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.

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.

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!

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.

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!

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.

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.

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.

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.

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.