Trademark Misappropriated? What Are Your Next Steps?

Hello:

Sorry for the long hiatus.  I have thankfully been very busy with clients. Finding the time to write on this blog has been a chore.  Through my work experiences for the past 6 months, I have some helpful intellectual property law tips I would like to share.

Here is the scenario.  You wake up one morning and you find out that a major brand, publication, or celebrity is using your trademark.  You have been using it for 5 years before this brand recently starting using it, but you have never went through the formal trademark registration process with the USPTO.   You wonder, do I have any trademark rights without USPTO registration? & How can I reclaim my trademark from this larger more powerful company?

1. Trademark Rights.

There are two types of trademark rights:  common law and federal.

Common law right.

Any person or business entity that is first to use a unique name, logo or phrase (trademark) that identifies a product or service available for public consumption, has a common law trademark right.  This right attaches regardless if the trademark is registered with the USPTO.  There are limitations to this right.  A common law trademark right only is applicable to the region where the trademark originates or is sold.

Federal trademark right.

A federal trademark right is granted by the USPTO and there is a registration process.  Once a trademark receives an official registration, it is valid in all 50 states.

Conclusion:  Owners who are first to use non-registered trademarks do have priority to use those marks exclusively in their state or region.

2. How Do I Assert My Common Law Trademark Rights Against the Larger Company?

The most effective way to assert your trademark rights against any infringer is to put them on notice they are infringing your mark.  I have settled 90% of my client's trademark disputes through a cease and desist letter.  Although a common law trademark right only gives the owner priority to use the mark in the owner's region, a common law right can stop the company from selling an infringing product or providing a service in that region.  Also if the larger company attempts to register the mark with the USPTO, the USPTO can bar registration if they find the competing priority common law trademark.   Unless the larger company can prove the common law trademark owner agreed to allow the company to use the mark or the common law trademark owner abandoned the mark, the USPTO will be very hesitant to allow registration.

In sum.....

As I have discussed before cease and desist letters are very important in policing and maintaining your trademark whether it is registered or not.  Trademark owners can lose their trademark rights if they allow others to use or infringe the mark without defending it.  How does this happen?  A company that really wants to own the mark and register it with the USPTO can petition the USPTO and submit evidence the mark was abandoned through non-activity (when an owner ceases using a mark) or non-defense of infringement (not expressly putting others on notice of their infringement and demanding they cease).  

Trademarks are valuable intellectual property. Defend and protect them wisely.

Join Me for a Webinar: Policing and Protecting Copyrights on the Internet

Hello there!

I know long time no hear. I have been so busy working and the time I previously had to update this blog as been next to zero. But I did want to let you guys know that I am co-presenting a very timely and informative Webinar entitled, "Policing and Protecting Copyrights on the Internet." My co-presenter and I will share information on the following:

1. Unprecedented theories of secondary liability that seek to hold banks, credit card companies, advertisers and search engines liable for copyright infringement—even if the underlying infringement is based on user-generated or unrelated third party content.

2. Battles over the meaning of "display" under 17 U.S.C. sec. 106 in the Internet context.

3. Fair use as a doctrine, an affirmative defense or a substantive limit on the scope of a copyright-holder's right to exclude.

4. Technological solutions to copyright infringement and the rise of digital rights management.

I will specifically discuss the Fair Use exception to the Copyright law. I will also discuss Digital Rights Management (DRM) software and open source software as it relates to copyright infringement and protection. I am thrilled to share my knowledge on these pressing issues.

If you are interested in listening in on this Webinar, the host company, Strafford Publishing is offering a 50% discount to all of my colleagues, readers, and affiliates. Simply click the following link to register: https://www.straffordpub.com/store/cart

I hope you can attend!

Edouard Lambelet Founder of Paper.li discusses Copyright Infringement and Fair Use with IPLAW101

Happy New Year!

I hope your New Year started off awesome and wonderful things happen for you in 2011.

