Larry Flynt: Trademark Guru?

In a case that is both interesting and humorous on so many levels, Larry Flynt - the publisher of Hustler magazine - is suing two of his nephews for trademark infringement. The trial started earlier this week in U.S. District Court in Los Angeles. The nephews - Jimmy Jr. and Dustin Flynt - used to work for their uncle, but he fired them in 2007 for being "unproductive". In an effort to show he wasn't an altogether bad fellow, Uncle Larry gave each of the nephews $100,000 as severance money. The nephews then used the money to start an adult film company using the brand name FLYNT that competes with Hustler's adult film company. In what would otherwise be a fairly typical trademark infringement case, Uncle Larry filed suit to stop the nephews from using his name and arguably confusing the public into thinking the nephews' company is somehow associated with Larry Flynt and Hustler. This aspect of the case highlights one of the unique facets of trademark law: trademark laws are designed not just to protect the trademark owner; they are also supposed to protect the public from being confused as to the source of the goods or services sold under the trademark.

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.

Grammy Nominations - 2010

We are pleased to report that our good friend and client Steve Vaus - professionally known as Buck Howdy - has just been nominated for two (count 'em - two!) Grammy nominations. The nominations were announced last night. The first nomination is for Buck Howdy's "Pete Seeger Tribute - Ageless Kids' Songs" in the Best Musical Album for Children category. The second nomination is for Buck's "Aaaaah! Spookey, Scary Stories & Songs" in the Best Spoken Word Album for Children category. Some artists get multiple nominations for the same song or same album in multiple categories. But it is pretty rare for one artist to get nominated for two separate albums in the same year. Congratulations to Steve!

Copyrights: Online Copyright Application Tips

The U.S. Copyright Office ("USCO") may have implemented an online copyright application system a little more than a year ago, but there are still some serious bugs in the system that need to be worked out. Here are a few important tips to keep in mind when filing a copyright application online: print out and keep hard copies of (1) your copyright application; (2) the application filing receipt you receive by email from USCO after you file your application; (3) the fee payment receipt you receive from USCO; and the deposit specimen receipt you receive from USCO. Keep all the hard copies in a safe and easy-to-locate place until you receive your actual registration certificate. Why? Because it will probably take USCO anywhere from 12-18 months to process your application and issue the actual Copyright Registration Certificate. In the meantime you may need your complete copyright application package if you need to prove to anyone - including a court - when you filed your application and that you filed everything properly. Along those lines, be sure to keep an exact copy of the work (screenplay, novel, computer program, illustrations, etc.) you submitted to USCO with your copyright application. The reason: since authors and creators often develop different versions of the original work, it is vitally important to be able to prove exactly what version of your work you submitted with your copyright application.

Report From the Intellectual Property Front Lines

Having just returned from the three-day annual Intellectual Property Law Institute sponsored by the State Bar of California, we are still processing what we heard. As you might imagine, the odd combination of the ongoing growth of technology and the recession continues to create new intellectual property legal issues that simply did not exist ten years ago. We plan to provide more in-depth reports about the IP Institute in the days to come, but here is a short list of some of this year's highlights:
* 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.

Endorsements, Bloggers & The Federal Trade Commission: New Rules

The U.S. Federal Trade Commission ("FTC") has just released new rules and guidelines that will govern the disclosures advertisers must make about endorsements contained in their ads and any payments that are made by the advertiser for the endorsement. The rules include bloggers and place a greater duty on celebrity endorsers to be truthful about their connection to products they endorse. Here is a brief FTC summary of the new guidelines. Our initial thoughts about the new rules: be upfront and disclose who is really behind the advertisement, blog, etc. This is going to be interesting and challenging. More to follow.

Copyrights & Music:Does a Cell Phone Ringing in Public Violate Copyright Law?

In an important ruling for the millions of cell phone users whose ringtones play in public - and for the cell phone companies that provide the ring tones - a federal court in New York just ruled that merely playing the ring tone in public for personal (not commercial) purposes is not a "public performance" that would trigger a royalty payment to the copyright owner of the song the ring tone is based on. One of the keys to the decision was that it is limited to personal uses of ringtones "without any purpose of direct or indirect commercial advantage". Thus to the extent someone might be interested in playing ringtones in public for commercial purposes - let's say a "Battle of the Ringtones" contest - this ruling would not apply. Beyond that, one of the interesting tidbits that came out of the court ruling is confirmation of the amount of money the cell phone companies pay in royalties for reproducing the song to begin with: 24 cents. Here is a summary of the court opinion and for those who are really ambitious, here is a copy of the court opinion itself.

