Is THUMBDRIVE a Generic Term or a Registerable Trademark?

The question of what is or isn't protectible as a trademark comes up all the time. ESCALATOR, THERMOS, ASPIRIN and even HEROIN were all registered trademarks at one point in time, but for a variety of reasons they became unprotectible generic terms. On the other hand, KLEENEX®, FRISBEE®, and XEROX® still remain protectible trademarks. Go figure.

What about THUMBDRIVE for flash drives? Is it a protectible trademark or an unprotectible generic term? The U.S Patent & Trademark Office has just issued a very interesting ruling that answers this question.

Why is this important? Because it highlights the problems with choosing descriptive or generic terms as trademarks for goods or services. Yes, the applicant for the THUMBDRIVE trademark registration ultimately won. But it took several years and probably several tens of thousands of dollars in legal fees to get there. Most entrepreneurs and small businesses can't waste that much time or risk that much money. It is therefore much wiser to choose a unique, clever, fanciful and easy-to-remember name for a trademark than a weak descriptive or unprotectible term.

10 FOR '10: BRANFMAN'S HOT IP TIPS #3

This is the third IP tip in the series. For previous tips scroll down:-

IP TIP #3: ONE IS NOT ENOUGH:

Most businesses these days own one – maybe two – domain names related to their business. But due to clever and unscrupulous cybersquatters, one domain name is not enough. At approximately $11 per year per domain name, it makes sense to allocate a few hundred dollars a year to occupy some Internet real estate and block out cybersquatters by registering a batch of domain names. So if for example your main domain name is groovysurfstuff.com, why not register groovysurfstuff.net, groovy-surf-styff.com, groovysurfstuffs.com, and groovysurfstuff.tv? How about obvious misspellings like grrovysurfstuff.com or groovysurfsutff.com? And then there’s always groovysurfstuffsucks.com. Spending a couple of hundred of dollars a year on your inventory of domain names is a lot cheaper than hiring a lawyer to send a cease and desist letter to a cybersquatter. And compared to the cost of a lawsuit? Small potatoes!

Theft Of Idea Claims:

It has been our experience that almost all screenwriters, when given the chance, will pitch their screenplay to a studio, production company, producer, or the like without fully understanding the legal consequences of this type of disclosure. When submitting a creative work to any third party, it is not only wise - but necessary - for screenwriters and their agents to be knowledgeable about the current legal standards for protecting a creative work. Copyright protection and “idea submission” laws are constantly changing and it is hard to know for sure how and if your ideas will be protected. Take the Benay brothers for instance. They collaborated on a screenplay in the late 1990’s entitled The Last Samurai. They took the right first step and registered the copyright in their screenplay with the U.S. Copyright Office. Their agent pitched their screenplay to Bedford Falls Productions, Inc., an affiliate of Warner Bros. Entertainment, and thereby created what the brothers claim was an “implied contract.” But, as fate would have it, the studio passed on their idea – only to later release their version of a film called “The Last Samurai” starring Tom Cruise.

The Benay brothers naturally filed suit against Bedford Falls and its affiliates for copyright infringement and for theft of their idea. Recently, the 9th Circuit Court of Appeals rejected their claim of copyright infringement due to their failure to prove substantial similarity under their two-part similarity test: proof of extrinsic and intrinsic similarity. However, although the brothers lost their copyright infringement claim, they were able to convince the court that there might have been a breach of an implied contract to pay them for the use of their idea(s). In other words, the case will now be sent back to the trial court to determine if the tacit agreement made between the brothers’ agent and the folks at Bedford Falls was not honored and whether the Benays should be compensated for the use of their ideas.

Moral of the story: 1) Register your copyright with the U.S. Copyright Office; and 2) make sure your pitches to third parties are clear that your expectation is that you will be compensated if they use your ideas even if they don’t use your screenplay itself.

10 FOR '10: BRANFMAN'S HOT IP TIPS #2

This is the second in the series:

IP TIP #2: YOUR EMPLOYEES AND EX-EMPLOYEES MAY BE OUT TO GET YOU:


Do you have employees - or better yet disgruntled ex-employees - who might be tempted to turn you in for a million dollar reward? If so, the Business Software Alliance ("BSA") has for several years been offering "rewards" of "up to" $1 million to anyone who turns in a business that is using software that is not properly licensed. [The BSA is a trade association made up of a few little companies like Apple, Microsoft, Symantec, Adobe and about 10 others].

