Business and Tax Lawyer Blog

Major film studios and record labels have gone before Congress to request more protection against foreign websites that profit from counterfeit and bootlegged products. The Senate's Judiciary Committee responded by proposing a new bill, referred to as (S968). The proposed bill would force online advertisers, e-billing companies and search engines to stop supporting sites found to be "dedicated" to copyright or trademark infringement.

Because the internet is global, piracy-sites can operate without scrutiny from countries that either choose to turn a blind eye, or refuse to recognize U.S. Copyright and Trademark rights. Senate Bill 968 would allow federal agents to direct U.S. companies that direct traffic, process payments, and serve advertisements online to end their support. However, federal court must first determine if a website is dedicated to infringing activities. In addition, Copyright and other mark owners would be able to seek injunctive relief against those U.S. companies that do not comply.

Once a site is deemed "dedicated" to infringing, the enforcement measure would make companies that operate name servers to re-direct online users away from it. However, this measure will not stop people from going to the site, because they are accessible through numerical addresses and foreign domain servers.

The concept behind SB 968 has been used to crack down on online-gambling websites. Yet some industry insiders are concerned that the bill, if enacted, could create an undue restraint on commerce, as well as undermine measures to create a more reliable and secure domain-name system.

To read more on this article, visit Policing the Internet.

Continue reading "Hollywood and Record Industry Ask Congress for Help Policing Global Piracy" »

After years of litigation and multiple appeals, including a petition to the United States Supreme Court, the case against LFP Publishing Group (d/b/a Hustler magazine) is coming to a close.

The case was brought by Maureen Toffoloni on behalf of her daughter's estate. Ms. Toffoloni is the mother of Nancy Benoit, who was murdered in 2007 by her husband, professional wrestler Chris Benoit. In March of 2008, Hustler magazine published nude photos of Nancy Benoit that were made 20 years prior to her death. Nancy Benoit immediately requested that the photographer destroy the film and negatives so the images could never be published. However, the photographer kept a videotape of the images, which were later lifted from the video and released by Hustler.

Initially, a federal district court dismissed the right-of-publicity suit filed by Ms. Toffoloni, finding that the images related to a legitimate matter of public concern. This decision was reversed by the 11th U.S. Circuit Court of Appeals, explaining that the magazine's constitutional rights had to be balanced “with an eye toward that which is reasonable and that which resonates with our community morals.”

At issue was whether the right of privacy implicated in the 14th Amendment to the U.S. Constitution was trumped by the freedom of press provided for in the First Amendment.

Most states recognize the right to privacy against "the appropriation of another's name and likeness ... without consent and for the financial gain of the appropriator." The Supreme Court's affirmation of the 11th Circuit's decision granted Ms. Toffoloni with the legal authority (known as the right of publicity) to control such images "in order to maximize the economic benefit to be derived from her daughter's posthumous fame." The trial to determine the amount of damages involved is set to begin on June 13, 2011.

To read more regarding the history of this case, visit Mom's Privacy Suit Over Old Hustler Pix of Murdered Daughter Gets Green Light.

Continue reading "Trial for Damages in Privacy Suit Against Hustler Set to Begin Monday, June 13th " »

The infringement battle between the Recording Industry Association of America ("RIAA") and LimeWire has settled outside of court for approximately $105 million in damages. The action was initiated by the RIAA in response to LimeWire's person-to-person ("P2P") file sharing application.

The settlement amount is significantly lower than what analysts had previously estimated, with some approximating a value in excess of $150,000 per song. Since the parties settled without a trial, they avoided being held to a verdict. Therefore, the award of damages received by the RIAA will most likely be kept by the RIAA, and not be redistributed to the artists whose works are the basis of this infringement claim.

To learn more about this article, visit LimeWire, RIAA 'Settle' for Only $105M.

Continue reading "LimeWire Reaches Settlement with RIAA" »

As a creator of original content, especially on the internet, you must be constantly vigilant and take quick, affirmative steps to stop those who may try and merely reproduce it. But as the internet has grown, and become an excellent source of advertising, “authors” and various websites have begun the practice of copying works and using citations or link-backs in an effort to minimize the appearance of plagiarism.

An interesting distinction between copyright infringement and plagiarism is that plagiarism occurs when one tries passing off the work of another is his or her own. Copyright infringement occurs by merely copying the work without the regard or appreciation of whether it is wrong.

Therefore, when plagiarized articles or works appear on websites, or hosting forums, the question of liability comes into play. The Digital Copyright Millennium Act was drafted in an effort to provide a degree of immunity to ISP’s, so long as they act quickly to remove or disable the infringing material. However, in order to take advantage of the DCMA’s protection, an ISP must have no actual knowledge of a potential infringement, but takes immediate action once it becomes aware of a possible violation.

Continue reading "How Can I Stop Online Infringement?" »

In 2009, a Korean Motel called "Hilton Motel" had a suit filed against it in Seoul District Court by the international Hilton hotel chain (HLT International). HLT demanded that the owner of the motel, identified only as Mr. Yoon, cease using their trade name and that he pay HLT an indemnity of $25,541.

Hilton had registered both "Hilton" and its Korean equivalent as trademarks, which gave them exclusive rights to the name. HLT also announced that there are "numerous" lodging establishments in Korea that use the Hilton name illegally, and HLT was planning to bring suit against each one individually. At least one Korean hotel owner changed the name of his establishment to avoid a lawsuit. You can read more about this case at Hotel giant Hilton files lawsuit over naming rights.

Continue reading "Korean "Hilton Motel" sued by Hilton for Trademark Infringement" »

It was a great news story - In late 2009, a group calling themselves the "Yes Men" played a joke involving the US Chamber of Commerce. They put up a phony site along with a phony press release, supposedly quoting the chamber's President, Thomas Donahue, in a speech on global warming. Several national news outlets, including CNBC and Fox News, picked up the story and reported on it as real, even interrupting broadcasting to report on the "breaking" story. The US Chamber of Commerce was not amused by the joke.

The Chamber issued a DMCA takedown notice to the Yes Men's hosting provider, saying that the website clearly infringes on their copyright by directly copying design aspects of their official government site. The Yes Men countered by saying that if the ISP takes down the site, the Chamber will be liable for misrepresentation of infringement. They cited a US Supreme Court opinion, which stated that "parodies must often use substantial portions of an original work to make their point." But legal precedent also implies that parodies can be considered infringing if they are too close to the mark.

The "real" Chamber of Commerce, recognizing the value of its name and reputation, aggressively pursued its legal rights in court, U.S. Chamber Files Civil Complaint to Protect Trademark and Intellectual Property from Unlawful Use, and created a web page, U.S. Chamber of Commerce "The Facts," specifically responding to "false accusations and misstatements" of their policy. This dual approach addressed not only the Chamber's legal defense of its intellectual property rights, but also attempted to minimize the damage to their public image.

Protect your intellectual property - your trade name, trademark and service mark. Contact Jacksonville, Florida business attorneys Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Yes, but is it funny? US Chamber issues takedown notice for Yes Men parody.

Many companies reach customers by paying for placement of selected words or phrases (key words) at the top of Internet search engine results. Companies generally bid on the selected search terms, agreeing to pay a certain amount to the search engine each time someone clicks on their ad. This is known as "pay per click."

Currently, there are no restrictions on which keywords can be used. For example, any software company can bid to have their ads appear anytime someone searches for Microsoft, by bidding on the term "Microsoft" – even though they clearly do not have the trademark for that name. This may be changing, however, as one search engine giant has already lost a related trademark infringement case tried under European law. The European decision is under appeal, so the decision is not yet finalized. Even when that decision against the search engine company is finally resolved, the issue of a business' claim against the competitor who secured the "pay per click" remains open in the U.S.

If you believe your trade or product name has been infringed, please contact Jacksonville, Florida trademark attorneys Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Are Competitors Hijacking Your Trademarks in AdWords?

A Federal Judge in the US District Court in Houston, Texas has ruled that the signage used by Trend Setter Realty infringes on a RE/MAX trademark design under both Texas and federal law. The court reaffirmed RE/MAX's red-over-white-over-blue sign design as a protected trademark.

According to RE/MAX Senior Vice President and Chief Legal Officer, Geoff Lewis, RE/MAX attempted to convince Trend Setter to change its signs several times before taking the matter to trial. An important aspect of the RE/MAX argument were the results of a consumer study they conducted with the two signs. Over 25% of those surveyed believed that Trend Setter Realty was affiliated with RE/MAX because of the similarity of the design.

Trademark infringement claims, especially those dealing with something as subjective as design, can be difficult to prove. If you have any questions about trademark issues, please contact a trademark attorney - contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at RE/MAX Wins Major Trademark Victory.