A New Kind of Musical Rhapsody: Brian Wilson Set to Complete Some of Gershwin's Unfinished Works

The L.A. Times reported today that Brian Wilson - the legendary songwriter and co-founder of The Beach Boys - has been granted permission to complete some of the unfinished musical works that George Gershwin left behind when he died prematurely at age 38 about seventy years ago. The newspaper story goes into some detail to explain how this came about after all this time and why Gershwin and Wilson may not be the strange musical bedfellows they appear to be at first. This kind of extraordinary creative endeavor holds great promise. We will look forward to the results with great anticipation. And....here is a link to one of our favorite Brian Wilson/Beach Boys compositions of all time which wasn't necessarily a hit: "The Warmth of the Sun". [Brian W. reportedly wrote it the day of the JFK assassination].

Veoh Video Website Defeats Copyright Infringement Lawsuit by Major Studios

In a decision that portends big problems for Viacom's lawsuit against Google's YouTube website, a federal court decided last week that Veoh's video posting website is not guilty of copyright infringement. This case is not only important because of the pending Viacom vs. Google lawsuit, but because it details WHY Veoh was not guilty of copyright infringement even though the website does post copyrighted material without permission. Although this Court's decision is not binding on other courts around the country, the decision essentially outlines possible ground rules for a video-sharing website business model that is legal. It is worth comparing and contrasting how Veoh operates as compared to Napster and Grokster and other music-sharing websites that have been declared illegal. It will also be interesting to compare and contrast Veoh's service to YouTube's to see how they line up and how they differ.

Copyrights & Music: Ellen DeGeneres Rolls Into Court

Last week - at virtually the same time she was named the new judge on "American Idol" to replace Paul Abdul - Ellen DeGeneres' production company was sued by several major record labels for regularly and routinely using music on her daytime TV show without a license. The lawsuit alleges that about 1,000 songs have been used without permission. We don't watch the DeGeneres show regularly, but we understand that she's a music lover and has a segment each show where she dances to a popular song selected by a DJ. But that's a use that requires a license and according to the lawsuit when the show's producers were advised the program needs a license, their response was "We don't roll that way". Perhaps not. But since the U.S. Copyright Act allows for damages of up to $150,000 per work infringed, the show could be exposed to up to $150 million in damages. We don't really think the production company is going to end up paying anywhere near that. But they probably will pay something and probably more than it would have cost them if they had gotten the licenses to begin with. This, of course, raises the age-old question: is it better to ask for permission or forgiveness?

When Is The Best Time To File A Copyright Application?

Recently we were asked whether an author of a book-in-progress should file a copyright application to protect the book now or wait until the book is finished. In this situation it sounded like there isn't a big need to file the copyright application now because it is not a situation where there is a high likelihood of pre-publication piracy as there often is with sound recordings by popular recording artists or major motion pictures. If you are concerned about pre-publication piracy, then the scale tips in favor of registering the copyright in the unpublished version or using the Copyright Office’s “pre-registration” system. (Check the Copyright Office website for more info about the “pre-registration” procedure). On the other hand, given the relatively low filing fee for a copyright application ($35 if filed online), it might make the author “feel” better to know that the unpublished version has been registered for copyright purposes. But…….registering the preliminary unpublished version is no substitute for registering the copyright in the finished version when it is available. Thus doing it twice will increase the costs. But given the relatively low cost of the filing fee, that may not be much of an impediment. Another issue to consider in this kind of situation is whether there is enough original authorship in the work now to support a copyright application. If all you have is a one paragraph summary of what the book is going to be or just an outline, it is not clear that the Copyright Office would accept the copyright application. What is enough original authorship for copyright registration purposes is a difficult question to answer with any precision and is probably worth a blog entry all of its own.

Dueling Golf Ball Patents: Who Knew Golf Balls Could Be Worth All the Trouble?

The golf ball wars between the makers of Titleist and Callaway golf balls continue. A federal court judge recently lifted an injunction which had prohibited the manufacturer of the Titlteist Pro V1 from selling the balls. Here is an article that describes the latest in the ongoing battle between the two golf kings.

Trademarks & The Name Game: Why Change?

