Thursday, December 10, 2009
Uncle Larry hired an expert to conduct a survey and the survey showed that a majority of consumers presented with images of the nephews' films with the FLYNT name on them associated the nephews' FLYNT films with Uncle Larry. If the jury is persuaded by that evidence, that is going to help Uncle Larry's case. So will the fact that the nephews used the following phrase in their promotional flyers: "You know the name, you know the game". That might convince the jury that the nephews were trying to trade on their uncle's fame. The nephews' lawyer has countered with a good - if slightly tongue-in-cheek - response: consumers of pornographic films are "careful and discerning" when it comes to choosing the films they watch or buy and carefully study the product before making a purchase. Therefore, there is not much of a chance that consumers will be confused or led to think that the nephews' FLYNT films come from the same source as Hustler's films. Although many people find jury duty boring, we suspect that the eight jurors in this case will be able to pay attention during the trial. After all, as Uncle Larry has said in criticizing the films produced by his nephews: "I think there is a thin line. As a society we've come to accept what I like to refer to as 'vanilla sex'. But if you get too trashy, people get uncomfortable". We can hardly think of anyone these days who would be able to speak more authoritatively than the elder Flynt on this subject. Filtering out the subject matter for the moment, from a pure trademark perspective we believe Uncle Larry has a compelling case. More to follow as the trial is scheduled to end next week.
Thursday, December 3, 2009
Friday, November 27, 2009
Sunday, November 15, 2009
* Trademark and domain name disputes are continuing to explode and the landscape will only get more challenging for brand owners as the number and variety of top level domain names (.com, .net, .org, etc.) expand almost geometrically;
* Although the U.S. Copyright Office's efforts to implement an online copyright registration system have been well-intentioned, the Copyright Office is seriously underfunded and the online registration system is slower than the previous hard paper-only procedure;
* As the cost and difficulty of enforcing patents increases, so does the importance and value of using trademarks, copyrights and trade secrets to protect and exploit your brands, content and inventions; and
* In what may be more than just a nod to the explosion of social media/networking, Facebook's former privacy chief who is running for California Attorney General delivered one of the Institute's keynote addresses.
More to follow in the days to come; stay tuned.
Friday, October 23, 2009
Thursday, October 15, 2009
Thursday, October 8, 2009
Tuesday, September 22, 2009
Monday, September 14, 2009
Wednesday, August 26, 2009
Monday, August 17, 2009
Wednesday, August 12, 2009
Tuesday, August 4, 2009
It should be interesting to see how this works out.
Saturday, July 25, 2009
Friday, July 24, 2009
3:30-4:30 Comic Book Law School: Hot Topics— Move over Whoopie and Barbara! It's time for these savvy legal minds to share their views on the ever-evolving legal world, spotlighting cutting-edge, evolving issues being faced by the creators, publishers and distributors of creative works. An all-star panel of attorneys—David Branfman, Alexander Harwin, and David Lizerbram, with moderator Michael Lovitz—shed light on important issues facing individuals and companies alike. Topics will include the new online copyright application process, preregistration of copyrights, fair use, piracy, and the growing popularity of the CopyLeft movement. (Please note: The Comic Book Law School seminars are designed to provide relevant information and practice tips to practicing attorneys, as well as practical tips to creators and other professionals who may wish to attend. This program is approved for one credit of California MCLE.) Room 10
For any of you who will be at Comic-Con today, please stop by and let us know what you think about all of this.
Friday, July 10, 2009
Friday, July 3, 2009
Sunday, June 28, 2009
There are, however, two bones we have to pick with the Washington Post article. First, the article implies that the copyright owner shouldn't perform or display their work until the copyright registration is officially registered with the Copyright Office. We think that is an overly restrictive approach. Why? Because once the copyright registration is issued by the Copyright Office, it will be given an effective date of registration retroactive to the date the copyright application was filed. Additionally, you can put the world on notice that you consider your work to be protected by copyright law by placing a proper copyright notice on your work. For example: Copyright 2009 David P. Branfman.
Second, the Washington Post article suggests that the ONLY way to stop someone from copying your work is to file a copyright application. That's not entirely accurate. What is important to understand is that the copyright owner can not sue someone for copyright infringement until the copyright application for the work in question has been filed. [Some courts require the actual registration certificate in order to maintain a copyright infringement lawsuit, but more and more courts are allowing a lawsuit to be filed as long as the copyright application has at least been filed - even if the registration certificate hasn't been actually issued at the time the lawsuit is filed. Those courts then require the copyright registration certificate before a copyright infringement case can go to trial].