Joe Frazier, the former heavyweight boxing champion, tried unsuccessfully to sue the Oneida Indian tribe in Federal Court for using his picture without permission. The picture was used to promote a boxing match between Frazier's daughter and Muhammad Ali's daughter at the Oneida-owned Turning Stone Casino. The former heavyweight champion objected to the use of his picture in a way that promoted commercial gambling. The 2nd US Court of Appeals in Manhattan ruled that it had no jurisdiction in the case because of the tribe's sovereign status. To pursue the matter further, Frazier will have to sue the casino owners in an Oneida run court.

Tribal sovereignty is a complex legal issue. While congress recognizes that tribes have an inherent right to govern themselves, congress can limit that sovereignty. For example, tribal jurisdiction over their own residents had been well-established, but jurisdiction in matters between tribal and non-tribal persons is less clear cut. If your business is being affected by a legal matter, please contact Wood, Atter & Wolf, P.A. for legal counsel.

You can find out more information about this case at: Court in NY: Joe Frazier can't sue tribe here.

The US Department of Justice has announced the formation of a task force that will focus on fighting US and international crimes committed in relation to US intellectual property. The task force will work closely with state, local and international law enforcement agencies. It will also closely scrutinize current intellectual property enforcement activities as well as look at the the links between international intellectual property crime and organized crime.

The recently created Office of the Intellectual Property Enforcement Coordinator, which reports to the President of the United States, will look to the task force to offer recommendations on fulfilling its mission of creating a strategic plan for handling the evolving landscape of intellectual property protection.

Intellectual property crimes include the creation and selling of pirated and counterfeited digital media, luxury apparel, auto and airplane parts and even medication and infant formula; the market for these good is said to exceed $200 billion in the US alone and poses a significant public safety risk.

In the past, the large number of agencies involved in monitoring and enforcing intellectual property laws have made decisive action difficult. It is hoped that this new task force will help streamline and concentrate these efforts. View the full article about the new task force and its responsibilities by visiting Can US get tough on intellectual property crime?

If you have a dispute with respect to intellectual property, please contact Wood, Atter & Wolf, P.A. for patent, trademark and copyright legal counsel.

A new patent awarded to Google has sparked a media debate over Google's intended use for the software method in question. The patented method allows Google to selectively restrict content based on a variety of parameters, including geographic location. This has led some to believe that Google may be trying to censor certain content in specific countries, which is something Google has taken a stand against in their ongoing war of words with China. But a closer look at the wording of the patent would seem to imply that the new software method is more about protecting Google from copyright infringement in relation to its new book scanning initiative. In fact, the major use case presented in the patent describes a system where the accessibility of scanned reading materials is either restricted or limited to certain passages based on user access privileges that are based on local copyright laws. This step is necessary for Google because of a lack of consistency in copyright law and Fair Use Doctrine from one country to another. What is considered public domain or fair use in one country may spark a copyright infringement lawsuit in another. The new patent appears to have been designed to help Google remain compliant with copyright laws around the world. You can read more details by visiting Google content-filter patent about copyright, not censorship. If you live in the Jacksonville, Florida or Orlando, Florida area and require assistance with a patent application or copyright protection, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Coach, a luxury brand handbag maker, has sued Target Corp., America’s number two retailer, for selling a knockoff purse that appeared to be an exact copy of a Coach handbag design. The bag in question displayed the signature “C” logo and a copied version of Coach’s distinct tag. Target claims to believe that the handbag was a genuine Coach product. Coach is suing Target for trademark infringement.

Trademark infringement is the use of another party’s trademark without authorization or license. Infringement can include use of a mark that is either identical or confusingly similar to an existing trademark. In a case where the trademark is not copied exactly, the court will determine if there is a likelihood of confusion among consumers, leading them to believe that the item was produced by the rightful trademark holder.

If you believe that your trademark may have been infringed, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Coach sues Target for $1M.

In Mississippi, the same computer software that has been used to hunt down child predators on the internet is now about to be used to target those who illegally download copyrighted content like music and movies from the internet. Mississippi Attorney General Jim Hood has stated that he feels the state needs to get ahead of counterfeiters and pirates if they are going to be able to make a difference in this growing crime trend.

The office currently uses software called "Operation Fairplay" to track downloaded child pornography and keep an eye on child predators. This spring they expect to begin using a modified version of the software that will target illegal downloads of music, movies, software, and other copyrighted electronic information. Hood warns Mississippi resident that anyone caught downloading more than $100 worth of copyrighted materials can be prosecuted for a felony. He asks parents to take a part in making sure their kids are aware of the new crackdown.

Hood also announce that Mississippi will be using the software as part of the nation's first statewide task force aimed at stopping intellectual property theft. The task force will be known as" "Operation Knock Off the Knock-Offs.'' Hood hopes it will serve as a model for other states. It is believed that counterfeiting and pirating costs the US economy $250 billion annually. Read more about the Mississippi anti-pirating task force at Mississippi Attorney General to Target Intellectual Property Theft.

If you have a copyright or intellectual property matter, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The latest ruling in an ongoing copyright dispute between MGA Entertainment and Mattell ensures that the popular Bratz dolls will remain on store shelves come January. A court had recently ruled that the 2010 version of Bratz dolls would be made by Mattell, not MGA. MGA was ordered to stop making the dolls and to turn over ownership of the dolls to Mattell. But a US court of appeals has suspended the order while considering its verdict in the case.

The dispute started when Mattell charged that the Bratz designer, Carter Bryant, was working at Mattell when he designed the Bratz. That would possibly give Mattell rights to the design, depending on their employment contract. A US court ruled last year that MGA had breached copyright laws by selling the dolls. MGA was subsequently ordered to stop selling the dolls, but in the latest decision the court called the earlier ruling "draconian;" MGA has stated that they would go out of business if the right to produce Bratz were taken away.

The court ordered Mattell and MGA to attempt to come to an agreement on their own. You can find out more about what will become of the Bratz doll line at Bratz dolls to remain on shelves in Mattel-MGA battle.

If you have questions about employment contracts, work for hire, or copyright infringement, please contact Wood, Atter & Wolf, P.A. for legal counsel.

When a company wants to introduce a new product, they need to be careful that they are not infringing on someone else's existing patent or trademark. The following are four examples of out of the ordinary patents and trademarks that may trip up a new product introduction.

Apple Computers vs. McIntosh

When Apple started developing the Macintosh, they deliberately spelled the name wrong in order to sidestep any trademark infringement issues with McIntosh, a high-end audio equipment manufacturer. McIntosh objected, and Apple ended up paying McIntosh an undisclosed licensing fee to be able to use the name in perpetuity.

Amazon one-click

Amazon patented its one-click web checkout system in 1999. Since then it has licensed use of the technology to other companies – but not to rival Barnes and Noble, which they sued for using a similar feature on their website. Long held up as an example of a patent that should never have been awarded, much of the patent was turned over in 2007, but Amazon still protects what is left of it.

Color trademarks

If you want to make pink insulation, you may get a cease and desist letter from Owens Corning. The same holds true if you want to start a wireless phone company; it would be best to stay away from the T-mobile signature magenta. Yes, it is possible to trademark a color as it relates to a specific product or service.

Verizon Droid

When Verizon wanted to name its new phone Droid, they had to ask permission from Lucasfilm, which patented the term in 1977 – the year Star Wars came out. Verizon currently uses the name under license.

You can read about several more surprising patents at They Own WHAT? Nine Tech Patent and Trademark Oddities.

If you have an original product that you would like to patent, or if you need to make sure you are not infringing on someone else's patent or trademark, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Recently, The North Face Apparel Corp. initiated a trademark infringement claim against The South Butt, LLC. The North Face is an international clothing and outdoor equipment company. The South Butt is based in Missouri and also markets a number of T-shirts and a jacket displaying the logo, which resembles that of The North Face because both marks use a similar font and display a similar "rainbow graphic." However, the graphic in the South Butt mark is rotated 180 degrees to appear upside down and is positioned to the left of the name instead of the right, as it is with The North Face. South Face has also adopted the slogan "Never stop relaxing," which may be found similar to The North Face's slogan, "Never stop exploring."

The company's founder is a student at the University of Missouri and is said to have created South Butt as a parody of "all the people who mindlessly wear North Face gear because everyone else they know wears it." South Butt clothing is sold exclusively at a local pharmacy in Missouri.

In its Complaint, The North Face alleged that the South Butt mark is confusingly similar to its own mark and that the company has taken advantage of The North Face's reputation and consumer good-will in selling merchandise with the similar mark. South Butt maintains its products are not affiliated with The North Face.