Lately we seem to be hearing more about "branding", "maintaining your brand", "creating your own brand", etc. etc. There once was a TV show called "Fame Is the Name of the Game". In business it's really "Fame is the Game of the Name". So why would a company with a famous 90 year old brand like "Radio Shack" change its name to "The Shack"? Does it make sense to do that? Here is an interesting article that summarizes the recent change from "Radio Shack" to "The Shack" along with some other famous name changes such as Galvin Manufacturing Corp. to Motorola Inc. and Matsushita Electric Industrial Co. to Panasonic Corp. And here is a well-written critique of Radio Shack's decision to change its name.

The Value of a Name: Pirate Bay

Logic tells us that a McDonalds franchise location probably wouldn't be worth as much without the ability to use the McDonalds name, the golden arches and the familiar McDonalds color scheme. Those unique identifiers - trademarks - help make each McDonalds location worth a lot more than a restaurant in the same spot that didn't have those familiar icons. The same can be said about many familiar franchises and brands. But how do we place a value on what a name and trademarks are worth? Here is a recent story about the efforts by a Swedish internet cafe operator to buy an online file-sharing website called Pirate Bay for almost $8 million - even though the current operators of the website were criminally convicted in April and were ordered to spend a year in prison and pay almost $4 million in damages and the Motion Picture Association of America has requested that a court in Sweden stop the website from making available unauthorized copies of movies, TV shows, videogames, etc. Why is Pirate Bay worth $8 million plus whatever it will cost to operate it going forward? Apparently because the new buyer believes it can convert about 10% of Pirate Bay's current 20 million subscribers into legit customers who will pay for downloads.

It should be interesting to see how this works out.

The Problem With Net Profits Deals: Ask the Tolkien Heirs

Whenever we have clients consult us about a movie, TV, book or other deal where they are supposed to be paid for their work on a net profits basis, our red flags start going up. Here's an example of why that happens to us. As you will see, even after all this time and three hugely successful films, the heirs of "Lord of the Rings" author J.R.R. Tolkien are yet to receive any of the net profits they are entitled to.

COMIC-CON UPDATE: "Comic Book Law School"

Like the "Attack of the Killer Tomatoes" that took over the countryside back in the 80's, Comic-Con has arrived once again in San Diego and is taking over the town for the next few days. What started as a small little geek-fest some 20 years ago has become a cultural epicenter for all kinds of entertainment, science fiction, movies, music, and - of course - comic books. We are pleased to have been invited again to speak at Comic-Con on current legal issues relevant to the Comic-Con crowd. Here is the entry from the Comic-Con programming guide about the panel discussion we will be participating in today:

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.

Internet Radio, Royalties, Musicians, and Record Labels:

I was raised on radio. By that I mean I can barely remember a time when I didn't listen to music on the radio. The idea of hearing something new I've never heard before - along with something I loved a long time ago that I haven't heard in a while - has been part of the soundtrack of my life for a long time. But somewhere along the way - I don't know exactly how or when it happened - I stopped listening to music on the radio at work. At least when it comes to old-fashioned over-the-air broadcast radio, that is. In fact, I still listen to music on the radio all day at work - except that now it's Internet streaming radio that I play through my computer speakers. With a few keystrokes on my keyboard, I can change the station without hardly moving. But behind that simple act there is a lot of money to be made and lost by Internet radio stations, record labels and recording artists. Here is an article that describes a new deal that has been cut to dole out some of the money that is being made. This deal means that Internet radio is going to be around for at least a while longer.

Copyrights & Music: ASCAP Files Lawsuit Over Ringtones in Public

Should cellphone companies have to pay a public performance royalty each time a music ringtone plays in public? ASCAP (the American Society of Composers, Authors and Publishers) thinks so and has filed a lawsuit against AT&T to prove the point. Here is a brief article that discusses this issue.

Copyrights: Copyright Office Application Backlog

The U.S. Patent & Trademark Office ("PTO") implemented an online trademark application filing system years ago. But it took the U.S. Copyright Office until last July to develop and implement an online copyright application system. That was the good news. But while the new Copyright Office system was supposed to make things simpler and quicker, it has had the exact opposite effect. Instead of taking 6 to 8 months for the Copyright Office to process a copyright application and issue a copyright registration certificate, it is now taking upwards of 18 months - three times as long as it used to. Here is an interesting article about the problem.

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].

Copyrights: Is The "Catcher In The Rye" Sequel Going To Be Allowed?

