAID is doing the smart thing by actively pursuing companies it feels are infringing upon its patents and ensuring that it is justly compensated for its innovation. Despite the difficult process of initiating litigation against every potential copycat, it is imperative that intellectual property be guarded as fiercely as possible so that your business can reap the hard-earned benefits of its R&D. Patent prosecution can and does pay dividends for decades.

Contact a patent attorney to protect the fruits of your labor for years to come!

The Associated Press has reached an agreement with All Headline News, to drop its intellectual property lawsuit alleging that AHN essentially stole AP stories and tried to pass them off as its own. The complaint included misappropriation of news reports as well as copyright and trademark infringement.

The suit was filed in January 2008 in the U.S. District Court for the Southern District of New York and the AP relied heavily on the theory of “hot news.” This theory was originally set forth in International News Service v. Associated Press, 248 U.S. 215 (1918), wherein the Supreme Court held that, as far as ownership rights, breaking news may be treated like quasi-property. U.S. District Court Judge P. Kevin Castel ruled that “hot news” could serve as a basis for a misappropriation claim in the instant case, because money, time, and resources were expended to gather this information. This decision was somewhat surprising as most view “hot news” to have limited applicability.

The AP accused AHN of actively copying its news information without a license and rewriting it to appear as AHN’s original work. The suit was ultimately resolved in June 2009 and as part of the deal, AHN conceded that it had used AP intellectual property without permission in several instances.

If someone had pilfered my work, I would find out whether they intended on giving me credit for my work, or whether they intended to compensate me for what was rightfully mine! It is unsettling when people try to take credit for someone else’s efforts, because it doesn't offer any motivation for creative, hard-working individuals to keep contributing to the public sphere.

Want to insulate yourself from intellectual property theft? Contact an intellectual property attorney to learn how to guard your important business content!

Popular social networking website Facebook implemented a new policy effective as of June 13, 2009 enabling users to register URLs for their usernames. What this means is that a Facebook user may register, for instance, www.facebook.com/pepsi as the address for his or her profile. The registry process is a first-to-register system awarding a specific username to whomever requests it the earliest.

Users with no connection to, or legal permission from, registered trademark owners may seek to register existing trademarks on Facebook and preempt the registered trademark owners from obtaining their rightful usernames. An association of your trademark with an unrelated profile, especially on a platform as prevalent as Facebook, unfortunately can have detrimental consequences for your product, service, and/or brand image.

My firm has used its own trademark on its Facebook page. It is "www.facebook.com/WoodAtterWolf." I would be incensed to know that other law firms might be using our trademark to direct traffic away from our profile, towards themselves, and I would certainly take measures to stop this infringing use.

Facebook has included some limited safeguards but the onus is on the registered trademark owners to actively ensure that misuse does not occur. If you have discovered infringement, Facebook provides a link to report unauthorized use of your trademark to them.

I am curious as to ICANN’s (the Internet Corporation for Assigned Names and Numbers) role in this subject. ICANN has adopted several domain name dispute policies, including the UDRP (Uniform Domain Name Dispute Resolution Policy) for its accredited registrars. My guess is that many Facebook users who use another’s trademark name for their profile will find themselves tangled up in a domain name dispute resolution procedure. This could be a messy situation, since there are many complicated and intricate rules even under the UDRP.

Unsure of the implications this development may have on your registered trademark? A trademark attorney can inform you of all the potential ramifications.

Universal Music Group, the copyright holder of Prince's song, "Let's Go Crazy," earned over $6.9 billion in 2007. In February of that same year, toddler Holden Lenz was lucky to take 6.9 steps on his own two feet. But that didn't stop Universal from suing Holden's parents for copyright infringement, when they posted a 30-second video on YouTube of the baby bobbing to "Let's Go Crazy," playing faintly in the background of their kitchen in Pennsylvania.

Long before the tot could sing a nursery rhyme, his case set a precedent in federal court. The Northern District of California interpreted the Digital Millenium Copyright Act (DCMA) as requiring copyright owners to conduct a good faith evaluation of alleged infringement to consider fair use of the work, prior to sending takedown notices to websites like YouTube. Failure to do so could expose the owner to damages. This case essentially placed the burden of preventing online copyright infringement back on the owner.

The DCMA establishes safe harbors for internet hosts, so that they are not liable for the infringing acts of individual website owners or public posts on websites. Online companies like Facebook, MySpace, and YouTube enjoy the benefit of this safe harbor if they expeditiously remove allegedly infringing material, upon receiving a Takedown Notice from the owner. The online company then must notify the posting party, so that he can send a counternotification that he believes, in good faith, that he is not infringing. Unless the owner filed an infringement suit against the posting party, the online company, obviously caught in the middle of this war, then has 14 business days to restore the material on their site.