To succeed in a claim of trademark infringement, The North Face will have to show the South Butt mark confused consumers about the source of the products' origin. So far the case does not look good for South Face because a Federal District Judge stated he "did not find it implausible that the marks cannot cause a likelihood of confusion," and denied the defendant's motion to dismiss.

Turning an idea into reality, whether it's for a novel product or a unique business venture, may involve pitching to a firm with greater resources. Through this process, you can be exposed to serious risks. For example, the potential developer might misappropriate your secret by selling it to one of your competitors or may even begin manufacturing and marketing your invention as if it were their own. Because of this, it is necessary to first enter into a confidentiality agreement.

A confidentiality agreement is also known as a non-disclosure agreement and maintains the ownership of the information by preventing the recipient from disclosing valuable secrets or using them without authorization. The agreement works by providing the disclosing party with legal and/or equitable remedies. In the case of a breach, the disclosing party can sue for monetary damages or file for an injunction.

The specific terms of confidentially agreements vary, but usually address exactly what information is and is not intended to be confidential, how the receiving party may use the confidential information, and a time period for which confidentiality must be maintained.

If you are considering disclosing proprietary information to a developer or investor, it will be wise to first contact an attorney and discuss how a confidentially agreement can protect your secrets.

That's right, removing a UPC can amount to trademark infringement in some instances. Such was the case between retailer CVS and luxury fragrance company, Zino Davidoff. Davidoff packages and distributes luxury products like the Cool Water fragrance, which is preferably placed in similar high-end luxury retail outlets.

In order to maintain high quality and prevent counterfeiting, Davidoff uses a unique UPC with its products. The barcodes contain information such as the ingredients of the product, where it was made, and information about the product's line of distribution. This way, Davidoff is able to easily determine where all its products are in the event of a merchandise recall due to defects.

Davidoff discovered that CVS was selling its merchandise with the barcodes removed and brought a lawsuit for trademark infringement. The matter ended up in the United States Court of Appeal, which ruled in favor of Davidoff. The Court did not accept CVS's argument, that the goods being sold were genuine products, but rather held that removing Davidoff's unique barcodes would "subvert [a] quality control measure," reducing the value of the company's trademark as well as altering the distinctive packaging.

What this case means is that retailers should think twice before altering the appearance of a vendor's merchandise. Additionally, manufacturers now have greater trademark protection. For more information about how a trademark could protect your business, product, or service, get in touch with a trademark attorney to arrange a consultation.

In the wake of the New Orleans Saints' recent Super Bowl victory, a new battle has begun. This intellectual property contest will take place in the courtroom instead of on the football field, however, and involves two athletic apparel producers and the phrase "Finish Strong."

Finish Strong, LLC, claims that Reebok International Ltd. is infringing on its trademark by illegally using the phrase in a line of T-shirts (pictured here) that promote the Super Bowl victors and proclaim, "We Finish Strong! We Are Saints." Trademark infringement exists when one party has a registered trademark and another party uses a similar mark with products in such a way that consumers are confused as to the products' origin. Finish Strong, for example, may argue that Reebok's use of the phrase on T-shirts may lead customers to believe the shirts are distributed by Finish Strong instead of Reebok. A suit filed in the United States District Court for the Northern District of Illinois on February 25th demands Reebok to stop using the phrase on merchandise. The suit also requests all profits from shirt sales plus other damages.

Finish Strong registered the trademark with the United States Patent and Trademark Office in 1998 and markets various athletic products bearing the phrase.

During the 2009 football season, Saints' quarterback Drew Brees used the slogan to motivate teammates before games. Brees also sold T-shirts with the phrase for the Brees Dream Foundation, a charity supporting cancer research and providing for children in need. He is not a party to the lawsuit, however, because his use of the phrase is pursuant to a licensing agreement and therefore legal.

At this point, it is unclear how the conflict will turn out. Reebok has not legally responded to the claim, but has remarked that it did not know about the company and that the phrase is used only to "describe the Saints' style of play." Whether this would be a viable defense is up to the court, however, the standard for trademark infringement is the likelihood of confusion. Stay tuned for updates.

Bloggers beware! Recently, the Recording Industry Association of America (RIAA) issued Google a take down notice for hosting websites that were either streaming or distributing music without authorization. Most, if not all, of the websites included in the notice have blog addresses and have either been removed from the internet or have had the music download feature disabled.

Have you noticed your protected work being reproduced on the internet without your permission? When the owner of copyrighted material, or as in this case the owner's representative, seeks to stop online infringement, a first step is to issue a take down notice under the Digital Millennium Copyright Act (DMCA). To be valid, the notice must contain several elements. For example, a claimant shall identify both the copyrighted work that has been infringed and the infringing material. Also, the claimant must include a statement that the owner has not permitted such use. The remaining requirements for a DMCA take down notice are listed in the United States Code, 17 U.S.C. Section 512(c)(3).

On the other hand, if you notice that materials on your website have been blocked or deleted by the service provider, it may be due to a DMCA claim. In that event, you may pursue a counter-notice. A counter-notice ensures that copyright owners and their representatives do not cause the removal of non-infringing materials.

If you find yourself in any of these situations, it may be wise to contact an experienced intellectual property attorney before proceeding.

A new invention is often followed by imitating competitors unless, of course, that new invention is protected by a patent. That various blanket with sleeves products serve as a perfect example.

You're probably familiar with the infomercial-promoted Snuggie, the blanket with sleeves. With the Snuggie, a user can stay "totally warm" and still have the "the freedom to use [their] hands." The product seems fresh and has been referred to as a trailblazer. However, the Snuggie is not the first of its kind. It is predated by the Slanket, the original blanket with sleeves. In turn, the Slanket is predated by the Freedom Blanket, also called the original blanket with sleeves. Although the inventors of the Freedom Blanket have made online claims that their sleeved blanket idea was stolen, they have not sought legal action. Similarly, the Slanket inventor, Gary Clegg, has not sued because he never patented his product. He claimed that he attempted to patent the Slanket, but was told by patent lawyers it would not be feasible. Clegg considers the Snuggie's marketing campaign to be advantageous to Slanket sales because the Snuggie's popularity has raised consumer awareness about the product in general.

These products exemplify the importance of patent protection. Because the inventors of the Freedom Blanket and the Slanket did not seek patent protection, competitors were free to borrow their idea and create similar products. To determine whether or not you should seek a patent for your invention, get in touch with a patent attorney to explore your options.

The United States intellectual property offices (U.S. Patent and Trademark Office and U.S. Copyright Office) are open to comments about a new world wide treaty that could affect copyright laws. The World Intellectual Property Organization has recently considered an international treaty that would create minimum standards in copyright laws to provide people who are blind or face other visual impairments better access to copyrighted materials.

The draft treaty is sponsored by the World Blind Union and was introduced at the May 2009 session of the WIPO's Standing Committee on Copyright and Related Rights. At the committee meeting, the United States delegates indicated a commitment to enhancing accessibility of copyrighted works. They also stressed the National policy of gathering information about proposed ideas through consultations, information meetings, and notices of inquiry with citizens.

Anyone is invited to comment on the draft treaty. Comments are due on November 13, 2009 and may be submitted electronically.

"Power to the People – Power Belongs to the People." The Rock Art Brewery in Morrisville, VT adopted that phrase in celebration of being able to keep the name of their 10th anniversary beer, the Vermonster, after settling a trademark dispute with a national beverage manufacturer. Earlier, the makers of Monster energy drink, Hansens Beverage Company, attempted to stop the small brewery from using that name. The Rock Art owner received a cease-and-desist letter demanding immediate abandonment of the term Vermonster. The letter explained that use of the word 'monster' would create confusion among consumers between the beer and the energy drink.

After receiving the notice, the brewery owner used the internet to broadcast what had happened. Public outcry ensued as he received support from the internet community. He also received support from stores in neighboring states as they pulled Monster Energy drinks and other Hansen Beverage Co. products from their shelves. Even a United States Senator observed anyone confusing energy drinks and beer should "lay off the energy drinks."

Though the precise details of the settlement are confidential, Hansen will allow Rock Art to continue marketing the Vermonster brew throughout the nation and Rock Art will not enter into the energy drink business.

In 2008, the United States Congress established a new Office of Management and Budget administrative post: U.S. Intellectual Property Enforcement Coordinator. On September 23, President Obama delegated that position to Victoria Espinel, former Assistant USTR for Intellectual Property and Innovation.

Ms. Epinel's primary job will be to combat counterfeiting and bootlegging of software, music, films, and drugs. She'll have her work cut out for her in trying to encourage countries like China to crack down on piracy abroad and prevent such illicit materials from entering the U.S.

