OUR NEW BLOG ADDRESS!!

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http://branfman.com/blog

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Best regards,

Dave Branfman

New Tools For Policing Internet Piracy: One Step Forward or One Step Back?

It is probably nothing less than a given these days that on multiple levels the Internet can be seen as both a blessing and a curse. One of those levelhttp://www.blogger.com/img/blank.gifs - the hijacking and pirating of copyrightable content and brands/trademarks - is perhaps amongst the most obvious. Trademark and brand owners and content owners like motion picture studios and record labels have tried a variety of techniques to cut down on Internet piracy - including filing lawsuits first against individual unauthorized downloaders and now against anywhere from 500 - 20,000 "John Does". [Initially the "John Does" are only known by their Internet addresses - not their true names]. Those techniques have been less than overwhelmingly successful.

Now there are efforts afoot to create a new tool to try to stop counterfeiting, piracy and bootlegging: Senate Bill S 968 is designed to get online advertising networks, companies that process payments and search engines to shut off support for any website that is found by a court to be dedicated to copyright or trademark infringement. Here is a good short analysis of some of the pros and cons of Senate Bill S 968. It makes for very interesting reading.

Sequels, Prequels & Fourquels: Is The Film Biz Playing It Too Safe?

The serialization of movies is really not a new phenomenon. If you are old enough - or enough of a film lover - you might remember the Charlie Chan, Andy Hardy and The Thin Man series of films. And let us not forget the 22 James Bond films that have been made since the early 60s. But with the recent success of the fifth film in the "Fast & Furious" series and the upcoming release of the fourth film in the "Pirates of the Caribbean" series - as well as plans for more "X-Men", "Twilight" and "Spy Kids" movies, it seems like the trend is turbo-charged for the 21st century. Here is a good article which examines the current trend in more detail. Needless to say, this trend does not bode all that well for independent filmmakers.

"The Social Network 2": More Facebook War Stories

I liked the movie, but I can't say I thought it was a great candidate for an Academy Award for Best Picture. But as interesting as "The Social Network" was as a movie, the story didn't end there. As you may recall, the Winklevoss twins famously claimed that Mark Zuckerberg stole the idea for Facebook from them. As it often does, litigation (but not hilarity) ensued. The lawsuit was eventually settled. But then the Winklevoss twins decided that they had been defrauded by Facebook in the settlement negotiations. They took the somewhat unusual step of suing again - this time to unwind the settlement - now worth about $180 million in cash and Facebook stock. Since we're on the subject of movies, I am reminded of the title of one of Woody Allen's earliest and funniest movies: "Take the Money and Run". But that's just me.

Now a three-Judge panel of the 9th Circuit Court of Appeals has tossed the Winklevoss' legal claim. The opinion is written by Judge Alex Kozinski, who is well known in legal circles for writing cogent and occasionally humorous opinions. This one is worth reading, if for no other reason than it describes in some detail many of the steps that were taken during the settlement negotiations and afterwards. You can see the sequel to "The Social Network" in the works. Apparently the Winklevoss' are still not satisfied. News reports indicate that they intend to ask a full panel of 9th Circuit judges to review their case. It would appear that the Winklevoss' can afford to pursue their claims. Or perhaps, as Judge Kozinski wrote in the opinion itself: "The ensuing litigation.....gave bread to many lawyers".

Copyright Wars: $100 Million Copyright Infringement Lawsuit Against Oprah Dismissed

We believe in the copyright law. It's been part of our laws since the Constitution was enacted. It's there for a good reason: "to promote the progress of science and useful arts". We advised and represent quite a few copyright owners. But every so often an over-zealous copyright owner goes too far. This could be one of those cases.