Because the Takedown Notice is relatively easy to send, and it starts such a flurry of burdens on online companies, the Lenz case requires copyright owners to do their due diligence to first determine whether there has been fair use of their material. Otherwise, the copyright holder faces liability for misrepresentation.

While strict copyright laws are intended to promote creativity, by protecting the rights of those who express creativity on a tangible medium. Although initially counterintuitive to place the burden back on copyright owners to perform due diligence investigations on alleged infringers, this requirement may, in itself, promote creativity. Lenz's attorney, Corynne McSherry argued that people who post on online sites "create a new and more vibrant public sphere," and that these posts should not be discouraged.

I absolutely agree with McSherry. I am one of millions of Facebook junkies. My friends' videos, photos, and posts are what make Facebook so intriguing (and addictive). The fair use of copyrighted material becomes a springboard for my friends' own creative works. Without my friends' contributions, the allure of Facebook would literally fade away.

What do you think? Read more about this story in an article by the ABA Journal. I'd love to hear your comments--contact me to discuss!

When does a fan’s admiration become copyright infringement? This question was at issue when J.K. Rowling, author of the famed Harry Potter novels, filed a complaint against Steve Vander Ark, a fan of the series. In ruling for infringement, a federal judged enjoined Ark from publishing his book, “The Harry Potter Lexicon” and awarded Rowling monetary damages.

Prior to writing the book, Ark created a website, also called “The Harry Potter Lexicon.” The website defines and cross references characters and elements from Rowling’s novels in addition to providing updates about Harry Potter film releases and events.

During the lawsuit, Ark defended his position with fair use. Fair use is a legal defense that allows an author or artist copy a limited amount of preexisting material, without permission, for incorporation into a new work.

However, the judge determined that the Lexicon was a mere compilation of Rowling’s copyrighted work and did not qualify as a new expression for the fair use defense. Other examples of compilations include “Best Of” albums such as Best Hits of the 1980s. Generally, the creators of such compilations must either own the rights or have authorization to use the individual works.

As the Internet becomes a more integral part of life and business, disputes inevitably arise over domain name use. A domain name, sometimes called an "Internet address" or "URL", is registered with a domain name registry. The Uniform Domain Name Dispute Resolution Policy (UDRP) provides trademark owners a remedy against infringing use of domain names.

Domain name registrars can adopt the UDRP by incorporating its language. In that case, you will be contractually bound to the terms of the UDRP when you sign a registration agreement. By registering a domain name, you represent that you are authorized to use that term. In other words, you warrant that the word you use for your domain name will not infringe on another person's protected trademark.

A valid trademark owner can file a complaint with an approved dispute resolution service provider if abusive domain name registration is suspected. Abusive registration includes using a domain name that’s considered identical or misleadingly similar to a protected mark, in bad faith, and with out authorization from the owner of the protected mark. The offender may be required to submit to an administrative proceeding such as arbitration by an independent panel of the dispute resolution service. If the panel determines that the offender has violated policy rules, the offender's domain name may be suspended or transferred to the owner of the original trademark. In any event, offenders are not entitled to refunds from the domain name registrar.

If you suspect improper use of your registered trademark in an internet domain name, contact a competent trademark attorney to explore the possibility of filing a complaint.

Of the five titles of the Digital Millennium Copyright Act ("DCMA"), I have the most inquiries about Title II, the Online Copyright Infringement Liability Limitation Act ("OCILLA"). This title addresses liability of online service providers ("OSPs") in copyright infringement actions.

With the advent of the Internet, instances of copyright infringement exploded. Copying another's work is as easy as a copy and paste from one source to another. Copyright owners faced the challenge of enforcing their rights against online infringers, who were either difficult and/or expensive to find, and once found, these infringers often had no money to compensate the original author/creator. As such, copyright owners turned to OSPs as parties in litigation, since OSPs were easier to find, and often had more financial resources to pursue.

The DMCA was signed into law in 1998 to better protect OSPs from the massive onslaught of infringement claims. In general, OCILLA created safe harbors for OSPs, such that OSPs could not be held liable for copyright infringement if its capacity was only as a passive conduit for Internet information, and if it did not know about or actively participate in the alleged infringement.