"Catcher In The Rye" is one of the most popular novels of the last sixty years, but it is shrouded in mystery because "Catcher" author J.D. Salinger has become one of the most famous literary recluses since the publication of the book. Now someone totally unconnected to Salinger has decided to publish a "sequel" to "Catcher In The Rye" without Salinger's approval. The resulting dispute is now in court. Here is an interesting article about the lawsuit. Why is this important? Because the court will have to decide whether a pure literary character like "Catcher In The Rye" protagonist Holden Caufield is subject to copyright protection. If so, publication of the sequel might be stopped unless the author can somehow get Salinger's approval. Whether or not a literary character like Caulfield is subject to copyright protection will involve an analysis of the "Fair Use" defense to claims of copyright infringement. For a fascinating overview of the "Fair Use" doctrine, see our February 1, 2009 blog entry.

TRADEMARK OWNERS NEED TO PROTECT THEIR TRADEMARKS FROM REGISTRATION AS USERNAMES ON FACEBOOK

Facebook has just announced that as of 12:01 AM (Eastern) this Saturday, June 13th, it is changing the way it creates and registers user names and their related URLs so that instead of a somewhat random number like “id=592952074” that is associated with a Facebook member’s user name, Facebook will be modifying the format to allow a much cleaner URL that can include the user’s real name or company name. For example, the new user name will appear as "facebook.com/branfmanlawgroup." Facebook claims that this will allow people to have an easy-to-remember way to find its members.

Sounds ok?

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:

It’s free!

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.

BRATZ Fire Back At Mattel

Here is an article about the latest shot fired in the ongoing dispute between Mattel Inc. and BRATZ-maker MGA over whether the BRATZ were stolen from the designs for Mattel's "Barbie" franchise. Last year Mattel won a judgment in court that established that BRATZ were based on designs created by a Mattel employee before he went to work for MGA. The court not only awarded money damages to Mattel, but it also eventually ordered MGA to start turning over the BRATZ inventory, trademarks, copyrights, etc. to Mattel. Now MGA has filed an appeal to the 9th Circuit Court of Appeals that argues that the judge has gone too far in transferring the BRATZ assets to Mattel. Why is this important? Aside from the significance of the monetary judgment awarded to Mattel, this case highlights how the courts have the power to transfer assets like inventory, trademarks, copyrights and patents when there has been an infringement. It also highlights how important it is to be absolutely clear with new employees that they are not bringing any of their former employer's intellectual property with them when they start their new job.

Success Story #1

One of the reasons we like what we do so much is that we have lots of fun, interesting and world-class clients. They range from sales training companies to musicians to hot-rod aftermarket specialists, clothing companies, record labels, surf wax manufacturers, direct mail and response experts and all manner of film, video and Internet-based companies. One of our most fun clients is Opper Sports, one of the world's leading surf documentarians which is run by multiple Emmy-award winner Ira Opper who has recently built an easy-to-use website that allows for entire Opper Sports library of surfing-related films and tv shows to be instantly downloaded . Here is an article about one of Opper Sports most-recent successes. We have helped Opper Sports over the years with music licensing questions, domain name disputes and general competitive strategies.

Copyrights and the Radio

It's one thing to be the songwriter of a hit song that gets tons of radio airplay. But it's another thing if you're the singer and/or the band that performs the song but didn't write it. This article explains why. In a nutshell: due to a long-standing policy in the United States (but not Europe, for example), only songwriters and music publishers get to share in the royalties that are paid by radio stations when songs are played on the radio. The band and the singer doesn't. Musicians have been trying to get the law changed for years, but so far haven't had much luck. That may change if a piece of legislation in Congress passes.

The Problems With Branding Using Geographic Terms

The City of Hollister, California is quasi-famous for being the place that inspired one of Marlon Brando's most iconic movie performances in the 1953's "The Wild One". But now it's embroiled in a legal battle with clothing manufacturer Abercrombie & Fitch because A&F started a clothing line called Hollister Co. about 10 years ago and is now trying to stop anyone anyone who uses "Hollister" for clothing - including people and businesses in Hollister, CA. This article describes the dispute in more detail.

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?".

Bogus Trademark Monitoring & Document Filing Companies

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.

Domain Name Tips #1 & #2

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.

Quote of the Day

"Any fool can make things bigger, more complex, and more violent. It takes a touch of genius - and a lot of courage - to move in the opposite direction." Albert Einstein.
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.