I applaud the decision to create a dedicated executive IP position in order to fight the rampant problem of copyright violations. Not enough is being done to make certain that artists rightfully receive proper recognition and compensation for their works.

 Microsoft has prevailed in its appeal from a $388 million dollar penalty levied against it in a patent infringement case. Uniloc, a California security software company, filed a lawsuit in 2003 against the software giant, claiming that Microsoft infringed on its patent for an antipiracy software-registration system.

Judge William Smith, of the U.S. District Court for the District of Rhode Island, overturned the initial decision and held that Microsoft does not have to pay any damages to Uniloc. The award would have been among the biggest ever granted in an American civil patent action.

Usually computer software is protected by copyright law, so this is a unique case in which a patent was issued. We don't have all the facts, so it's hard to draw any conclusions, but I find myself pulling for the little guy!

A thoughtful patent attorney can ensure that your rights aren't bulldozed by big business.

A lawsuit commenced by guitarist Joe Satriani against a wildly popular British band and its record company has been dismissed. Satriani alleged that Coldplay stole substantial parts of his 2004 song "If I Could Fly" and improperly used them in their hit song "Viva La Vida."

From court records of the case, it seems that there was a settlement between the parties. Neither side is admitting that any agreement was reached. Interestingly, another musician, Yusuf (Cat Stevens) is now claiming that "Viva La Vida" ripped off his song "Foreigner Suite" from 1973.

I went through an entire week with Coldplay's version of the song going through my head. I even downloaded it, and listened to it on repeat, hoping that I would get sick of it, and stop singing the song in the shower. It would have been interesting if this case had gone to trial to find out what really happened!

The race for gold is not the only contest taking place in Vancouver during the 2010 Winter Olympics.  The International Olympic Committee (IOC) requested the Australian Team to stop displaying a boxing kangaroo flag, which they had hung across several balconies in the Olympic Village. The Australians refused. The IOC requested the removal because the flag was said to have violated the IOC's rules against commercialism in the games. The golden kangaroo wearing red boxing gloves is a trademark registered to the Australian Olympic Committee and is used in Australia to encourage sport and sportsmanship in school children.

Eventually, the matter was resolved amicably.  The IOC allowed the Australians to keep the unofficial mascot banner flying after a local Vancouver political leader offered to display the flag from a flagpole in the city.  Australian proponents argued that the boxing kangaroo flag has become an Olympic tradition with the team as it has been displayed at each Olympics beginning with the Sydney 2000 Summer Games.  Furthermore, although the image is a trademark, it should not be interpreted as violating the IOC's non-commercial display rules because it is not associated with a product or service for sale in Canada.  Afterall, it is not as if the team claimed and displayed the Nike Swoosh as their mascot.

The standard for proving fraud in trademark applications, which is grounds for invalidation, has been intensely debated this year. In my post in March 2009, the Trademark Trial and Appeal Board (TTAB) suggested that "inaccurate declarations of use" could possibly amount to fraud. Months later, the TTAB issued a ruling that such inaccuracies only made a "presumption of fraud", which an applicant could overcome by correcting any falsities on the application before a challenge arose. Thus applicants were provided an "option to cure" any inaccurate statements on their trademark applications. The above standards were unfavorable to trademark applicants due to the high risk of trademark cancellation due to invalidation. Under such rule, applicants and their attorneys were required to go above and beyond due diligence in determining the course of use for their potential trademarks.

As if in step with the increasing level of protection for trademark applicants, a recent decision from the United States Court of Appeals for the Federal Circuit provided an even narrower standard to proving fraud and canceling applications. Now the challenger has the burden of proving the applicant had "actual intent to deceive the United States Patent and Trademark Office." In approving this higher standard, the Court reversed the previous TTAB decision and remarked that the TTAB "erroneously lowered the burden of proof" required to invalidate an otherwise legal trademark application.

Despite this added protection, accuracy and honesty is still extremely important in trademark applications. If you are considering obtaining a trademark, first consult with an experienced trademark attorney.

Blogging has become a popular and effective way to disseminate information about your business and personal life. While some bloggers prefer to use original content in their posts, it is also acceptable to borrow media and information from other internet sources. As a result, many blogs are the product of information that has been copied and modified. Because some of the materials on the internet may be copyright protected, it is important to observe the following guidelines when borrowing to blog.

Use ideas. Recall that a copyright only protects the expression of an idea. It does not protect the ideas or information behind the expression. Therefore you have more liberty to use other people's ideas and information so long as you're not copying the manner in which such information is arranged or expressed.

Public Domain. Materials created prior to 1923 or prior to 1977 without a copyright notice are considered to be in the public domain. That means they are not afforded copyright protection. Thus, you have free reign over public domain materials.

Beware of infringement claims. Realize that in the event of an infringement complaint, you may not be able to remove the troubles by simply taking down the infringing post. Most people take a lighthearted approach to the unauthorized copying of protected materials; they assume a case will be dismissed when they remove the protected materials. They also assume copyright infringement only applies when the copied work is misappropriated for commercial use or to make a profit. Such assumptions are not true. The act of infringement is committed, regardless of whether it's for a commercial purpose, when the work is displayed without the owner's permission or not pursuant to the fair use doctrine.

A Florida boat manufacturer, Hell's Bay , obtained a settlement in its case (which included a trade dress claim) against Beavertail, a Minnesota based boat manufacturing company. Hell's Bay, located in Titusville, Florida, has many boat designs, including several shallow water skiffs. In Hell's Bay's case against Beavertail, Hell's Bay claimed that a number of Beavertail's skiff designs copied those of Hell's Bay designs for skiffs. Hell's Bay also claimed its shallow water skiffs were entitled to trade dress protection because of the uniqueness of the hull designs and the skiff's look.

Trade dress deals with the way providers of goods and services package or design their products. In evaluating whether "packaging" or design of products can receive trade dress protection, courts use the same criteria as they use in trademark claims, and trade dress may be entitled protection even though it is unregistered. Some of the criteria courts look at in determining whether to afford trademark or trade dress protection are whether there is a likelihood of confusion as to the source of the goods, whether the mark is functional, and whether the mark is inherently distinctive or has acquired a secondary meaning. If the packaging or design deserves trade dress protection courts can award injunctive relief along with monetary damages. In the Hell's Bay case, the exact settlement terms were not disclosed and no liability was found or admitted; however, as part of the settlement, Beavertail did discontinue manufacturing the questioned designs, destroy its molds for those hulls, and give Hell's Bay some monetary compensation.

If you are a business owner it is important to remember that product design and packaging, including the 'look and feel' of your business, may be entitled to trade dress protection as long as they meet the required standards. If you have questions about trade dress and trademarks, please let me know.

You may have noticed this fashion ad posted on internet news sites or broadcasted on entertainment TV shows. The image of the incredibly thin model is central not only to an ongoing self-esteem and body image debate in the fashion world, but also to the issues of copyright infringement and fair use in the intellectual property law world.

The battle began when internet websites, Photoshop Disasters and Boing Boing, reproduced the admittedly altered Ralph Lauren ad. Boing Boing also included a caption commenting on the model's unrealistic dimensions. Ralph Lauren filed a Digital Millennium Copyright Act (DMCA) complaint, alleging that the reproduction of the image amounted to copyright infringement and did not fall within fair use, which permits the copying of protected works for the purpose of parody and critical commentary. Photoshop Disasters removed the airbrushed photo, while Boing Boing stood its ground. The editor of Boing Boing issued a razor-sharp response, warning that future attempts to "silence their criticism" will be met with "copious mockery." In light of Boing Boing taking the offense, many organizations have shown their support for Photoshop Disasters and Boing Boing in what appears to be a victory for Fair Use and freedom of speech.

If you have any questions concerning whether or not the reproduction of a work is fair use, consult with an experienced copyright attorney.

Oprah Winfrey and Dr. Mehmet Oz are suing over 50 small beauty product and dietary supplement companies across the country, claiming that the businesses falsely professed that the TV personality and her recurring talk show health expert endorsed their merchandise.

Among Oprah's list of grievances are consumer fraud and unauthorized use of names, likenesses, and trademarks. Many of the defendant companies appear to be fly-by-night outfits, running credit card scams. The victims are unsuspecting buyers of their vitamins, anti-cellulite and anti-wrinkle creams, and tooth-whitening products. Oprah is incensed that her reputation was purportedly tied to these questionable organizations.

The clout Oprah has today is mind-boggling, but not surprising! People will run out and buy anything if it gets a thumbs-up from her. The same goes for any powerful or famous person. To think that these companies would misrepresent the facts just to capitalize on her sphere of influence is a testament to Oprah's power in the market. While we could argue that a little more caution from viewers in making purchases couldn't hurt, trademark laws exist to protect consumers from being confused as to who endorses which products.