To qualify for these safe harbors, OSPs should do the following:
1) Designate an agent to receive infringement claim notices from copyright owners;
2) Designate a person to deal with those infringement claim notices;
3) Implement and execute a policy to terminate the accounts of repeate copyright infringers, and make this policy known to all Internet subscribers;
4) Take action, such as removing or blocking access to allegedly infringing content, once alleged infringement has been discovered; and
5) Accomodate and cooperate with measures that copyright owners take to identify or protect their copyrighted works (which could include use of watermarks or encryption to prevent copying and pasting of their work).

For more information, visit the U.S. Copyright Office website.

A divorced, single mother of four is taking on the mogul of sexy lingerie. She can do it because she spent $12,000 to build a prototype and apply for a patent, which was issued in 2004.

Katerina Plew invented a bra featuring numerous loops and hooks, so the straps can be positioned in a combination that would keep them hidden under most styles of clothing. Plew sent a copy of her patent and various promotional materials to Victoria's Secret, in hopes that she could license the rights to them. About a year after Victoria's Secret cancelled their appointment with her, Plew saw her invention offered for sale at a Victoria's Secret store. Watch the AP video featuring Plew's story.

Plew took the proper steps to protect her invention. Take a look at the patent for this bra. Without this patent, she would not be able to prove how others are infringing upon how her invention is made. If you have an invention, I recommend that you build a working prototype, and seek the advice of a patent attorney before attempting to market or promote your invention.

Last summer I took a vacation far from my office in Jacksonville, Florida, to visit New York City for the first time. It was an interesting experience, to say the least. One of the most interesting sights, of course, being The Naked Cowboy.
The Naked Cowboy is not your average guitar-strumming entertaininer. You can't miss him: he's the buff guy in white briefs, a straw hat, cowboy boots, and oh yeah, he spends most of his days in the middle of Times Square. If that's not surprising enough for you, he allegedly makes $5,000 per hour.
Recently, Mars, Inc. launched an ad campaign for their product, M&Ms. The TV commercial features a blue version of their candy coated chocolate, standing in Times Square, dressed in a manner that unmistakably is mimicking The Naked Cowboy.
The Naked Cowboy, whose real name is Robert Burke, is Mars, Inc. for $6 million for trademark infringement, unfair use of his image to endorse a product he does not support, and attorneys' fees. See the Complaint he filed here. The trademark infringement allegations are based on Burke's registered trademarks of the name "The Naked Cowboy," and his image (Reg. Nos. 2560456 & 2760208, respectively).
With the Complaint filed in February, it could be months or years until the case is dismissed, settled, or goes to trial. For updated information, contact me, and I'll see what information I can dig up.

Just because another party has registered a trademark does not necessarily exclude you from using and registering that trademark as well. Trademark protection depends on the scope of use, extent of use, use of the trademark in a geographic location, and association with a particular set of goods or services, among other factors.

Furthermore, a registered owner may agree to allow another to use the registered trademark, or grant a license to another to use that trademark. Permissive use or licensing involves negotiation of fees, costs, use, and royalties.

On the other hand, registration does not guarantee exclusive ownership. Rights associated with registration may cease if the owner stops using the trademark (either entirely or for the purposes stated in the application for registration), if the owner fails to pay maintenance fees, or if another party can prove that the registered owner was not, in fact, the first to continuously use the trademark to identify goods or services.

Labels: goods and services, infringement, licensing, trademark, trademark registration

Politicians have been making their rounds in Jacksonville, Florida recently, promoting their campaigns. In a country where corporate powerhouses like Napster have made headlines for prosecuting teenagers who download music without permission or payment, could presidential candidates McCain or Obama be accused of a similar transgression?

Apparently so. The band, the Foo Fighters, has accused McCain of misappropriating their song, "Hero," for the purpose of promoting his campaign. Similarly, Obama has been under fire for using the legendary song, "Soul Man" without Sam Moore's permission.

Even McCain's running-mate and co-maverick, Sarah Palin, has been in cahoots with the band, Heart, for the use of the song, "Barracuda." If Heart has not been compensated for the use of their hard-driving rock song, they should be! Association with the song has given birth to a pop culture brand name. This has parleed into an entire line of "Sarahcuda" products, the intent of which are obviously to promote Palin.

Copyright misappropriation is theft. Because I represent musicians, most of whom are garage bands and independent artists, I do a lot of advising as to proper channels to get permission for using the music and lyrics of popular artists. On the flip side, I also stand up for these "lone voices," when they feel that another artist has misappropriated their work. My name is Jo-Anne Yau, and I approved this message.

Labels: artist, copyright, garage band, misappropriation, music