And what does the BSA consider to be "not properly licensed"? Even if you purchased the software you are using legitimately, if you haven't kept the proofs of purchase, receipts, etc., then as far as the BSA is concerned you are guilty of copyright infringement and subject to financial damages of up to $150,000 per infringement. The BSA also considers Microsoft Office to be five (5) separate programs, so if you have an unauthorized copy of Office the BSA claims you are liable for up to $750,000 in damages.

The BSA has been very successful in scaring businesses into paying huge sums of money to avoid a lawsuit. The irony is that sometimes the BSA extracts financial settlements from businesses that exceed what the damages would be if the business went to court and then worked out a court-supervised settlement with the BSA.

Forewarned is forearmed. We have helped several businesses negotiate resolutions of these kinds of disputes with the BSA.

10 FOR '10: BRANFMAN'S TEN HOT IP TIPS

We recently wrote an article called "10 FOR '10: TEN HOT IP TIPS FOR LAWYERS AND THEIR CLIENTS" which highlights ten interesting intellectual property law legal developments and topics. Rather than reprint the whole article here, we will post one of the tips every few days in order to give each of the tips some room to breathe and an opportunity for comment. Here is the first one:

IP TIP #1: Photo-Shock:

Did your website designer grab some nice photos from somewhere to put up on your website? If so, it's time to check the terms and conditions of the license your web designer entered into for you (or didn't!) to make sure you have the right to use those photos for what you are using them for. Three large photo libraries (Corbis, Getty Images, and MasterFile)have recently embarked on a massive campaign which threatens big-time lawsuits in order to extract thousands of dollars (or more) from innocent businesses who have no idea they are using photos on their websites that aren't properly licensed.

We have handled several of these cases just within the last year.

Trademark Wars - Part 3: It's Not All Fun and Games With Online Games

What's in a name? I've been asking that question for almost thirty years and it never gets old. Great names and trademarks make for great businesses. Just ask GOOGLE, YAHOO, MRS. FIELDS, GREYHOUND, APPLE, and countless others.

But naming is often harder than it looks and often not pretty. Right now Zynga - home of the popular Internet game site FARMVILLE - is locked in an expensive legal battle with a company called Digital Chocolate over who owns the rights to the trademark MAFIA WARS for an online game, etc. Here is an article about the lawsuit filed by Digital Chocolate against Zynga in which Digital Chocolate claims that Zynga has stolen the MAFIA WARS trademark. If you are really ambitious, there is a link in the article to the actual complaint filed by Digital Chocolate that started the lawsuit.

It's Called The Music "BUSINESS" For A Reason.......

One of the great challenges for a professional songwriter, musician (or any other creative type for that matter) is to try to balance the creative spirit with the need to take care of business. Sir Francis Bacon is credited with having written "For also knowledge itself is power". In other words - "knowledge is power". Nothing could be more true when it comes to the music business. That is why music business conferences are a great opportunity for songwriters and musicians to bone up on the business side of things in a concentrated way in a couple of days.

San Diego's very own North Park Music Thing kicks off this Friday August 13th at the Lafayette Hotel in the North Park section of San Diego. During the days on Friday and Saturday there will be loads of panels and workshops on everything from getting started in the music business to music public relations to social networking and important legal topics (moderated by yours truly!).

At night on Friday and Saturday there will be dozens of music showcases all over North Park. The price of admission to the conference includes a wristband for the music showcases. People pay hundreds of dollars to attend conferences like this in Austin, Texas and New York City; the North Park Music Thing is quite affordable at $20 for a one-day pass and $35 for a two day pass.

