Senate Bill Cracks Down On Online Infringement

Hello!

Last week, Senator Leahy along with a host of other co-sponsors, introduced SB 3804: Combating Online Infringement and Counterfeits Act. This Bill gives the Attorney General authority to seize domains of infringing websites if it is proven the sites are totally dedicated to Intellectual Property infringing activity. The Bill defines infringing activity as: websites that provide access or offer for sale unauthorized copies of copyright protected material or any website that sells or distributes good or services bearing a counterfeit mark in violation of a trademark's owner exclusive right to use the mark. Specifically this Bill is targeted to websites that sell counterfeit goods for luxury items such as designer purses, watches, jewelry and shoes.

This Bill also gives Internet Service Providers (hosting companies, domain registrar, etc.) the right to shut down the infringing site and provides immunity to the ISPs for doing so. The Bill also allows the Attorney General to prevent a website that is non-domestic from conducting business in the U.S. and prevent the importation of infringing goods and services. The Attorney General will also keep a list of infringing websites or domains available to the public via online.

Results?

As evidenced, Intellectual Property Infringement is rampant on the Internet. Intellectual Property owners spend considerable amounts of money defending their Intellectual Property through DMCA take down requests, cease and desist demand letters, TROs and IP Internet Monitoring Services. However, sometimes these efforts may stop infringers for a moment, but if they are highly organized, they re-group and infringe again. This is particularly relevant when it comes to counterfeit goods. This bill allows the Attorney General to combat online infringement at the source.

The Bill has been referred to Committe and should be up for a vote soon.

Do you think this is a step in the right direction in stopping online Intellectual Property Infringement?

Blogher 2010: Mastering Intellectual Propery Law on the Internet Session Recap

Hello Everyone:

As some of you know, I co-presented a presentation at Blogher 2010 entitled Mastering Intellectual Property Law on the Internet and other legal issues in cyberspace. My co-presenter was Wendy Seltzer of the blog ChillingEffects.org. She is a Berkman fellow and law school professor. She specializes in copyright, fair use, and other legal issues in cyberspace such as first amendment and privacy issues.

We covered four main topic areas. They were: Protecting your own Intellectual Property, Respecting others Intellectual Property, Privacy, and Defamation on the Internet. We tag teamed all topics and had so many detailed questions we actually ran over our allotted time. Apparently this is a much needed topic for social media enthusiasts.

When discussing protecting intellectual property, we specifically covered how to protect copyrights, trademarks, and trade secrets. We also discussed why owners of these types of intellectual property should protect them. One reason is because owners of intellectual property can lose out on valuable royalty or licensing income if not protected. No one wants to lose money!

Next we discussed how to respect others intellectual property and not infringe their works. We explained when it is permissible to copy without permission in certain Fair Use circumstances. Wendy explained in detail proper linking, the DMCA take down procedure, and creative common licenses.

I then gave a general overview of Privacy issues. I explained the need for every website or blog to have a basic privacy policy which is a disclosure document. A privacy policy protects the owner of the site and the user. Read my article on Privacy policies here.

Lastly, we both touch on Defamation and how to avoid defamation on the Internet. We also discussed the Communications Decency Act which states website owners or internet service providers are not liable for defamatory statements left by visitors.

If you are interested in seeing the notes or hearing the audio from this presentation, please click here.

When and How to use Licensing Agreements

Intellectual Property is just that — property. It is a very valuable asset to the owner. It can be brought and sold, used as leverage, and licensed. Licensing Intellectual Property is a great source of income for IP owners. Licensing Intellectual Property serves two purposes for the IP owner: It provides valuable income and a way to further market and grow the owner’s business or IP in the market place.

An IP owner should seek or approach a potential licensee in the following circumstances:

1. If the potential licensee is an infringer. An IP owner can make it a win/win situation for both parties. The IP owner can receive income for the infringer using the owner’s IP. Also, the IP infringer gains the reputation of the IP owner and becomes a licensee rather than an infringer. Both parties can now make satisfactory income from the arrangement.

2. The IP owner wants to expand its product or services. By licensing the IP to like-minded licensees, the IP owner can expand its brand into other geographic areas or markets. It also allows the IP owner to expand its customer base.

How to License IP

1. First make sure you own the IP you want to license. An IP owner will need to prove to the licensee that the IP owner has rights to the Intellectual Property. Evidence can be demonstrated by USPTO and Copyright Registrations. In addition, if the IP owner acquired the IP from another owner, a transfer of ownership agreement should be presented.