Have you heard of the service Paper.li? Well it is the new rage on Twitter and it is beginning to take off. Paper.li allows users to organize links shared on Twitter and now Facebook into a newsletter style format. For example, a Twitter user can create a free paper.li account and designate specific Twitter users' links, usually based on subject or topic, into their own online newspaper. Sounds like a pretty amazing service. However, I observed that the newspaper does not only post the links to the content but a portion of the content published in those links. Sometimes the amount of content is a sentence or two. However, other times the service may publish a portion of content that equals a small paragraph.

I had an opportunity to interview one of the founder's of Paper.Li, Edouard Lambelet, regarding how the service works; benefits of paper.li; and possible copyright challenges. Below is what he had to say:


IPLAW101: Mr. Lambelet thank you so much for taking time out of your busy day to talk to IPLAW101 about paper.li.

Edouard: No problem. We enjoy talking to content producers. Content producers are the leaders in social curation and this is what our service is about.

IPLAW101: How did you come up with the concept of Paper.Li?

Edouard: We just wrote a blog post on this very question. On the blog we gave an in depth analysis of the need for paper.li. Paper.Li was created to fill the void in content curation. Basically, there is so much information being shared on Social Media platforms and it can be overwhelming. Paper.Li acts as a filter and organizes content by semantics and ranking. Through this system we are able to arrange content via topics and relevancy to the user.

IPLAW101: I have used the service and had my content re-published in other newsletters. I was a bit concerned about the amount of content that was published in the newsletter. The service re-publishes links but also a portion of content from those links. What is your reasoning behind re-publishing content and not just links to content? Are you concerned about Copyright challenges?

Edouard: Well the re-publishing of a small portion of the content contained in the links makes it easier for users to read and discern what content to read and in what order relevant to them. Also the re-posting of a snippet of the content provided by links is pretty much the standard now in social networking platforms. Twitter and Facebook are currently providing the same type of service to their users.

In addition, we do not re-publish links from private accounts on either Twitter or Facebook. We only re-publish links from public accounts.

IPLAW101: I think the difference in paper.li's service is that the user is able to create their own newspaper and acts as a publisher of the content whereas on Twitter and Facebook the user is freely sharing their content and links. So initially it seems as if the user may be publishing content without the owner's permission. I had a Twitter debate regarding paper.li and a fellow Twitter user suggested maybe your service can require users to send a link to content creators asking their permission to re-publish portions of their content. Have you ever considered making this an option with your service?

Edouard: Actually no. We have never received any complaints about the re-publishing of a portion of content via links. As a matter of fact, users have raved about the service because it boosts blog traffic. Users generally experience a tremendous boost in blog traffic.

IPLAW101: Yes, I have heard this from other Paper.Li users and they all are amazed about the jump in blog traffic.

Edouard: In addition, if a content producer does not want their content included in a paper.li newspaper, we do give them the option to opt-out of the service. Our goal is to be the leader in social curation and help users of share and consume content in an highly organized fashion.

IPLAW101: Thank you for your time.

Edouard: Thank you.

I really did appreciate Edouard giving me this interview at 10pm Paris time. He was very open to discussing the platform. Essentially his view is that the benefits of paper.li outweighs any possible copyright issues.

My take:

As I have previously discussed on this blog, copyright infringement occurs when:

Copyright Infringement occurs when another unlawfully copies, sells, displays or performs a copyright owner's work without their express permission. However, in some instances, copying a copyright owner's work without their permission is allowed. This is called the Fair Use exception. Specifically, an infringer of a copyright can argue Fair Use if they meet one of the following criteria:

1. the purpose and character of the use is for non-profit or non-commercial purposes;
2. the nature of the copyrighted work is artistic and benefits the public;
3. the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole; and
4. the effect of the copying upon the potential market for or value of the copyrighted work is minimal.