Ensure that your name isn't associated with sketchy characters! Contact a trademark attorney for protection!

The time it takes to get a patent approved by the United States Patent and Trademark Office is getting longer and longer. The average wait for a first response from the USPTO to a patent application is now more than 2 years. From start to issue, the current average time lag is nearly 3 years!

The USPTO has over 1.2 million patent applications pending and received about 497,000 new applications in 2008. As I discussed in a previous entry, there is something of a budgetary crisis going on at the USPTO right now and unfortunately the agency simply does not have enough resources to dedicate to the examination and review of patent applications at this point. Unfortunately, the current economic situation has forced many governmental agencies to tighten their belts, meaning processing gets delayed, and the public has to wait longer and longer. Inventors are no exception.

What does this mean for your invention? It has become difficult to predict the time frame in which a patent may be issued, and this uncertainty may adversely affect your ability to secure investors and bring in new capital to your firm based on near-future intellectual property rights. Furthermore, infringers may come out of the woodworks while your patent is being processed. The best course of action is to apply early and get the ball rolling ASAP! Issued patents give cease and desist letters a lot more teeth when asking an infringer to stop.

Contact a patent attorney to get started right away with the patent process!

If you are thinking about registering a company trademark under an alternate domain name, think again. The American Automobile Association (AAA) recently sued James Van Johns, a Pennsylvania resident, for violating federal cybersquatting laws. According to the Anticybersquatting Consumer Protection Act, a trademark holder can sue anyone who registers or uses a domain name that may confuse consumers or mislead them into believing the website is endorsed by the mark holder.

Van Johns had registered the website AAA.net which appeared similar to AAA's website, AAA.com. This would have likely confused consumers trying to connect with AAA, especially since Van John's site featured advertisements for AAA's competitors.

Fortunately, the parties were able to settle and each side paid their own legal fees. As a result of the settlement, Van Johns had to release AAA.net to AAA without any payment. He is further prohibited from registering any other web addresses similar to AAA.

Amazon has taken it upon itself to break into customers' Kindles and surreptitiously erase copies of Nineteen Eighty-Four by George Orwell that it has deemed illegally obtained. Kindles are wireless reading devices sold by Amazon that store and display e-books and other digital information.

Amazon did not get permission from users to remove data but unilaterally made the decision to invade users' collective privacy. Once media is recorded on someone's personal device, it is effectively personal property and generally cannot be taken without a court order. What Amazon did is tantamount to vigilante justice.

Individuals' personal electronics are their own and their contents must be respected! I would be furious if a company skulked into my digital space and took what was rightfully mine! Furthermore, if these allegations are true, controversy could open up a whole can of censorship and/or freedom of speech worms. In the event of illicit activity, there are proper judicial channels and legal remedies available to those that have been truly wronged.

Consult an intellectual property attorney to properly enforce your copyrights!

Louis Vuitton, the high-end fashion retailer, has been awarded $32.4 million dollars in its trademark and copyright infringement case against Akanoc Solutions, Inc., and Managed Solutions, Inc., a pair of website hosting companies. The case, Louis Vuitton Malletier v. Akanoc Solutions, Inc. et al., was held in the U.S. District Court for the Northern District of California and a jury rendered the verdict.

What's unique about this case is that the defendants did not commit any direct violations themselves, but hosted sites that sold Louis Vuitton knock-offs. Contributory trademark infringement is a legal theory wherein a defendant may be liable for assisting trademark infringement or having control over others who directly infringe.

In order to be held accountable for the acts of others, the defendant must know or should have known that another's conduct constitutes infringement and the defendant must give substantial assistance or encouragement to those that directly infringe. I think it's fair that secondary actors and entities that enable infringement are liable for either actively helping infringers or looking the other way!

Want to keep your trademark safe from any type of infringer? A trademark lawyer can preserve the strength of your brand!

Businesses know it is important to protect their trademarks from infringement. If they do not protect their marks, they could lose their exclusive right to use the marks. Some businesses are more aggressive than others in protecting their marks. McDonald's aggressively protects their trademarks. They have filed several lawsuits over the years, attempting to protect the "Mc" term in restaurant and food product use. The key factors in trademark infringement cases are whether the use of a similar mark will cause consumer confusion as to the source of the goods or services or is deceptive in some way.

In the latest installment of the "Mc" lawsuits, a Singapore restaurant franchise has finally won a trademark infringement case brought against it by the international franchise giant McDonald's. The lawsuit started in 2001, when McDonald's sued Malaysian Chicken Curry, which advertises itself as McCurry, for trademark infringement for the use of the term "Mc". McDonald's claims exclusive right of the "Mc" term in restaurant and food product advertising. The Malaysian Chicken Curry restaurant started in 1999 and serves Malaysian style cuisine. The restaurant is named after one of its popular dishes, Malaysian Chicken Curry. McCurry lost the case at the trial level, but after appeals, the court ruled in favor of McCurry.

While McCurry must be happy with their result, this finding will have dramatic effects on the strength of McDonalds' "Mc" designation in Malaysia. Will there be a snowball effect if other countries follow in the High Court of Malaysia's footsteps? Do you think the American court system would have come to a conclusion different from its Malaysian counterpart? Do you think sometimes businesses go too far in trying to protect their trademarks? There are so many possibilities--let's discuss!

Franchisors and franchisees must protect the trademarks and service marks that identify their services or goods, but they also must be careful not to infringe upon other's trademarks or service marks. Litigation can be costly, and whether you win or lose, a lawsuit could potentially bankrupt your business.

One such example of a franchise having to litigate a case is Paris Hilton's lawsuit against Hallmark Cards. The dispute is over the use of a likeness of Paris Hilton's head and the slogan "THAT'S HOT." This phrase was the topic of a previous Celebrity Trademark spotlight I did, featuring the scrawny blonde drama queen's trademark application, which is still pending with the USPTO. Hallmark Cards used the likeness and slogan on a card sold in its franchise stores. Paris Hilton has trademarked the slogan she made popular in the television show, "The Simple Life". The case is has not been finally decided; however, Hallmark Cards recently lost its appeal for dismissal. The 9th Circuit Court of Appeals has remanded the case to the trial court so the disputed issues can be decided.

The whole purpose of trademarks and service marks is to give businesses something to uniquely identify their services or goods. Obviously, you want to use your franchise's trademarks and service marks as often as possible for branding purposes; however, when preparing advertising or marketing material for your franchise, it might be a good idea to consult with an attorney to make sure any likenesses or images used are not already protected.

The Electronic Frontier Foundation has asked the United States Copyright Office to grant an exemption to the Digital Millennium Copyright Act so that iPhone users may load outside programs onto their phones. Circumventing a manufacturer's software is referred to as "jailbreaking" and Apple says that an allowance of it could lead to devastating hacker attacks.

What are some of the potential results spelled out by Apple? Cell tower crashes from improper external commands, signal disruption, privacy concerns, exposure to viruses, increased piracy, and the spreading pornography to children. Quite the doomsday prediction!

I think that Apple should strive to protect its technology without resorting to scare tactics and sensationalism. To me, brazenly touting fatal consequences that are remotely possible undermines its credibility. Apple should make its case based on its legitimate IP rights, not on public fear.

Do you think that this forecast is realistic? Please post your comments.

Judge Sotomayor's career in the judicial system has spanned 30 years and she has ruled on both ends of the spectrum, issuing favorable judgements to both plaintiffs and defendants in IP matters.

In 1997, in Castle Rock Entertainment, Inc. v. Carol Publishing Group, 150 F.3d 132 (2d Cir. 1998), Judge Sotomayor held that a trivia book based on Seinfeld, called The Seinfeld Aptitude Test, violated various copyrights. She also found in favor of licensees of the rights to The Three Stooges in an action to protect their property.

However, in another major case, Tasini v. New York Times et al., 533 U.S. 483 (2001), Judge Sotomayor ruled against a number of freelance journalists claiming that major news outlets had improperly duplicated their work and displayed it on databases like LexisNexis without permission and in violation of copyright laws. Judge Sotomayor opined that these news organizations were in compliance with the Copyright Act of 1976. Ironically, the U.S. Supreme Court ultimately struck down her ruling!

Despite the variation in her decisions, I am glad that there will be a judge on the U.S. Supreme Court with some IP savvy to tackle what is sure to be a huge slate of cases involving new technology.

How do you feel about Judge Sotomayor's qualifications? How do you think her background will affect the Supreme Court's decisions? Please post your comments or contact me to discuss!