2. Determine the value of the IP. IP Licensing fees can range from 1 to 20 percent of the sales of the licensee. The royalty fee or licensing fee depends on the value of the IP. If the IP is unique, the licensing fee is higher. If it is common, it is much lower. An IP owner can hire an IP agent to determine the value.

3. An IP owner should ensure that they receive a minimum licensing fee regardless of the licensee’s sales. This will ensure the IP owner receives compensation for their IP regardless of the licensee’s sales.

An IP owner should hire a IP attorney to draft an effective licensing or royalty agreement to ensure the agreement protects the IP owner’s interest. The agreement will include such particulars as how the IP should be used or displayed. The brand has to be communicated correctly so it does not use its value.

Malia and Sasha Dolls: A Right to Privacy and Right to Publicity Issue

Hello!

I hope all is well. Last week Ty Inc., the maker of the Beanie-Baby toys, introduced two dolls named Marvelous Malia and Sweet Sasha. The company stated these dolls were modeled after President Obama's daughters. Specifically, the company introduced the dolls to celebrate the new historic First Children. However, a few days after the debut of the dolls, First Lady Obama released a statement that she did not approve of the company's use of her daughters' name or likeness for marketing or commercial purposes. The company immediately retracted its earlier statement that the dolls were modeled after Malia and Sasha Obama.

So the questions are:

Do the Obama children have a Right to Privacy?

More importantly, do they have a right to control the marketing and commercialization of their likeness and image?


Right to Privacy.

There are four basic Rights to Privacy:

1. Protection from unreasonable intrusion upon the seclusion of another. For example a home or a car,

2. Protection from appropriation of a person's name or likeness (Right to Publicity). For example using a person's name or image on a product or service without their permission,

3. Protection from publication of private facts. For example, income tax data, family quarrels, medical treatment, school records, etc.,

4. Protection from publication of information that places a person in a false light.

Prosser, Restatement 2nd of Torts.

However, Public Figures do not have a Right to Privacy. Specifically, the law explains that where public figures are concerned, the newsworthiness or public disclosure of private information outweighs the right to privacy of the public figure. Why? These public figures have held themselves out for positions of public trust. We elect public figures to govern us and make decision regarding rules, laws, and regulations that affect our daily lives. So as citizens we need to know the character and factual activities of that public figure. However, the private information disclosed must be true and reported or printed without malice. So essentially, President Obama does not have a Right to Privacy. We are entitled to know as much information as possible about him and we are allowed to use his name or likeness, without his permission, on T-Shirts, Figurines, Books, and the like.

But it has been argued that children of public figures are private citizens and therefore enjoy all the four Rights to Privacy listed above. This fact is debatable. Some would argue that as children of the President, the Obama children lives are of public interest. Specifically, that they do have some level of power and influence on Society as daughters of the President. Children do want to buy the clothes they wear, copy their hairstyles, and attend a Friend School. Others would argue that the Obama themselves thrust their children into the public spotlight during the campaign. During the campaign we learned intimate details of their lives.

However, as minor children they do not have any control or power over how they are placed in the public arena or how they are perceived. So if they are private citizens, they have a Right To Privacy and ultimately a Right to Publicity. They should have control over how their image or likeness is used by others in the marketplace. In addition, they should have the right to profit monetarily from the marketing and commercialization of their images.

Regardless of whether we believe the Obama children are private citizens or public figures, the Ty Company should have approached the Obamas first before manufacturing and modeling dolls after the Obama Children. I think this simple approach would have saved both Ty, Inc. and the Obamas a lot of embarrassment.

I welcome your thoughts!

What PR Professionals Can Do to Protect their Intellectual Property

Hello!

Welcome Back! This year has started off with a bang and I have been busy. Recently I wrote a guest article on PR Professionals and Intellectual Property Law. This article helps PR practitioners identify their intellectual property and gives them practical tips on protecting it. Check out the article here. This article was written for Robin Caldwell of The J Standard PR Firm. She is an industry legend and is Amazing.

Happy New Year!

Hello!

Happy New Year! I hope your holiday break was wonderful! I am so excited to start the New Year. This is a very exciting time for Intellectual Property Law! There are some fantastic conferences on legal issues in new media that I am attending this year. Also I am very curious about the effect the newly created Intellectual Property Coordinator/Czar will have on IP issues in this new digital age.

