Tuesday, March 17, 2009

When Choosing a Business Name Also Perform a Trademark Search!

Hello!

When choosing to go into business, there are several imperative tasks you must accomplish to ensure you are legally compliant. They are:

1. legally organize your business with the Secretary of State's Office;
2. obtain a valid business license;
3. obtain a federal employee identification number and if needed a sales tax number;
4. claim and obtain a trade name (if needed);
5. claim and apply for a trademark


However, most new business owners never consider claiming and applying for a trademark until it becomes a necessity or someone else asserts claim to their trademark. For this very reason, I advise my client to:

1. do a preliminary search to ensure that a trademark right has not been claimed in the company's business name;
2. after a trademark search has been completed, and the business name appears free from trademark claims, immediately apply for state and federal trademarks.


In my legal opinion, it is imperative to perform a trademark search as soon as you choose a company name. Why? If you choose a name that already has priority trademark rights, and you have spent considerable funds establishing and growing the business, you may have to change your name. Ouch! In addition, if no trademark rights have been asserted in your company name, you would want to claim ownership of the trademark. Very often people tend to infringe on company and or trademark names if they see the potential in its success! Remember, the first to use the name in commerce is the priority trademark owner!

A preliminary search on Google will cost you $0. However, to ensure you are not infringing another trademark owner's rights, a more comprehensive search can be done for $550. In my opinion, $550 is a small price to pay for a piece of mind.

I welcome your thoughts!

Thursday, March 12, 2009

New Kindle Audio Feature: Is Text to Speech Reading essentially the Audio Book experience?

Hello!

I hope all has been well in your world!

As many of you may know, Kindle has added an audio feature that allows a user to click a button and the book is read aloud. Cool right? However, the Author's Guild, the organization that protects the rights of authors, has claimed that the use of the Audio function on the new Kindle is copyright infringement. Specifically, the Author's Guild argues Kindle was granted the use of copyrighted material for electronic reading only...not audio. To understand the Author's Guild argument, you must first have a working knowledge of the rights granted to a copyright holder under the U.S. Copyright laws. Those rights are as follows:

A copyright owner has the exclusive right to:


1. reproduce the copyrighted work in copies;

2. to prepare derivative works based upon the copyrighted work;

3. to distribute copies of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
US Copyright Act.

The Author's Guild argues the authors did not grant Kindle a right to create a derivative work (audio) of the electronic books. The right to create a derivative work basically means the copyright owner has a right to transform the original work into another medium. For example, transforming a painting into a sculpture; transforming a novel into a motion picture; or transforming a book into an audio reading (audio book). The Author's Guild's position is that the audio function of the new Kindle, that allows the book to be read aloud, is an audio version of the book and therefore a derivative of the original book. However, Kindle argues that the text to speech function is performed by software generated technology and is not the same as an audio book experience.

So the question is whether the text to speech function qualifies as an audio version of the books and therefore a derivative of the original work?

In my opinion, I would argue that the text to speech function is an audio version of the original work. Audio is defined as any human audible sound. Whether the sound is computer or software generated is of no consequence. Like audio books in which the original author reads the books aloud, the new Kindle Text to Speech feature accomplishes the same goal: the reader is allowed the experience of having the book read to them as opposed to reading it themselves.

Of course, the real issue here concerns revenue. If the text to speech function is determined to be an audio version of the electronic books, Kindle would have to pay the Authors an additional licensing fee for the audio function. Kindle may not want to pay this additional fee and the Authors want to make as much money as possible for their works. What does this mean for consumers? It means that we may not get the benefit and advantage of purchasing one electronic book and receiving an audio version or experience for free!

I guess we have to wait and see how this all plays out.

Wednesday, February 18, 2009

Facebook's Terms of Service Agreement

Hello!

Facebook announced their new Terms of Service (TOS) Agreement this week. The new terms had the blogosphere in an uproar. Basically, the new Facebook TOS Agreement stated that users gave Facebook a perpetual (forever) license to use any intellectual property (writings, photos, links, etc.) posted on Facebook as the company wished. This license was granted and remained in effect even if you, the user, deleted your account. The old Facebook TOS Agreement stated that the license terminated once the account was deleted. Basically thousands of users protested this new change and Tuesday Marc Zuckerberg, CEO of Facebook, announced that the old Facebook TOS Agreement would stand.

In this article, I will examine what is a TOS; why every website should have one; and understanding the legal implications of agreeing to a TOS Agreement.

What is a TOS Agreement?