Judge Sonia Sotomayor was confirmed by the United States Senate on August 6 and will be sworn in as a member of the U.S. Supreme Court on August 8. Despite coming under fire from a variety of Republican opponents, Judge Sotomayor was voted in by a 68-31 tally.

Judge Sotomayor was a highly-decorated intellectual property attorney in private practice, and served as a partner in a Manhattan law firm prior to her tenure as a judge. She has relevant experience in cyberlaw and appears to be a quantum leap over Judge David Souter, the technologically-challenged Justice she is replacing.

Judge Sotomayor has impeccable credentials from her college years through her time on the bench. Her dedication and enthusiasm are striking: while doing trademark work for Louis Vuitton, she routinely took to the streets in a bulletproof vest and tracked down people peddling fake Louis Vuitton purses!

I admire Judge Sotomayor for her remarkable experiences and, being an intellectual property attorney myself, share her passion for clients! Up next, I'll go through some of her past history with IP cases.

Competitors to Google are working feverishly to invalidate or delay a settlement agreement between Google and numerous authors and publishers that would avoid copyright infringement litigation over the digitization of literary works for the Google Books platform.

Google Books is a digital book system which scans in books, converts them into text, and makes them available and searchable online. Authors and publishers sued Google for unauthorized use of copyrighted materials. In October 2008, Google and the complainants came to an agreement that would allow Google Books to continue development.

The settlement has not been approved yet and raises antitrust issues into which the United States Department of Justice is launching an investigation. Companies like Microsoft, Amazon, and Yahoo are banding together to fight the deal as they claim that it unfairly insulates Google from liability for violating copyrights.

I think that if Google freely contracts with the authors and publishers, then it should be honored. The other tech businesses should draft their own agreements to secure the same rights instead of whining about Google! What do you think? Please post your comments!

Some of the reparations sought by the plaintiffs in a class-action suit against YouTube, the ubiquitous video sharing website, have been thrown out by a U.S. federal judge. Judge Louis Stanton, of the Southern District of New York, denied a number of plaintiffs' claims for statutory damages.

YouTube is a subsidiary of Google and receives 1.2 billion video views per day. Its level of exposure has soared as amateurs and professionals alike post over 65,000 new videos every day. The clips uploaded run the gamut from home videos to pro sports highlights to news updates.

The judge ruled that statutory damages for all domestic and foreign works that are not timely registered are barred by the Digital Millennium Copyright Act of 1998. He further declared that some of the videos in question were foreign works not governed by U.S. copyright law and therefore punitive damages would not be available for them. This decision appears to have no bearing on several of the other plaintiffs as their works fall under the Copyright Act.

YouTube is by no means out of the woods yet, as another, far more ominous lawsuit has been filed against Google by Viacom, to the tune of $1 billion dollars. At this stage, Google's main defense seems to be that as long as it immediately takes down illegal videos once it becomes aware of a violation, it is in compliance with the Copyright Act.

I, for one, really enjoy YouTube videos and hope that it can find a way to operate within the bounds of copyright law. It would be a shame for such an innovative site to be shut down, so hopefully some sort of licensing agreement or other permission can be secured.

What're your feelings on YouTube? Please post your comments or contact me to discuss!

A federal jury in Minnesota has awarded the Recording Industry Association of America $1.92 million dollars in its copyright infringement case against Jammie Thomas-Rasset, a 32 year-old woman from Brainerd, MN, for allegedly offering 24 songs for download on the Kazaa file-sharing platform.

Approximately 35,000 people have been threatened with legal action by the recording industry for illegal downloading, but Rasset's case was the first and only one of its kind to reach trial proceedings. For copyright violations, juries may enter verdicts of up to $150,000 per song pursuant to federal law.

Online music piracy has exploded since the advent of peer-to-peer networking and was popularized on the heels of software such as Napster. According to a 2007 study by the Institute for Policy Innovation, music piracy costs American workers $2.7 billion dollars annually, and 71,060 jobs are lost each year. Piracy divests artists of their rights to their own intellectual property and circumvents the traditional financial compensation structure. Currently, there are myriad channels available for legally acquiring music including iTunes, Zune, and Amazon.

Piracy remains a rampant problem, but the helter-skelter pursuit of individual offenders is not the answer. The recording industry should focus its collective energy on ensuring that P2P networking sites themselves are implementing adequate precautionary measures to deter copyright infringement. Such a strategy would effect a more equitable distribution of liability and prevent individuals from shouldering a disproportionate share.

The Recording Industry Association of America has triumphed over Usenet.com in a copyright infringement case originating in October 2007. The favorable ruling was issued by a federal court in the Southern District of New York, but the exact parameters of the punishment have yet to be determined. They could range from heavy fines to the complete disintegration of Usenet.

Usenet isn't a traditional peer-to-peer networking site, but affords users access to over 120,000 newsgroups enabling them to retrieve files on-demand from a single server hosted by Usenet that draws from stored content on several servers. The RIAA accused Usenet of actively encouraging users to share music illegally via its unusual structure.

This case represents a watershed moment in terms of the RIAA's tactics as it is now pursuing companies that are facilitating piracy instead of tracking down individuals. Furthermore, the RIAA is approaching internet service providers and requesting that they convey RIAA copyright infringement notices to their customers and suspend service for repeat offenders. The RIAA will refrain from taking legal action against the ISPs themselves in exchange for their cooperation.

The RIAA should be focusing on large-scale violations and the entities that make them possible. The RIAA's new outlook makes more than a little sense from both fault-finding and efficiency standpoints. It will be much easier to combat music piracy by going after the big fish.

Do you think this is a better strategy for the RIAA? Please post your comments or contact me to discuss!

In 1999, total revenue in the US from sales and licensing of music was nearly fifteen billion dollars. By the end of 2000, that figure had dropped to just over six billion dollars. In fact, the Recording Industry Association of America (RIAA) has reported a decline in revenue for nine out of the last ten years, making the first decade of the twenty-first century the first decade that music sales were lower at the end of the decade than the beginning.

Of course, the last decade saw two separate recessions, which cannot have helped music sales. And sales during the 1990's were certainly helped a great deal by consumers re-purchasing all of their favorite taped and vinyl music on CDs.

An RIAA representative cited growing pains adjusting to digital music as the reason for the decline, saying that the music industry has been trying to adapt to rapid changes in how consumers buy and listen to music. He went on to admit that the music industry has had trouble monetizing evolving music delivery methods.

Thanks to Napster and other digital file sharing sites, customers now expect to download music from the internet for free or for very little money. So instead of purchasing a complete album of music for fifteen dollars, they can cherry pick songs for one dollar each on Apple's iTunes, or use an unauthorized file sharing site to get music.

According to Forrester Research, only sixty four percent of Americans believe that music is worth paying for. Another study showed that unauthorized file sharing sites still account for 90% of downloaded music. Find out more about the music industry's struggles at Music's lost decade: Sales cut in half.

These statistics reflect the current difficulties faced by artists trying to protect their interests due to constant advances in music delivery systems, however, as a starting point, musicians and songwriters must also take the first and most basic step of protection – filing a copyright on their "creation" at the outset.

If you live in the Jacksonville, Florida or Orlando, Florida area and need to have a copyright on your music or believe your copyright has been infringed, please contact our firm Wood, Atter & Wolf, P.A., for business legal counsel.

The estate of late pop star Michael Jackson filed suit recently against two California-based organizations that it claims have infringed on its "King of Pop" and "Thriller" trademarks while pretending to be a charitable organization endorsed by Jackson.

This is the first trademark infringement suit filed by the estate since Jackson's death in June of 2009. The Heal the World Foundation and an affiliated corporation called United Fleet were named in the suit, which states that the defendants have registered 6 trademarks and applied for 41 more that could be considered "identical or confusingly similar" to the Michael Jackson estate's trademarks. The suit seeks to both to prevent the defendants from using the trademarks and also asks for the destruction of any infringing products.

Trademarks were developed as a means of protecting the public by making it easy for them to identify the source of a given good. Trademark holders need to be vigilant to prevent their marks from being infringed upon by parties with no rights to the mark. This not only protects their financial interests but helps them maintain their good name with the public.

If you have an unresolved business legal matter, please contact a trademark attorney our firm for expert legal counsel.

Find out more about this story at Michael Jackson Estate Alleges Violations of Trademarks, Rights of Publicity.

True story: I loved Twitter. Then I hated Twitter. And now I use it only to diversify my online social media portfolio. I mean, the micro-blogging site has even spawned new lingo in the English language! As I just used the term, an update posted on Twitter is referred to as a "tweet."