Charles Harris wrote a booklet called "How America Elects Her Presidents". During the 2008 election, Oprah read aloud on her tv show questions that were based on material in the book. Apparently one of the questions was literally taken from Harris' book: "Which one of our presidents weighed the most?". [Answer: William Howard Taft at over 325 pounds]. Harris filed a lawsuit which requested millions of dollars in damages. Oprah filed a Motion to Dismiss the lawsuit and the judge agreed when he ruled that the allegedly infringed parts of his book were not original, and that Oprah's recitation of the Taft fact, even if she did take it from Harris' book, was not an actionable copyright infringement.

The Problem With the Music Business Isn't the Music

For reasons I can't exactly put my finger on, in the last three weeks I've had the great fortune to see a series of remarkable live musical performances. They range from Eric Clapton to Los Lobos, KD Lang, Daniel Lanois' Black Dub, Steve Poltz, Lucy Schwartz, Bushwalla and Black Joe Lewis and the Honeybears. I know I keep reading that the music business is in trouble. And I'm sure it is. But there's nothing wrong with the music that's being written and performed. Great music is still out there. For my money, there is still no substitute for seeing a great performer do it live. The music business may be having trouble figuring out how to adjust to the changes brought about by the rise of the Internet, but as long people LOVE music - and I'm betting that's never going to stop - there will always be a way for great music to get out there. Just as long as people who love it support it.

Why Bother Registering A Trademark?

This is a question we get asked all the time: Why bothering registering a trademark? Is it really worth it? In other words, what are the advantages of going to the trouble of registering a trademark as opposed to simply continuing to use an unregistered trademark?

In general, there are three main benefits to registering a trademark:
* (1) stronger protection for your trademark;
* (2) it tends to deter others from copying your trademark; and
* (3) better/stronger remedies in court if you have to sue someone for infringing your trademark.

More specifically, some of the advantages are:

1. The owner of a U.S. trademark registration certificate is entitled to a legal presumption that it is the valid nationwide owner of the trademark;

2. Trademark registration provides the trademark owner with the ability to recover up to triple financial damages and attorney's fees from a trademark infringer in a lawsuit;

3. Potential buyers of businesses usually see increased value when the seller’s trademarks have been registered;

4. Judges tend to give more weight to a registered trademark than an unregistered trademark in trademark infringement lawsuits;

5. A trademark registration increases the likelihood of successfully obtaining an infringing Internet domain name from a cybersquatter;

6. A trademark registration provides presumptive notice to others that your trademark is already being used; thus a company that later adopts a confusingly similar trademark will have trouble claiming ignorance of the trademark;

7. A U.S. trademark registration can be used as a basis for obtaining a trademark registration in foreign countries;

8. A trademark registration (like a copyright registration and an issued patent) can be recorded with the U.S. Customs & Border Protection service and used as a basis for seizing counterfeit products before they enter the U.S;

9. The owner of a U.S. trademark registration has the right to use the ® symbol after the trademark; that alerts third parties to the trademark registration and helps to eliminate the defense of "innocent infringement";

10. The trademark will appear in trademark search/clearance reports conducted by third parties; that tends to discourage those third parties from proceeding with using your trademark or filing a trademark application; and

11. The U.S. Patent and Trademark Office ("PTO") will refuse to grant a trademark registration for any trademark it believe is "confusingly similar" to your trademark.

Those are eleven pretty good reasons for going to the trouble and expense of registering a trademark.

Domain Names Alert - .CO Domain Names Land Grab Starts Sunday?

According to the L.A. Times today - the domain name registrar Go Daddy (a/k/a godaddy.com) is going to launch a big push this Sunday during the SuperBowl to promote the .co domain name extension. We can’t tell yet whether Go Daddy has accurately figured out that there is a real demand for a new domain name extension or whether they’re making the kind of mistake Coca-Cola made a while back when they tried to introduce “New Coke”. But we do know that good .com domain names are getting harder and harder to register and – again according to the L.A. Times - Go Daddy will probably be paying something like $3 million for each 30 second commercial it runs during the SuperBowl. So….unless they are idiots they must be figuring there’s going to be a good return on that investment.

On the other hand, here’s a blog entry that claims the .co extension is just a waste of money.