Thursday, June 18, 2009
Friday, June 12, 2009
But here’s where it gets interesting and dangerous: Facebook is going to allow its members to register these new user names and URLs on a first-come, first-served basis and will allow the user name to include the user’s name OR someone else’s name or trademark – including yours. Why Facebook just announced this policy this week and is implementing it so quickly without giving trademark owners time to analyze and address the situation is something of a mystery.
We believe this means that trademark owners must immediately register their trademarks with Facebook as a way of stopping someone else from using your trademark as a Facebook username. Here is a link to Facebook’s Form for Preventing Registration of a Username:
Trademark owners must provide a trademark registration number. There is no mention by Facebook of how it will handle a trademark that is represented by a pending trademark application as opposed to an actual issued registration, but we are advising our clients to register marks that are the subject of a pending application by entering the application serial number where the registration number is asked for or to enter into their Fictitious Business Name Statement number if they do not have a pending application. We can all sort out later how Facebook is going to deal with this issue. Presumably Facebook is going to block the use of that trademark as a username by any of its members once the form has been completed and submitted.
If a company misses tonight’s deadline, Facebook will feature a grievance procedure allowing brand owners to report that someone's username infringes on their intellectual property or publicity rights. How that will work in the real world is anybody’s guess.
The new Facebook username policy is, of course, a two-sided coin: on the one hand trademark owners will want to register/protect their trademarks with Facebook today in order to protect their brands from cybersquatting by unauthorized third parties; on the other hand trademark owners may want to set up their own Facebook accounts in order to take advantage of owning some cyber real estate to promote their products and services on what is currently one of the most popular social networking websites around.
There is more that can be said about all of this, but given the shortness of time we are sending out this brief announcement now. We recommend that you take care of this now by either handling it yourself or assigning it to someone in your organization. If you would prefer that we handle it for you, please let me know. If you are already a client of ours, we obviously have a list of all of your trademark registrations and applications handy and can complete and submit the form fairly quickly and easily for you.
Wednesday, June 10, 2009
Friday, May 22, 2009
Monday, May 11, 2009
Friday, May 1, 2009
Why is this important? Because geographic terms are very difficult - and sometimes impossible - to protect as a trademark. But that doesn't stop people from trying. We typically advise our clients to stay away from using geographic terms as trademarks for this exact reason. Meanwhile, as the dispute between Abercrombie & Fitch and the citizens of Hollister continues, it reminds us of the famous exchange between Brando and another character in the film when Brando's Johnny is asked: "What are you rebelling against?". Johnny's response: "Whadaya got?".
Wednesday, April 22, 2009
If you own a U.S. trademark registration - or even if you have just filed a trademark application - you may receive an unsolicited official-looking notice from an organization with an official-sounding name like "U.S. Trademark Protection Service" that offers to "monitor" your trademark application or renew your trademark registration. These companies are not affiliated with the official U.S. Patent & Trademark Office ("PTO") where you filed your trademark application and it is unclear who owns, controls and operates these document filing companies. What is clear is that many trademark owners are confused by these notices. It is also clear that many of these companies appear to be practicing law without a license AND are providing incomplete advice. For example, the notices from these companies that I have reviewed usually fail to let a trademark owner know that it is important to file an "Affidavit of Incontestability" with the PTO between the 5th and 6th year after a trademark is first registered. Filing the Affidavit of Incontestability is optional - not mandatory - but it improves and strengthens the value of your trademark registration.
Here is an excerpt from the warning notice at the U.S. Patent & Trademark Office website:
Warning to USPTO Customers: Trademark Monitoring and Document Filing Companies
You may receive unsolicited communications from companies requesting fees for trademark related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies who offer these services are not affiliated or associated with the USPTO or any other federal agency. The USPTO does not provide trademark monitoring or any similar services.
Such companies typically charge a service fee in addition to applicable USPTO fees. In many instances, applicants and registrants have mistakenly believed that the USPTO has issued these communications or that these companies are affiliated with the USPTO. Complaints about such companies or communications may be made to the Federal Trade Commission, at http://www.ftccomplaintassistant.gov/.
Our tips: (1) Remember that the official name of the PTO is "United States Patent & Trademark Office"; (2) If you used a lawyer to file your trademark application, contact your lawyer when you receive one of these unsolicited notices; and (3) If you filed your own trademark application or want to renew your trademark registration yourself, go directly to the PTO website at www.uspto.gov and follow the instructions.