Consequently, Twitter has submitted a trademark application to the U.S. Patent and Trademark Office for the word "tweet." This process likely will turn into a race against the clock as "tweet" may become genericized before Twitter can fully establish its rights in the term.

A genericized trademark refers to one that has become so prevalent that it comprises the definition for a general class of product or service. Such a trademark no longer carries the specific connotation intended by the applicant but has developed into the generic description itself. Notable examples of genericized trademarks include "cellophane." Companies like Xerox take painstaking efforts to educate the public not to use the word as a verb ("Xerox this memo,") but rather, as an adjective ("Make a Xerox photocopy.")

What this means is that Twitter must actively take measures to inhibit broad usage of "tweet" or else it may effectively forfeit some of its rights in the word. One option is to formally notify users of proper trademark use. I would love to be part of the ad campaign that promotes phrases like, "Send me a tweet micro-blog." It is critical for trademark applicants to maintain the fine balance of popularizing their brands while concurrently preventing genericide so that they may retain their full intellectual property rights in their trademarks.

Are these rules nitpicky? Sure they are! But they all serve a purpose. Want to find out more? Send me a tweet!

Goldman Sachs Group, Inc. is currently doing damage control after learning that one of its former computer programmers, Sergey Aleynikov, allegedly made off with highly sensitive computer code comprising Goldman Sachs' latest trading model. A trading model consists of a series of algorithms that temporally optimize risk. The model dictates investment strategy and transactions are made accordingly. This entire process is referred to as automated trading.

A trading model constitutes key intellectual property and enables investors to make moves more quickly than more traditional means. Automated trading has become more and more popular as it has yielded huge profits for investment banks. Higher levels of speed and volume confer a considerable competitive edge, so banks seek to create models that execute trades as quickly as possible. Million dollar transactions can take place less than a second!

What's surprising about Goldman Sachs' predicament is that the theft was allegedly perpetrated by a programmer, and not a high-level trader. In addition, Aleynikov is accused of stealing actual computer code as opposed to memorizing the platform and drafting a new, copycat version. This indicates that companies must identify potential leaks from every angle and take a variety of precautions.

I wonder if Goldman Sachs had confidentiality agreements with its employees. With rogue former employees like Aleynikov, it may not have made a difference, since he probably doesn't have the assets to compensate Goldman Sachs for their financial losses and business advantages. I also wonder if there were non-compete agreements in place, preventing former employees from running off to work for a competitor, or start their own business. Furthermore, I wonder how much of Goldman Sachs' information could have been protected under trade secret laws, where minimizing the exposure of these secrets to employees would offer them the best protection.

Are you a business whose assets are in intellectual property? Do you have special skills, customer lists, or processes you don't want your competitors to have? An intellectual property lawyer with a strong foundation in business law can help you cover all your bases!

Independent internet radio service providers have struck a deal with the Copyright Royalty Board that will keep them afloat. The internet stations were concerned that astronomical royalties would inflate their costs to the point of sinking their businesses. Some had worried that required royalties could potentially be set at double their total revenue!

Internet radio stations continuously stream music and draw over 42 million American listeners every week. Traditional radio stations have licensing agreements in place which enable them to legally broadcast music and which are paid for by substantial income from advertising.

The contract agreed upon by the parties spans 10 years, expires in 2015, and includes a graduated royalty fee structure whereby artists and record companies receive progressively higher payouts over time which may be tendered in the form of a cut of the stations' profits. The compensation paid will be directly proportional to the popularity of the radio stations.

Some key stations, such as such as Pandora, have yet to join the deal, but it is anticipated that they will soon sign on the dotted line. Such an agreement was critical for internet radio as it needed a plan that would enable it to be financially viable. The industry is still fairly new and in its formative years, so very few independent providers are turning a profit right now. It will take some time before these providers can compete with larger stations that are affiliated with large media conglomerates.

I love internet radio and listen to it practically every day! It has so many more dimensions than regular radio and gives users new ways to mix and match music to suit their individual tastes. I'm glad that some middle ground could be found so that internet radio can go on uninterrupted!

Are you a fan of internet radio? Let me know what you think!

Computer giant International Business Machines, Corp. has been taken to court by MOSAID Technologies, Inc., a Canadian intellectual property development firm, for suspected unlicensed use of MOSAID's technology. It is claimed that IBM manufactured and sold microprocessor and circuit products that use Dynamic Random Access Memory patents belonging to MOSAID. The suit was filed in U.S. District Court in Delaware and alleges six different counts of infringement.

MOSAID has been a trailblazer with respect to DRAM and has enjoyed a virtual monopoly over the DRAM licensing market. MOSAID has agreements in place with Fujitsu, NEC, Toshiba, Hitachi, Mitsubishi Electric, and Oki Semiconductor. Interestingly, MOSAID says that its hand was forced regarding IBM due to stalled talks between the parties regarding possible licensing for the patents in question.

This is not the first time that MOSAID has cried foul; it has filed suits against Samsung, Infineon, and several other companies in the past for similar conduct. Samsung ultimately settled with MOSAID and came away with a five-year license agreement to use MOSAID's inventions.

I think MOSAID is doing the smart thing by actively pursuing companies it feels are infringing upon its patents and ensuring that it is justly compensated for its innovation. Despite the difficult process of initiating litigation against every potential copycat, it is imperative that intellectual property be guarded as fiercely as possible so that your business can reap the hard-earned benefits of its R&D. Patent prosecution can and does pay dividends for decades.

Contact a patent attorney to protect the fruits of your labor for years to come!

Jay Leno may be the predictable, humorless, lisping shadow of the much more talented, suave, and hilarious Conan O'Brien, but that's not the only thing our mega-chinned lackey was lacking. For five years, thejaylenoshow.com domain name did not belong to the veteran comedian and former Tonight Show host. Instead, it was occupied by one Guadalupe Zambrano in order to drum up interest in his real estate page. Fortunately, Jay Leno now has rightful possession of the web address after the World Intellectual Property Organization recently mandated that it be returned to him.

Cybersquatting refers to bad faith registration of a domain name so as to profit from someone else's trademark. To add insult to injury, cybersquatters often attempt to extort money from the trademark holders by offering to sell the addresses back to them. The U.S. Antisquatting Consumer Protection Act was enacted to deter this type of exploitation. Misleading users in an effort to draw them to a particular site is banned by the Act.

The WIPO held that following a 30-year career, Leno had procured common law trademark rights to his name, and gave Zambrano a 10-day window to surrender the web address to Leno. A domain name represents one of the keys to widespread recognition, builds website traffic, and helps to create a natural association between a site and a person or entity.

I'm glad that the WIPO issued a decisive ruling and empowered trademark holders. People who have worked for years to build goodwill in their names deserve protection. Opportunistic cybersquatters should not be rewarded for their deceptive tactics! However, I don't know why this is the only registered trademark with Jay Leno's name. If you know, would you please pass it along to me?

By now, everyone has heard of Byrd and Melanie Billings, the Florida couple who were gunned down in cold blood in their own home in early July, 2009. Not one detail of this sad story is run of the mill as the Billings were the proud parents of 17 children, 13 of whom were adopted and have special needs. Now another puzzling wrinkle has been added to mix; Mr. Billings reportedly copyrighted his children's names and repeatedly alleged infringement.

I know what you're thinking: "Copyrighting a name?! Is that possible?!"

My answer is no. And even if it is, it's doubtful that he would be able to pursue a copyright infringement claim. Copyrights protect an expression of creativity on a tangible medium. I don't care how creative Hollywood parents get with their babies' names--it's not eligible for copyright protection. Write a poem with the kid's name, and now the poem is eligible for copyright protection.

Strangely, Mr. Billings frequently sent letters to the Florida Department of Children and Families, accusing the agency of infringing upon copyrights on his children's names and demanding $100 million dollars in silver coins or Federal Reserve notes. He claimed that the DCF violated copyrights, trademarks, contracts, admiralty and maritime law, the Truth in Lending Act, and committed libel. This story has gotten odder and odder in the days have since the shootings.

Mr. Billings appears to have had a checkered past including ownership of a strip club, alleged involvement in an adoption scam, and associations with disreputable individuals. This has led some to speculate whether the killings were a contract hit. Unfortunately, nothing conclusive has been discovered as to motive.

Despite the darker facts that have emerged, the Billings seem to have been a sweet couple blessed with the wherewithal to take care of several developmentally-disabled children. It's tragic that some of their own colleagues may have been responsible for their murders, and I sincerely hope that the perpetrators are brought to justice and punished to the full extent of the law. I can't fathom such callous indifference to life!

How do you feel about these new revelations? Please post your comments!

Numerous reports have surfaced alleging that the underlying ideas for one of the wildly successful Harry Potter books may not have come from author J.K. Rowling but instead may have been an imitation of a preexisting fictional personality dubbed Willy the Wizard.