The Importance of Due Diligence

Two of the biggest pitfalls a business owner can make when planning on filing a trademark application with the Patent & Trademark Office is failing to perform a detailed trademark search beforehand and failing to understand the basic rules of trademark law. This is a little something we lawyers like to refer to as a lack of due diligence. Typically what happens is a business owner, who most likely and understandably is trying to save a few bucks, sets their heart (and more importantly their pocketbook) on building their brand around a name and/or logo that may not necessarily be available to them or without understanding what makes a good and clear trademark. What these passionate entrepreneurs fail to understand is the 'likelihood of confusion' their potential mark might cause when compared to existing marks already established in the marketplace. Take Tami Cromar for instance. She is a small business owner of a cookie shop based out of Salt Lake City, Utah. She is currently at odds with Pillsbury Corporation, a subsidiary of General Mills, because of what she chose to name her shop: My Dough Girl. According to the Pillsbury Corporation, the name of Cromar's business is confusingly similar to Pillsbury Corporation's Dough Boy®trademark. Rather than fight the industry giant, Cromar has decided to concede to General Mills' claim of infringement and has begun working on a new name for her business. Ultimately when it comes to filing a new trademark application, we recommend to our clients that they think about the money they can save in the long run by doing their due diligence ahead of time. Here is a link to the article that details the Pillsbury vs. My Dough Girl case.

Copyrights: For Songwriters - Registering Copyrights vs. Registering with ASCAP/BMI/SESAC

One of the questions we frequently receive is whether it is necessary for a songwriter to register his/her songs with both ASCAP (or BMI or SESAC) and the Copyright Office. One of the main things about the U.S. Copyright Office application/registration is that in the U.S. you need either a pending copyright application on file or an actual issued copyright registration certificate IF you have to sue someone for copyright infringement - depending on which legal jurisdiction you have to file your lawsuit in. So...in our experience it is better to file a copyright application sooner rather than later and it is not a question of either filing with ASCAP/BMI/SESAC or the Copyright Office; it is a matter of needing to do both.

Copyright Wars - Why Bother Registering A Copyright?

Of all the forms of intellectual property protection - patents, copyrights, trademarks, trade secrets - copyrights are the most affordable to register. Copyrights are the lifeblood of just about every creative type of business, entrepreneur and artist. The general rule in the U.S. is that the copyright in a work MUST be REGISTERED with the U.S. Copyright Office BEFORE a copyright infringement lawsuit can be filed. There are some exceptions to that general rule, most notably in the 9th Circuit due to a recent court decision here. The 9th Circuit consists of California, Alaska, Oregon, Nevada, Arizona, Idaho and Montana. Thus in the 9th Circuit a copyright infringement lawsuit can be filed if the copyright owner has merely filed a copyright APPLICATION, even if the registration certificate hasn't issued yet. But in states where the general rule applies, it can be a real drag if you have to wait for the Copyright Office to process your copyright application before you can file your lawsuit. That can take anywhere from 8 - 18 months (or more) - UNLESS you want to pay a "Special Handling" fee of $760 on top of the regular $35 fee. The Special Handling fee will usually get the Copyright Office to register your copyright in about 10 days or less. When it comes to copyrights, our motto is: "Register early and often".

Copyright Wars: Google Wins Round 1 in Viacom Lawsuit

For better or for worse, the wheels of justice can sometimes move at something less than lightning speed. Viacom Inc. filed a $1 billion federal court copyright infringement lawsuit against YouTube more than three years ago and only this week the judge in the case 86d Viacom's complaint. [In technical legalese the judge granted YouTube's motion for summary judgment]. This doesn't mean that the case is over, and Viacom may still get its "day in court" - but the granting of the summary judgment motion is a bad sign for Viacom. Now it will have to appeal the court's decision to the federal court of appeals. We predict that the case will eventually end up in the U.S. Supreme Court. Here is a good article which describes the latest developments in this case in greater detail.

Trademark Wars - Part 2: Bogus Trademark Protection & Renewal Services

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 notify a trademark owner 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 greatly improves and strengthens the value of your trademark registration.

Here is an excerpt from the warning notice at the PTO 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/.

Here are Branfman Law Group's tips to our clients and friends: (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. We are here to help if you have any questions.

TRADEMARK WARS: What Can We Learn From a Sandwich?

Don't ask us why, but we love trademarks. We love helping to create them, build and protect them. But every once in a while, someone goes just a little too far. This may be one of those cases: the company that owns the Subway® sandwich chain is trying to register the word "Footlong" as a trademark for sandwiches and restaurant services AND is sending out "cease and desist" letters to other companies that use the term "footlong" for their sandwiches.