Paper.li's publishing of a portion of the copyright owner's work without their permission arguably falls under number 3 of the Fair Use exception, the amount and substantiality of the portion of the copy is minimal in relation to the copyrighted work as a whole. To be fair to paper.li, re-publishing only a couple of sentences may very well qualify as Fair Use. Plus the U.S. Courts have not been very definitive about what portion of a copyright work is Fair Use or Copyright Infringement. These cases are usually decided on a case by case basis. For example, a few sentences of an article may be copyright infringement if it contains the heart of the work. Harper & Row, Publishers, Inc. v. Nation Enters, 471 U.S. 539 (1985). In the alternative, a substantial portion of a work may be Fair Use if the use is a parody or criticism. Campbell v. Acuff-Rose Music, INc., 510 US 569 (1994).

So far the service has not received any challenges and user's find it beneficial to their blogs. Paper.li has over 2 million users and has just raised another $2.1 million in financing to expand the service globally. So paper.li is having a great deal of success. I will be watching to see how the service grows and deals with issues as they arise.

What is Fair Use and Intellectual Property 101

Hello:

I hope everyone had a wonderful Thanksgiving Holiday. This time of year is always busy for me because clients want to wrap up legal issues before the end of the year and I have a family that demands my attention with all the Holiday hoopla!

Currently, I am working on a very interesting story about what does copyright case law say about proper linking and quoting in regards to copyright infringement. What is Fair Use and what is not? As copyright owners, we do not want individuals quoting our work without our permission. However, service providers and news organization want to be able to provide 'snippets' or a portion of copyright protected material and links without always having to go to the copyright owner for permission. So I will explore in my article what does the law say about this delicate balance between copyright infringement and Fair use? Stay tuned, it will be a very informative and interesting piece.

Also, next week I am speaking to a momprenuer networking group about Intellectual Property 101! Yes, these ladies have some pretty genius products and business ideas and they want to know how to protect them. So I will explain the difference between patents, trademarks, trade secrets and copyrights; how to properly protect these types of intellectual property and the benefits of licensing and royalty income. I love educating individuals on Intellectual Property and am I am looking forward to it.

Thanks for reading!

Twitter's New Trademark Guidelines: Why Trademark Guidelines are Important

Hello Everyone:

Recently, Twitter revealed its new trademark guidelines regarding the proper use of the Twitter name and trademarks.

Some key terms of the new trademark guidelines are as follows:

1. When users promote their own Twitter accounts, they need to use the proper Twitter logo and ensure the letter "T" in Twitter is capitalized.

2. When mentioning Twitter on TV or any other public forum, users should refer to the company as Twitter and messages as Tweets. Also unless expressly given permission to do so, do not imply an endorsement or relationship with Twitter.

3. Users must not ever manipulate or change the Twitter logo. Furthermore, ensure the Twitter logo is not next to your logo to imply an association.

4. When developing Twitter applications, developers are now forbidden to use Twitter or Tweet in the name of the app.

5. Developers are also forbidden from copying the look and feel of the Twitter website in developing applications and websites.

Twitter's new trademark guidelines were necessary in order for Twitter to protect and manage its brand. Remember a trademark owner can lose trademark rights if the trademark is not controlled and managed. Specifically, a trademark owners has to:

1. Ensure the mark does not become generic (a common name for the goods or services and ceases to function as a source for the goods);

2. Ensure trademark infringers are prosecuted effectively and swiftly. A trademark owner that allows anyone to use their trademark without prosecuting infringers, has a weak trademark. A weak trademark is one that is no longer considered unique to the trademark owner's product or service.

Trademark Guidelines Assist in Brand Management

Trademark guidelines are first steps in alerting the public to the proper use of a company's trademarks and ultimately brand. They ensure the trademark is used properly; forbids impermissable uses or as Twitter states "the lawyers get involved"; and clearly gives direction as to when express permission or a license is needed for use.

Trademark Guidelines are especially important if your brand is entering a partnership with another brand or if your brand is used by multitudes of people.

Does your brand have trademark guidelines in place?

Facebook vs. Faceporn: Trademark Infringement or Copyright Infringement

Hello!

Recently, Facebook filed a lawsuit against the pornographic social networking site, Faceporn, alleging trademark infringement of its trademark, Facebook. Specifically, Facebook alleges the use of the mark, Faceporn, is "confusingly similar" to the mark Facebook and the use of the mark, Faceporn, is causing dilution of the Facebook brand.