Friday, April 10, 2009
As the importance of the Internet for business grows, so grows the need to utilize smart strategies for both selecting and maintaining your domain names. Here are the first two of ten tips we've learned that you might find useful in protecting what we refer to as "Internet real estate":
1. Shop Around For Your Domain Name Registrar: In the old days, Network Solutions, Inc. ("NSI") had a virtual lock on the process of registering domain names. That's because NSI was the only official Domain Name Registrar. That’s no longer the case and lots of competitors have popped up; as a result the cost of registering a domain name has dropped. Shop around. We like GODADDY.COM where you can register a domain name for as little as about $10 a year per domain name. Ask around and see which Registrar your friends and colleagues like.
2. Make sure your business name and trademarks are registered: Registering your domain name is not the same as registering your company name or product name as a trademark, so registering your company/product name(s) as trademarks is important too. Trademarks can be registered with the State you operate in, the U.S. Patent & Trademark Office (“PTO”) and internationally. The process of registering a trademark could be the subject of a full-length article, but the USPTO website is a good place to get some basic info.
More tips will follow in subsequent postings.
Friday, March 27, 2009
We find ourselves constantly trying to walk that fine line between simplicity and complexity in helping our clients structure their business dealings in general and their contracts in particular. Often times it is a real tug of war. We came across Einstein's quote today and thought it neatly addressed the challenge.
Tuesday, March 24, 2009
Why is this important? Because great music is timeless, inspirational and transcendent and I defy you not to feel a little bit better after having watched this. By the way, that's Ron Wood of the Stones in the backup band.
Tuesday, March 17, 2009
Why is this important? The economy may be in a recession, CD sales may be down, but the world still needs and wants new music. Even in a down economy, there is still great music being made.
Friday, March 13, 2009
Why is this important? It's important because these days in particular knowledge is power and knowledge about the state of your credit is particularly powerful.
P.S.: On a lighter note - don't forgot to check out "Lydia The Tattooed Lady" in my March 10, 2009 blog entry.
Tuesday, March 10, 2009
[Hint: It's Groucho being very Groucho and even though it's in black & white I think it will lighten your load even for just a few minutes].
Saturday, March 7, 2009
Why is this important? Because Google has settled a class action lawsuit filed against it by a group of authors and publishers who believed that Google's plan to scan and offer for viewing millions of books without the permission of the authors and published violated their copyrights. As part of the settlement, Google will spend $125 million to create a system that will offer copyright owners a chance to opt out of Google's system or receive payment. Thus Google's plan and this settlement could potentially affect millions of authors and publishers worldwide.
Sunday, February 15, 2009
THE RECORD INDUSTRY IS DEALT A BLOW IN ITS ONGOING EFFORTS TO SUE ITS CUSTOMERS FOR ILLEGAL FILE SHARING:
In the latest skirmish in the case, the record labels asked the Judge to reconsider his decisions to overturn the damages award and order a new trial. But the Judge refused and reiterated his belief that in order for the record labels to prevail they will have to show that Ms. Thomas did more than just make the copyrighted songs available for downloading. And thus the case will be headed back to court for a new trial in front of a new jury – unless the record labels decide to drop the case. That’s a possibility because last year the record labels publicly announced that they were stopping the filing of lawsuits against individual illegal file sharers and instead were going to focus on working with Internet Service Providers (ISPS) to stop illegal file sharing.
Why is this important?
It’s important because for several years the record labels and their trade association the Recording Industry Association of America (RIAA) used the $220,000 damages award against Jammie Thomas as a tool to scare people who were sharing files illegally. That was, of course, their prerogative. But if the damages award was made without a proper legal foundation, it should not stand. And if the record labels choose not to pursue a new trial against Ms. Thomas, that too will signal that the era of mass suits against end-users – at least as far as music is concerned – may be over.
Wednesday, February 11, 2009
Wrench subsequently sued Taco Bell and was awarded $42-million for copyright infringement and breach of contract. That in and of itself was something of a remarkable result not only because of the amount of the damages but because Taco Bell claimed that the idea Wrench had presented – using a “Psycho Chihuahua” dog character – had nothing to do with the “Yo quiero Taco Bell” dog character. Wrench nevertheless prevailed.
Then Taco Bell turned around and sued TBWA Chiat/Day, Inc. to cover the damages award on an indemnification theory. In other words, Taco Bell claimed it was the ad agency’s fault. But in a decision last month, the 9th Circuit Court of Appeals let the ad agency off the hook because TBWA Chiat/Day, Inc. wasn’t a party to the implied contract between Wrench and Taco Bell and because the agency wasn’t aware of Wrench’s “Psycho Chihuahua” character at the time it got involved. So..unless Taco Bell can prevail on appeal, it looks like it’s going to have to sell quite a few more tacos and enchiladas to cover the $42 million in damages.