This situation raises a whole host of issues, but one of the main ones is that it highlights the serious problems that can arise when someone – in this case SUBWAY® – picks a weak trademark and tries to corner the market with it. But what the news reports don't mention is something even more interesting that we discovered when we combed through the records of the Patent & Trademark Office ("PTO"): about a dozen other food/restaurant franchises like Domino’s, Taco Bell, Pizza Hut, KFC and Dairy Queen have all ganged up on Subway® and filed formal written Oppositions to the Subway® trademark application for “Footlong”. We don’t recall ever seeing such a concerted effort by a dozen large corporations to stop one company from registering a trademark. Although the Subway lawyers were somehow able to convince the PTO to initially allow the trademark application for "Footlong", we aren't putting any money on Subway's ability to ultimately get the trademark registered or stop anyone else from using "Footlong". More to follow as the case unfolds!

Digital Music Royalties Waiting to Be Paid - Part 1

These days, there are so many various ways that musicians (recording artists), songwriters, record labels and music publishers can get paid (or not get paid - as the case may be) when recorded music is played on traditional AM/FM radio, satellite radio, Internet streaming, cable TV, etc., it can make your head spin. For example, for many years three organizations (ASCAP, BMI and SESAC) have collected royalties paid by traditional AM/FM radio stations for playing music and then distributed those royalties to the songwriters who wrote the songs and the music publishers who own the copyrights in them. But due to a long-standing tradition and legal exemption, the singers and musicians who perform on the records played on AM/FM radio stations - as well as the record labels who own the recordings - DON'T get paid any share of the royalties collected by ASCAP/BMI/SESAC from the radio stations. And to make it even more confusing, when those same songs are streamed over the Internet by the companies that own the AM/FM radio stations, everyone - including the recordings artists and record labels - DO get paid. Go figure.

Needless to say, it's a confusing situation for most recording artists, songwriter, music publishers and record labels. But as a starting point, we highly recommend that songwriters and music publishers affiliate themselves with either ASCAP, BMI or SESAC so that they can paid what they are due when the songs they write and publish get played on traditional AM/FM radio and in other public performances. We also recommend, of course, that songwriters and publishers REGISTER THEIR COPYRIGHTS with the U.S. Copyright Office.

We are also recommending that recording artists and record labels get familiar with a non-profit organization called Sound Exchange (click here) so that they can get paid when their songs are played on satellite radio such as SIRIUS/XM, Internet streaming radio stations, etc. We will have a more detailed report about Sound Exchange in an upcoming blog entry. In the meantime, please call or write if you have any questions about these kinds of issues.

Are Mardi Gras Costumes Copyrightable?

U.S. copyright law protects a lot of content - everything from books and art to motion pictures, TV shows, sculpture and choreography - and lots in between. But certain things are not copyrightable: ideas, concepts, short titles and useful articles like clothing designs. But here is a recent article that explores the boundaries of the law regarding clothing designs. It addresses the question of whether those grandiose and fabulous Mardi Gras costumes way down in New Orleans are suitable (no pun intended) for copyright protection. We do not know if this issue will be tested in court or how a judge might rule if presented with the issue. But we do believe that these kinds of Mardi Gras costumes are way more than merely functional clothing designs and therefore they should be copyrightable. If that happens, however, is it just going to clog up the courts with more lawsuits when one Mardi Gras costumer designer decides that another costume design is too close to his or hers and constitutes copyright infringement? We will see.

Hollywood In Sight: "The Runaways" Film

We are pleased to report that the new film entitled "The Runaways" starring Kristen Stewart, Dakota Fanning, and Michael Shannon opened nationally yesterday after having its Los Angeles red-carpet premiere Thursday March 11, 2010. Kristen Stewart and Dakota Fanning star as Joan Jett and Cherie Currie, two of the founding members of the first all-female rock and roll band "The Runaways". Michael Shannon - nominated for an Academy Award for his role in "Revolutionary Road" - co-stars as our friend and client, the legendary music impresario Kim Fowley.