Ray Charles, Jerry Lee Lewis & Fats Domino

The video quality may not be that great (click on the HQ button if you can), but try out this little video clip.
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.

Music Biz Update: Report From SXSW

It's March, so that must mean it's time for one of the most interesting and happening music festivals and conferences in the country: SXSW (South by Southwest) in Austin, Texas. Click here for a link to a report about SXSW which is set to open tomorrow.
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.

The REAL "Free" Credit Report

Once again I am digressing from my goal of writing about interesting intellectual property and entertainment law matters, but this item seems rather important: it turns out that the "free" credit reports advertised in all those cute TV commercials with the guy working in the fish & chips fast-food joint and guys driving around in their old beater car aren't really free after all. That's because you have to buy another product like an annual credit reporting service in order to get the "free" credit report. In response, the U.S. government - in conjunction with the three major credit reporting agencies - have created a website that does in fact offer a truly free credit report without any strings attached.
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.

Lydia The Tattooed Lady

Today I thought we would take a short break from serious legal happenings and take a moment to revisit a great moment in film and music histor - click here: Groucho goes crazy!!!

[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].

COPYRIGHTS: GOOGLE GOBBLES BOOKS

Here is a link to a recent interesting article about Google's worldwide efforts to reach authors and publishers of books regarding a recent lawsuit settlement deal.

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.

THE RECORD INDUSTRY IS DEALT A BLOW IN ITS ONGOING EFFORTS TO SUE ITS CUSTOMERS FOR ILLEGAL FILE SHARING:

You may recall that back in 2007 a jury in Minnesota determined that a woman named Jammie Thomas had violated the copyright law by offering to share 24 songs on the Kazaa file sharing service and socked Ms. Thomas with $220,000 in damages. The damages were awarded to the record companies whose songs had been improperly offered up on Kazaa. That jury award caused quite a stir at the time because of the size of the damages assessed – especially because the retail value of the songs was about $54. Later - in a rare and interesting twist – the Judge who presided over the trial threw out the damages award and granted Ms. Thomas a new trial. Why? Because the Judge determined that the record labels had to prove that some third parties had actually downloaded the copyrighted songs and that it wasn’t enough that Ms. Thomas had simply made the songs available for downloading. The Judge overturned the verdict because he didn’t instruct the jury on that distinction at the trial.

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.

DID YOU HEAR THE ONE ABOUT THE DOG THAT ALMOST BIT THE ADVERTISING AGENCY?

Remember Taco Bell’s “Yo quiero Taco Bell” ads from the late 90’s? It turns out that the idea of using a Chihuahua to help sell Taco Bell tacos etc. was originated by a Michigan-based marketing firm (Wrench LLC) that had originally pitched Taco Bell on the idea. But Taco Bell and Wrench never struck a deal and later Taco Bell started working with the well-known advertising agency TBWA Chiat/Day, Inc. on an ad campaign that ended up becoming the “Yo quiero Taco Bell” ad campaign.

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
http://www.youtube.com/watch?v=M8sZ1DWsAHE

COPYRIGHTS: "A FAIR(Y) USE TALE"

Copyright law protects content such as books, songs, motion pictures, tv shows, plays, photographs, illustrations, paintings, sculptures, computer programs, etc. etc. One major exception to the rights owned by the copyright owner is the "Fair Use" doctrine. The Fair Use doctrine states that in certain limited circumstances that which would otherwise be considered an illegal copyright infringement - (copying a copyrighted work without permission) - is permissible. These limited circumstances include purposes such as criticism, news reporting, teaching and parody. Here is a link to a very clever 10 minute animated film which uses excerpts from many Disney films to illustrate some basic copyright principles and the Fair Use doctrine.
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].

Great Googly Moogly: Two Books About Google Reviewed

Two books that attempt to examine the inner-workings of Google and what Google means for our society have been recently published (Planet Google and What Would Google Do?). Here is a link to an L.A. Times review of the books written by Matthew Shaer.
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.

Inauguration Day Thoughts

We know this is supposed to be a blog about intellectual property and entertainment law. And it certainly will be going forward. But today is such a historic day that we did not think we could let is pass without a few comments.

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.

WHAT ARE INTELLECTUAL PROPERTY AND ENTERTAINMENT LAW?

It occurred to us that a good way to start the new year would be to provide a brief overview of intellectual property and entertainment law.

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.