In March I am attending another Practising Law Institute Conference which will focus on Intellectual Property law issues in Web 2.0. Specifically, the conference will cover:

Legal issues using mobile devices
Liability issues in social networks and blogs
Use of key words and meta-tags. I discussed these issues here.
The future of advertising and product placement.

I am particularly interested in the future of advertising and product placement as it relates to advertisers using social media and various new media platforms. I am so looking forward to this conference and can't wait to report back to you (my readers) about the cutting edge legal issues affecting your blogs, social networks, and other new media platforms.

Thank you for continually reading and supporting IP LAW 101. If there are any other topics you would like me to discuss, or if you have any questions, please let me know.

Best!

Why You Should Hire A Trademark Attorney To File A Trademark Application

Hello!

Welcome Back! Now some of you may think that I am writing this article because I want you to hire me or one of my colleagues.  Now of course if you think I might be an awesome attorney, then please contact me.  LOL!  But this blog is purely to provide valuable information to people who need it.  I felt compelled to write this article because many individuals believe that the process to file a trademark application is simply filling out the application online and then Viola!, six months later you have an official trademark registration.  Is it that easy?  Well maybe about 50% off the time.  To be honest, a large portion of my client base are individuals who filed their own trademark application and it was subsequently rejected. Yes rejected. There are numerous reasons the USPTO rejects an application. The most common reasons are:

1. The proposed mark is too similar to a registered trademark.

2. The applicant submitted an insufficient specimen (trademark and/or logos).

3. The appliciant failed to prove the mark is currently being used in commerce.

4. Applicants submit items that should be sent to the US Copyright Office to the USPTO.

4. The applicant missed an all important USPTO deadline.

So what can a trademark attorney do to ensure the likliehood of success in obtaining a registered trademark that most individuals do not do?: They are the following:

1. Perform a comprehensive trademark search to ensure your mark does not infringe on a registered or unregistered mark that has priority rights.  Trademark attorneys hire trademark searh companies to do a comprehensive search of your mark.  This search will gather any information or trademarks that are similar to your trademark.   These companies search the USPTO database, all 50 states trademark databases, company names that have incorporated with the state, trade names, the Copyright Office database, and the internet. This cost for this type of search starts at $550.00.  This may sound steep, but who wants to do all of this research themselves? Remember, there may be an existing trademark that has priority rights over your trademark that is not registered with the USPTO.  A trademark that has been used in commerce first in its region has valid trademark rights even if it is not registered. I discussed this concept here.  So do not simply rely on the trademarks listed in the USPTO database.  It WILL NOT contain all valid existing trademarks that may compete with yours.

2. Analyze the contents of any comprehensive search and give a legal opinion regarding the likliehood of success of your trademark obtaining registration.  Once this information is gathered, a trademark attorney will use his or her knowledge of the trademark laws and determine whether: a) there is a competing trademark, 2) whether a competing trademark has priority (1st to use) rights over yours and vice versa, 3) whether you should pursue a trademark dispute, or 4) whether you should choose another trademark. 

3. File your application and ensure the application is worded correctly and that you have the correct specimens (evidence you are using the trademark in commerce) for submittal.  One of the top reasons trademark applications are rejected is because individuals do not submit the correct specimens.  A correct specimen for goods can be a label or a container.  A correct specimen for services can be a brochure or advertisement for services.  Often individuals simply submit the drawing (logos) or name as the specimen.  This is incorrect and your application will be rejected.

4. Make sure you do not miss any deadline for responses to a USPTO action. The USPTO reviews your application and subsequently provides several office actions before the application is offically approved and a registration issued. However, these office actions have very strict response deadlines.  If you miss a deadline, your application can be abandoned. What does this mean? You have to start over. Trademark lawyers are very careful about adhering to deadliens.  If we don't, guess what? You can sue us for malpractice. 

Lastly, many individuals use companies like Legal Zoom to file trademark applications.  These companies DO NOT perform comprehensive searches.  I repeat they DO NOT perform comprehensive searches.  They only check the USPTO database.  So you can pay this company around $550 which includes the $325 USPTO filing fee, and cross your fingers.  If the applications is rejected because the USPTO did their own research and found a competing right, you are basically out of luck.  

What every blogger should know about trademark law before and while blogging

Hello Friends!

I felt the need to write this article because one, I am a blogger.  Also check me out at www.luxetips.com.  And two, I have had discussions with so many bloggers about whether they owned a trademark and how to protect the good name and reputation they have built through blogging.  I will give you an example of some of the pitfalls bloggers have encountered.  