A term of service agreement is a document that outlines the terms and conditions that a user must agree with to use the services of the Internet Service Provider (ISP). Agreement to an ISP's TOS Agreement is usually required before the user can access the ISP's website. However, these agreements are always long and riddled with legal terms which most users do not read or simply do not understand. As a result, most users agree to the terms without knowing exactly what they are agreeing to.

Why are TOS Agreements important?

Terms of Service Agreements are important because they do the following:

1. Outline the services provided.
2. Explain what type of content the user can download and share on the site.
3. Explain who owns content provided by the user or ISP on the site.
4. Outline the required conduct of users of the site.
5. Require that users comply with applicable laws and regulations.

However this list is not exhaustive. The above terms ensure that the ISP is adequately protected from certain claims by users of their service. It also protects other users of the service from claims and from conduct that is harassing, derogatory, or offensive. These terms definitely come into play when users post original content that they have created, i.e, intellectual property. Intellectual Property is owned by its creator. However, an owner of intellectual property can always license, sell, or transfer rights and ownership in the intellectual property. If an individual or entity uses another's intellectual property without their permission, the owner can assert a claim for infringement. Considering the potential legal claims for infringement, all ISPs have very extensive and iron-clad clauses regarding intellectual property posted on their sites. Usually the clauses contain the following terms:

"You grant the ISP a perpetual, royalty-free (no payment) irrevocable, non-exclusive license to use, reproduce and distribute your Content within the service.......You authorize third parties to use and reproduce your content." Second Life TOS.

In addition, in some cases the ISP can use your content in any or all media for marketing and/or promotional purposes in connection with the Service. Furthermore, some TOS agreements state that any intellectual property you post on their site is 100% owned by the ISP!

Usually if a user terminates the service with the ISP, these clauses are no longer in effect. Facebook briefly changed this term to state that they owned the content regardless of a user's termination. Why? Because of the nature of file-sharing that is commonplace on a site such as Facebook, Facebook can not control who has access to your intellectual property or how they use it. So once you terminate your relationship, Facebook may delete your account, but your content may still live on Facebook through file sharing.

What are the legal implications of the above clauses?

When agreeing to a TOS Agreement make sure you read the agreement and understand what you are agreeing to. Every ISP's TOS Agreement is not the same. For example, any intellectual property created or posted in Second Life is 100% owned by the user. However, when using virtual world sites such as Disney or Coca Cola, the TOS Agreement states that they will own any material created or posted by the user.

Essentially, if you want total control over your intellectual property either do not use the service or do not post any material that you do not want the ISP to use or retain as they wish. Crying foul after you have agreed to an ISP's terms and conditions will not disaffirm or erase what you have already agreed to.

I welcome your thoughts!

Wednesday, January 28, 2009

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!

Monday, January 26, 2009

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.

Wednesday, January 7, 2009

Introducing a new product online? Protect yourself against false advertising claims

Hello!

I hope all is well. Today I am going to discuss false advertising. Specifically, if you are a newbie to online advertising, how do you protect your business against false advertising claims?

Federal law prohibits unfair methods of competition in or affecting commerce, and unfair or deceptive acts or practices in or affecting commerce. 15 U.S.C. 45(1) Specifically, the Federal Trade Commission Act defines a false ad as one which is "misleading in a material respect." Sec. 12 FTC. Material misleading ads include:

1. false written or oral statements regarding a product or service;
2. misleading price claims or sales;
3. sale of hazardous or defective products or services without proper disclosure;
4. failure to perform promised services; or
5. failure to meet warranty obligations.
Firestone, 81 F.T.C. 398, 451-52 (1972),

When advertising or endorsing a product or service, a retailer or advertiser must be:

1. truthful at ALL COST
2. not deceptively misleading regarding the capabilities of a product or service, i.e., no embellishment
3. not unfair.

Of course, whether an advertiser's claim that a product will achieve the results advertised in some instances, may be subjective. For example, a face cream may achieve the desired results for one customer but not for another customer. The customer who did not achieve the results advertised may assert a claim for false advertising against the advertiser. How can an advertiser avoid such a claim?

An advertiser can protect itself from such a claim by placing very prominent disclosures on the advertisement. A disclosure for skin care may read like this:

Through clinical testing of "Said Product" skin achieved a more balanced and even skin tone within 12 weeks of use. However results may vary.

As stated, the disclosure must be prominent. So do not use small text and make sure the disclosure is in close proximity to your claim.

Although disclosures are a great defense against a frivolous false advertising claim, making purposeful false statements in ads can trigger legal action.

I hope this information was helpful. Leave a comment if you have any further questions.

Best

Monday, January 5, 2009

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!