For a link to one of the original Taco Bell ads, try
Sunday, February 1, 2009
Although we don't necessarily agree with some of the arguments made by the filmmaker, we still believe this is a very entertaining and valuable introduction to copyright law and the Fair Use doctrine. [More about what we don't agree with in this film in our next blog entry].
Tuesday, January 27, 2009
Why is this important? In a relatively short period of time, Google has become not only the ubiquitous search engine that has virtually superseded all of its predecessors and competitors, it has also become a major advertising medium as well as a communications device (email, social networking and YouTube). How did all of that spawn so quickly from a business founded in a college dorm room and more importantly, what does the future of Google mean for how we conduct our businesses and our personal lives? These two books help to explore the answers to these questions. The L.A. Times book review can help you decide which of the two books you want to invest your time in if you don't want to read both.
Tuesday, January 20, 2009
Without showing our age too quickly, let us just say that we have been watching U.S. elections and inaugurations with great interest since JFK’s election in 1960 and inauguration in 1961. This is the first inauguration I can remember, however, which I truly regret not attending in person – windchill factor and all. The sights, sounds and enthusiasm of the millions of people on the streets of Washington, D.C. these last several days has been inspiring at a time when we truly need inspiration. As the historian Doris Kearns Goodwin said recently, great change in America happens when a substantial number of people feel connected to the government and the American system rather than disconnected and inward-looking. She speculated that the number of people who have enthusiastically shown up in Washington to watch and participate in this transfer of power signals that kind of change in the mood of the American people. We submit that this last election was proof enough of that.
The question now becomes whether President Obama can marshal the expertise, dedication and energy that is necessary to fix what ails us as a country. There is no need for us to list the problems we are now facing – they have been discussed in print, on TV and radio, and in living rooms and bars across this country for months.
We believe there is little doubt that the new President is smart and dedicated and that he is in the process of assembling the kind of team that is necessary to help correct the problems we are currently facing. But will it work? No one knows for sure. But we are cautiously optimistic. We recall the speech JFK gave in May 1961 when he said that we would land a man on the moon and land him safely back on earth within 10 years. Everyone thought he had rocks in his head. But we did it because we applied ourselves to the task at hand. We think that is a good example of the Herculean effort that is now required. And just like we did not land a man on the moon overnight, we probably will not fight our way out of our current economic turmoil overnight. But we take some measure of comfort in knowing that we have new leadership that is genuinely dedicated to trying and has the skill and talent to make it happen if we all do our parts and keep our wits about us. To paraphrase what one of our clients said at lunch last week: “I didn’t vote for Obama and I have some questions about his economic policies. But anyone who wishes him ill and doesn’t want him to succeed doesn’t have the best interests of America at heart”. We could not agree more.
Friday, January 16, 2009
Intellectual property law has been described as the law pertaining to products of the intellect such as inventions (patents), creative content (copyrights), brand names (trademarks), and secret formulas and processes (trade secrets). A patent is a grant made by a government that confers upon the creator or owner of an invention the sole right to make, use, and sell that invention for a set period of time. There are three main types of patents: utility, design and plant. A copyright is the legal right to control the duplication, distribution display, performance and adaptation of an "original work of authorship" such as a song, book, screenplay, poster, t-shirt design, work of art or computer program. A trademark is a word or words, logo, sound, smell, color or product configuration – or any combination of them – that identifies and distinguishes one product or service from another. Examples of trademarks include EXXON, KODAK, YAHOO, GOOGLE, the Nike “swoosh” design, the color and shape of the Perrier water bottle, and the sound of the Yahoo yodel. A trade secret is a formula, practice, process, design, or compilation of information which is not generally known and which is subject to reasonable efforts to keep it secret and which provides the trade secret owner with an economic advantage over competitors. Examples of trade secrets are secret customer lists, the formula for Coca-Cola and KFC’s 11 secret herbs and spices.
Entertainment law is the law as it applies to everything from music to television to film to theatre to fine arts . It requires a combined knowledge of the entertainment business, contracts and intellectual property. It can involve everything from representing singers, songwriters and musicians to representing record labels, motion picture studios, television production companies, creators and producers of content for the Internet and mobile phones, and actors, actresses and directors. The crossover between intellectual property law and entertainment law occurs in many different circumstances. Examples include registering a band name as a trademark; registering the copyright in a film, tv show, screenplay, or song; obtaining a patent for the combination of mounting a video camera on a motion picture camera so that the director can watch the scenes being shot in real time; and treating as a trade secret the source, location and formulation of unusual and unique guitar strings that produce an extraordinary sound because they are treated with a special coating.
Stay tuned for future posts which will discuss interesting trends and developments in both intellectual property and entertainment law.