Dilution

Dilution is a trademark infringement legal claim that can be asserted by famous brands. I have previously discussed Dilution here. Dilution occurs when a lesser known brand uses the mark of a famous trademark owner, and the use of the more famous mark by the lesser known brand, dilutes the distinctiveness of the famous trademark. Dilution can be asserted by famous trademarks even if the products or services are totally unrelated.

Although, Facebook is claiming the use of the Faceporn mark is diluting its brand via tarnishing its reputation, with the revision of the Dilution statute, the only thing Facebook has to prove is the use of the Faceporn mark will cause a likelihood of confusion between the two trademark among the relevant consuming public.

Likelihood of Confusion

The courts determine whether likelihood of confusion exists by balancing 8 factors. Those factors are: if the marks are similar in sight, sound, and meaning; the similarity of the goods and services sold; the similarity of the distribution channels and customers for the goods or services at issue; the sophistication of purchasers and the expense of the product or service at issue; the similarity of means and methods of advertising and promoting the goods or services at issue; whether there is evidence of actual confusion of consumers or other relevant groups; the strength of the mark; and was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark?

I think Facebook would have a hard time proving the trademarks were similar in sight, sound, and meaning. Facebook and Faceporn clearly do not have the same meaning. Furthermore, they really do not sound the same...book and porn. The only thing Facebook could possible claim is similar is the word "face" in both trademarks. But I do not believe that is similar enough. Next, Faceporn could certainly refute that Facebook and Faceporn have the same customers and/or distribution channels. Individuals looking for porn are not going to go to Facebook to find it. At least I don't think so. In addition, Facebook users seems to be very sophisticated consumers and would have enough intellect not to go to Facebook looking for or expecting to see the contents of Faceporn. Also, I am sure Facebook and Faceporn are not promoting their services through the same advertising and/or marketing channels. Lastly, I do not believe Facebook can prove actual confusion between both sites among their and Faceporn's consumers. Like I said earlier, people looking for porn are not going to visit Facebook attempting to find it and vice-versa.

However, I do believe the strength of Facebook's lawsuit against Faceporn lies in the last two factors. Clearly, Facebook, has a strong trademark. It is a unique term created by Facebook and was created to brand the number one social networking site. Also, Facebook could easily prove Faceporn created the trademark and site with the intent to copy the famous Facebook trademark. Specifically, Faceporn's site did have the same look and feel as Facebook. The logo was in the same type and font, the color scheme was the same and the layout was identical to Facebook's. I believe Facebook would have a stronger copyright infringement claim than a trademark claim. Clearly, Faceporn copied the layout and style of Facebook's site.

You can view a screen shot of the Faceporn site here. It has since been changed. But what do you think?

Speaking About FTC Rules and Ethical Blogging At Lavish!

Hello!

I have been neglecting this blog because I am so busy these days. Which is a good thing and I am not complaining.

So here is an update on my activities for the last month. I attended another social media conference, Blogalicious. It was a good time and of course I learned a few things. Most importantly, individuals are using social media in such creative and business savvy ways. It is amazing. There is a lot of intellectual property being created through social media and individuals have to become educated about protecting their intellectual property.

I was invited to speak at the Lavish Experience Conference. It is a conference conceived and produced by Shameeka Ayers of The Broke Socialite and focuses on the Lifestyle blogger. Lifestyle blogging is Big Big Business and mainstream media and corporations are taking note! I will discuss how to navigate offers of paid income to blog or advertise on beauty and fashion blogs while also adhering to the revised Federal Trade Commissions Regulations regarding disclosure of paid advertising and product endorsement on social media platforms. Yes disclosure is required on all blogs, Facebook updates, Twitter feeds, etc.

The conference will take place here in Atlanta, GA at Mansion Hotel from December 10-12.

If you can not attend, please follow my tweets on that day. My tweets will include all the good information you need!