Example 1:  You register a blog with blogger and your blog name is Widgets.blogspot.com.  You build up a reputation and readership and you decide you want to own your own domain name. You contact a hosting company and try to register Widgets.com, but low and behold, someone else already owns the domain name.  You contact the owner of the domain name and they will gladly let you have it.....for the low low price of $10,000.00! Yikes.

Example 2: You go ahead and register your domain name, Wethepeople.com.  Hey you own it! But then some company comes along and registers Wearethepeople.com.  You both are in same business and when you do a google search, their name comes up first.  You have built a brand name, reputation, and following with Wethepeople.com.  They are diverting traffic from your blog and causing confusion. What can you do?

So fellow blogger and potential bloggers follow these simple rules to ensure your blog, your brand and trademark, is protected and avoid becoming prey to infringers and cybersquatters.

1.  A blog name is a trademark.  One misconception many bloggers have is that they do not think they own a trademark because they are not organized as a company.  If you a blogger and publish daily, weekly, or monthly articles on your blog, you are in the business of publishing. Also if you receive advertising revenue, or in-kind gifts, products, etc to review on your blog, you are actively engage in commerce - the ability to conduct business transactions.  A trademark is defined as words, symbols, phrases or designs which the public associates with a single source of goods or services. By law you establish trademark rights by actual use of the mark in commerce or filing an intent to use the mark with the United States Patent and Trademark Office, USPTO.

2. Do a preliminary search for your blog name. Make sure the blog name you choose is not identical or too similar to a brand name, company, or other blog.  You can accomplish this by doing a Google Search.  Now Google may not capture every identicial or similar name, (only a comprehensive trademark search will do this) but those that are registered with government agencies and are on the web will be found.  The last thing you want to receive is a cease and desist letter from me,  a trademark lawyer, stating shut down your blog or else!  

3. Register your domain name.  A MUST MUST MUST! You must own your blog's name. Before starting a blog, you have to own your name.  I can't repeat it enough.  Now there are tons of services like blogger, typepad, and wordpress that will let you create a blog name through their service but this DOES NOT mean you own the domain name. You can choose a domain registrar like VL Hosting to register your name for a nominal fee. Sometimes fees are as low as $10.00 per year.  Why do this? Because there are mean lean sharks out in the blogosphere called cybersquatters.  They literally surf the net for brand names and company names that do not have registered domain names and register them so they can hold them (cybersquat them) until you come crying and begging for them to release it.  They will but for an astronomical fee.  

4. Register your blog's name, phrases, and design as a trademark.  It is just good practice and planning to register your blog as a trademark.  You never know how successful you and your blog may be.  Without registering your trademark, you do own a lawful common law trademark right (a trademark right without federal or state trademark registration). However to bring a trademark infringement action against an infringer you must register the trademark with the state where you are located or the USPTO.  Also registering your blog as a trademark is good evidence that you have a legitimate interest in your blog's domain name, if you have to file a domain name dispute against someone who purposely registers a domain name similar to yours in order to steal your traffic.  I do understand that obtaining federal trademark registration can be expensive, but it is relatively inexpensive to register with your state. Depending on the state where you are located, fees can be as low as $15.00.  But it is smart to get some legal advice.  A poorly drafted trademark application will be rejected.

If you are a blogger already engaged in publishing your blog and have not completed any of these steps, I would recommend that you complete these steps as soon as possible! Believe me accomplishing these simple tasks will save you headaches and potentially money.  

I hope this article was helpful.  If you would like further information, please contact me at lgivens@phillipsgivenslaw.com.  Please stay tuned for my next topic:  How to file and win a domain name dispute.

This blog is for everyone!

Hello!

I started this blog to be an informational tool for people who need basic information about intellectual property law.  This include individuals, bloggers, small business owners, mid-sized business owners, etc.   But first things first.....Here is my Disclaimer:  The information provided in this post and on this blog does not constitute an offer of representation or create an attorney-client relationship with my firm, Phillips Givens LLC. The information contained on this blog is designed to apply to general situations and may not reflect current legal developments. You should not act or rely on any information on this blog without seeking the advice of a licensed attorney in your state regarding your specific situation. I assume no liability or responsibility for errors or omissions in the content of this blog.  I, Latoicha Givens, is the person who is solely responsible for the contents of this blog.  If after reading this blog, you feel compelled to contact me for further information or representation, please email me at lgivens@phillipsgivenslaw.com.  Whew! Now that we got that out of the way, lets get to the fun stuff.

What are the basics of intellectual property law?  Stay tuned to find out.....