So far the word on the street is that Michael Shannon almost steals the film from Stewart and Fanning - the stars of the latest "Twilight" movie. According to the L.A. Times, Shannon plays Kim with "a delicious twisted perverseness" and "infuses manic life and libido into the crazy, controlling genius in caftans". We had the pleasure of representing Kim in the negotiations with the film's producers several years ago for the rights to his story. Since we knew that the movie would be based on Cherie Currie's acidic tell-all biography and that every great story needs a villain, we anticipated that Kim's character would be portrayed as a combination of a psycho-Svengali and Fagin. Thus for us the toughest task in the negotiations with the producers of the film was to ensure contractually that the producers, writer and director did not take too much liberty with the characterization of Kim. The producers initially resisted our efforts to place limits on their right to shape the character, but this was deal-breaker for Kim and eventually we were able to strike a compromise that was acceptable to all parties. That's not to say that Michael Shannon's portrayal of Kim doesn't show him to be a tough taskmaster that wrangled a bunch of teenagers to help them achieve their dream at a time when almost anything was ok in the name of achieving success. But The Runaways rocked when women weren't supposed to do that and were a genuine sensation in that gap between the end of the 60s and the coming of the Ramones, Sex Pistols, etc. Thus Kim's characterization in the film may not be flattering by modern standards. But, that is - as they say - entertainment. More to follow when the film opens in San Diego...

For a link to a photo of Kim Fowley, Michael Shannon, and the film's director Floria Sigismondi click here.
For a movie clip where Kim introduces Cherie Curie to Joan Jett click here.

Copyrights: When Does Flattery Become Infringement?

A recent article about an art world dispute raises an interesting problem that has perplexed lawyers, judges, artists, and photographers for years: how much legal protection is to be given to a photograph? The dispute the article describes pushes the boundaries of what has been and continues to be one of the most challenging and controversial issues in copyright law: when does someone go beyond permissible "copying" of an unprotectible idea and cross over into illegal copying of the "expression" of that idea? Lawyers, law students and judges have grappled with this "idea-expression dichotomy" for decades - perhaps longer. The shorthand way I have often tried to explain the idea-expression dichotomy is this: if Shakespeare had been alive at the time the play and subsequent film "West Side Story" were produced, he wouldn't have had a legal claim to stand on. Why? Because although "West Side Story" copied the idea of "Romeo and Juliet", the expressed of that idea in "West Side Story" was new and different.

In this recent case, photographer David Burdeny is accused of duplicating the look and feel of several photographs by Sze Tsung Leong and copying mulitple text descriptions of the photos. [Note: to the best of our knowledge, no law suit has been filed yet; the case currently resides in the "exchange of angry letters" mode].

In terms of photography, typically no one photographer can claim the exclusive right to the idea of taking a documentary style photo of a building or landscape, for example, the Ponto Vecchio in Florence or a pyramid in Eqypt. [To the contrary, of course, if Leong had combined a photo of the pyramid with a waterscape photo such that the pyramid appeared in the water, Burdeny would have a dead-bang loser case if he copied that expression]. Thus if Burdeny was alleged to have "copied" only one of Leong's photographs, I believe Burdeny would have a much cleaner defense. But when you take into account the combination of the number of photographs Burdeny is alleged to have copied plus the written descriptions of the photos, the case for Leong and against Burdeny gets more compelling - at the very least to the extent that a jury might be swayed to believe that Burdeny crossed the line. Frankly, the argument for infringement by Burdeny is much stronger with respect to the descriptions of the photos. Burdeny's descriptions may not be "identical" to Leong's, but they are "substantially similar" - and that's the standard for copyright infringement under U.S. law.

More to follow as the case develops.......

Questions? info@branfman.com or www.branfman.com

Here Comes 2010!

Well, after two shortened work-weeks and corresponding long weekends, the world seems to be slowly getting back to the business at hand. Us too. Having made it through 2009 with relatively few bruises and quite a few bright moments along the way, we are cautiously optimistic about the new year. The first task we'll tackle will be to offer up some predictions about coming developments in the world of intellectual property and entertainment law. Then we will roll out several new services we think our clients will be excited about. In the meantime, if you have any topics in the IP or entertainment law area you would like to hear about, please let us know and we'll do our best to find something interesting to say about them. Onward.