Wednesday, June 30, 2010

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".

Thursday, June 24, 2010

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.

Tuesday, June 15, 2010

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

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 and follow the instructions. We are here to help if you have any questions.