So…is this a real opportunity or just a hype? We don’t know yet, but for the $30 being charged for a .co domain name ($28 if you buy six or more at the same time), it might be worth a small investment NOW (i.e., before Sunday) to:

(a) protect your company name and brands with a .co domain name if for no other reason than to block out your competitors and cybersquatters; and

(b) to think creatively about other .co domain names you might want to control as we move forward the next few years.

If you are interested in this but for some reason are not a Go Daddy fan, our local outside IT firm EBrothers Solutions, Inc. is an authorized Go Daddy re-seller that offers domain name registrations for the same price as Go Daddy - but with a local personal presence. You can visit them at www.ebsihosting.com.

We don’t exactly know where this is going to go, but we thought you would want to know sooner rather than later.

Please call (760/637-2400) or write (dbranfman@branfman.com) if you have any questions or thoughts about this.

THE CARE & FEEDING OF DOMAIN NAMES: WEBINAR DE-BRIEFED

Yesterday we presented a webinar entitled "The Care & Feeding of Domain Names: Tips For Businesses & Lawyers" as part of the State Bar of California's Cyber Institute. Presenting via webinar is interesting/challenging because there isn't as much interactivity as in a live presentation. But we had a good group online including both private practice and in-house lawyers. Our theme was: these days it's not enough to just own one or two domain names for your business or your product; managing and maximizing the value of your brand(s) and domain names takes a conscious and concerted effort. The webinar addressed 11 concrete tips for accomplishing this. If you would like a copy of the PowerPoint we prepared, please contact us by phone at (760) 637-2400 or by email at info@branfman.com to request a copy.

THE CARE & FEEDING OF DOMAIN NAMES: WEBINAR ON JANUARY 27TH

These days it's not enough to just own one or two domain names for your business or your product. Managing and maximizing the value of your brand(s) and domain names takes a conscious and concerted effort. That's why we're presenting a webinar entitled "The Care & Feeding of Domain Names: Tips For Businesses & Lawyers" on January 27, 2011 @ 1 pm Pacific. The webinar is being offered under the auspices of the State Bar of California's Cyber Institute. You can sign up here. [The State Bar is charging the fee - not us - and we're doing our part pro bono]. If you can't attend but would like a copy of the PowerPoint we've prepared, please contact us by phone at (760) 637-2400 or by email at info@branfman.com to request a copy.

Confessions of a January Hater (And What To Do About It....)

I have a confession to make: I hate January. Not just this January. Every January. Why? All the festivities between Halloween and the (forced?) frivolity of New Year's Eve are over. It's been two months since there was any major league baseball and still a month before Spring Training begins. That's why.

Plus this January we begin full year three of uncertainty about business in this country and the world since the Crash of September 2008.

But....having said that........I am reminded of a conversation that I had a few years ago with a client who is a full-time psychologist and a part-time inventor. He called to ask a trademark question and of course - he being a nice guy and all that - he began the conversation with "How are you?". Somewhere - out of nowhere - I responded: "I choose to be doing well today".

His (slightly perturbed) response: "Well, if more people said that I'd be out of business".

My point, of course, is that so much of where we end up is a result of the choices we make - especially the choice about our attitude. I don't necessarily wake up every day with a smile on my face. But before I get rolling I make a choice that this is going to be the best day I can possibly make it. And, if necessary, I remind myself of that during the day. It helps, of course, to make the right choice when I look at the pictures of my family in my office and look around to see the people I work with everyday.

Surely there is lots we could be worried or glum about; and if we choose to focus on those things it's going to be a tough day/week/month/year/life. So my choice is to remember that I have a choice.

Thank you to all of you who read this who are part of our community of friends, clients, and professionals. Thank you for reading and thank you for your support. We all rise in the boat together and we look forward to a year of progress, growth, increased knowledge - and the beginning of Spring Training when the grass is green and the smell of fresh-cut grass reminds us of where we've been and that anything is possible!

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.