Rowling's 2000 fantasy novel, Harry Potter and the Goblet of Fire, is contended to have a striking resemblance to a book written by British author Adrian Jacobs in 1987 titled "The Adventures of Willy the Wizard – No 1 Livid Land." Interestingly, it is claimed that Jacobs, who died several years ago, had unsuccessfully submitted the manuscript for his novel to the same literary agent that currently represents Rowling. Jacobs' estate has commenced a copyright infringement action against Rowling's publishing company, Bloomsbury Publishing Plc.

Copyrights enable authors, artists, musicians, and other composers to guard their intellectual property and deter plagiarism. In the absence of a license agreement or other authorization, the original author has exclusive rights to reproduce or create derivatives of his or her work.

I, for one, hope that the accusations are unmeritorious as Rowling has been an inspiration to many and substantiation of such claims would cast a dark cloud over a series that has entertained millions. Duplicating another's original literary work and passing it off as one's own is tantamount to theft and would be extremely distasteful, especially for a multi-billion dollar franchise such as that of Harry Potter.

What's your reaction to these allegations? Please post your thoughts and comments!

 The Associated Press has reached an agreement with All Headline News, to drop its intellectual property lawsuit alleging that AHN essentially stole AP stories and tried to pass them off as its own. The complaint included misappropriation of news reports as well as copyright and trademark infringement.

The suit was filed in January 2008 in the U.S. District Court for the Southern District of New York and the AP relied heavily on the theory of "hot news." This theory was originally set forth in International News Service v. Associated Press, 248 U.S. 215 (1918), wherein the Supreme Court held that, as far as ownership rights, breaking news may be treated like quasi-property. U.S. District Court Judge P. Kevin Castel ruled that "hot news" could serve as a basis for a misappropriation claim in the instant case, because money, time, and resources were expended to gather this information. This decision was somewhat surprising as most view "hot news" to have limited applicability.

The AP accused AHN of actively copying its news information without a license and rewriting it to appear as AHN's original work. The suit was ultimately resolved in June 2009 and as part of the deal, AHN conceded that it had used AP intellectual property without permission in several instances.

If someone had pilfered my work, I would find out whether they intended on giving me credit for my work, or whether they intended to compensate me for what was rightfully mine! It is unsettling when people try to take credit for someone else's efforts, because it doesn't offer any motivation for creative, hard-working individuals to keep contributing to the public sphere.

Want to insulate yourself from intellectual property theft? Contact an intellectual property attorney to learn how to guard your important business content!

We all know Apple, the trendy electronics and software brainchild responsible for mesmerizing us with iPhones and iPods. The technology giant hypnotizes us, and we truly believe that without their fresh, avant-garde products, we are not sexy or cool. (*Ahem* Despite their marketing prowess, I still believe I can be sexy and cool as a PC girl.)

What most don't know is how unequivocally silent Apple has been when it comes to disclosing information about its research and development. Despite online advances such as Facebook, Twitter, and other sources for disclosure, the company remains tightlipped with respect to its engineering.

Strict controls are imposed in the name of security to prevent employees from releasing any valuable information and harsh sanctions are in place for those who do. Apple is virtually impervious to leaks and even goes so far as to keep its own employees in the dark; many themselves are shocked when new products, such as the latest iPhone 3GS, are unveiled. The company is also famous for its product plan ruses designed to mislead both outsiders and also its own employees as to the state of certain Apple technology.

Even seemly innocuous information, such as the health of CEO Steve Jobs following a secret liver transplant, is kept under lock and key. Such unwavering devotion to discretion is a calculated business model and is indicative of executives that fully appreciate the high value of intellectual property. However, this secrecy can breed suspicion and give birth to consipiracy theories among consumers. Trade secrets are critical for any business and comprise the essence of brand image and identification, but today's sophisticated public demand the truth and trust in the products they support.

What measures should your business take to protect its trade secrets? An intellectual property attorney can show you how to preserve your sensitive information, and balance a positive brand name image.

Like most other modern business owners, you likely use keyword adverting through internet search engines. Most advertisers use generic terms such as 'massage' or 'furniture' as keywords. However, using the registered trademark of another as a keyword for your product or service may constitute infringement. So if you plan on using a third party trademark in this manner, proceed with caution and observe the tips below.

In case you are unfamiliar with the terminology, keyword advertising involves the advertiser using the services of an internet search engine, such as Yahoo! or Google to attract customers. The advertiser will purchase from the online search service certain terms or keywords that correspond to its products or service. When a potential customer enters the keyword into the search engine's website, they are directed to the advertiser website.

If your advertising efforts result in a likelihood of consumer confusion, you could be liable for trademark infringement. The best practice is to refrain from using another company's name as a keyword. Instead, employ generic terms that refer to your business. If you do use another company's exact name or trademark, avoid using the term in the description of your website. Alternately, make it clear to consumers that another party owns the mark and that you are only using it for advertising or comparison purposes.

Popular social networking website Facebook implemented a new policy effective as of June 13, 2009 enabling users to register URLs for their usernames. What this means is that a Facebook user may register, for instance, www.facebook.com/pepsi as the address for his or her profile. The registry process is a first-to-register system awarding a specific username to whomever requests it the earliest.

Users with no connection to, or legal permission from, registered trademark owners may seek to register existing trademarks on Facebook and preempt the registered trademark owners from obtaining their rightful usernames. An association of your trademark with an unrelated profile, especially on a platform as prevalent as Facebook, unfortunately can have detrimental consequences for your product, service, and/or brand image.

My firm has used its own trademark on its Facebook page. It is "www.facebook.com/WoodAtterWolf." I would be incensed to know that other law firms might be using our trademark to direct traffic away from our profile, towards themselves, and I would certainly take measures to stop this infringing use.

Facebook has included some limited safeguards but the onus is on the registered trademark owners to actively ensure that misuse does not occur. If you have discovered infringement, Facebook provides a link to report unauthorized use of your trademark to them.

I am curious as to ICANN's (the Internet Corporation for Assigned Names and Numbers) role in this subject. ICANN has adopted several domain name dispute policies, including the UDRP (Uniform Domain Name Dispute Resolution Policy) for its accredited registrars. My guess is that many Facebook users who use another's trademark name for their profile will find themselves tangled up in a domain name dispute resolution procedure. This could be a messy situation, since there are many complicated and intricate rules even under the UDRP.

Unsure of the implications this development may have on your registered trademark? A trademark attorney can inform you of all the potential ramifications.

The recently deceased superstar was known by many names: the King of Pop, M.J., Jack-o, and the list goes on. We also recognize him either as a dark-skinned cherub-faced child or a pale, middle-aged man with over-processed facial features. Why don't we also know him as an Intellectual Property Goldmine? Love him or hate him, the supremely talented character was a genius when it came to securing various forms of intellectual property during his long and decorated career as an artist and performer. Michael Jackson brilliantly relied on copyrights, trademarks, and even patents to protect his work, and was an avid collector of others' proprietary works.

Jackson registered his name with the U.S. Patent and Trademark Office and held a multitude of trademarks ranging from performances to merchandise to fan clubs. Even for a personality as distinctive as Jackson, trademarks played an important role in further distinguishing him from others.

Not only did Jackson guard his own work and attributes, he even acquired copyrights to other music. He owned a 50 percent stake of Sony/ATV, a joint venture which controls publishing rights to two hundred and fifty one Beatles songs. Jackson famously outbid Paul McCartney to purchase the song-copyright catalog in 1985. Today, Sony/ATV is estimated to be worth upwards of $1 billion dollars.

Amazingly, Michael Jackson even patented his very own invention, a method and means for creating an anti-gravity illusion. The patent features a shoe interfitting with a peg protruding from a stage and enables a wearer to lean forward at a 45 degree angle to the floor without falling. It certainly appears to be unprecedented for a musician to have obtained a patent himself.

Universal Music Group, the copyright holder of Prince's song, "Let's Go Crazy," earned over $6.9 billion in 2007. In February of that same year, toddler Holden Lenz was lucky to take 6.9 steps on his own two feet. But that didn't stop Universal from suing Holden's parents for copyright infringement, when they posted a 30-second video on YouTube of the baby bobbing to "Let's Go Crazy," playing faintly in the background of their kitchen in Pennsylvania.

Long before the tot could sing a nursery rhyme, his case set a precedent in federal court. The Northern District of California interpreted the Digital Millenium Copyright Act (DCMA) as requiring copyright owners to conduct a good faith evaluation of alleged infringement to consider fair use of the work, prior to sending takedown notices to websites like YouTube. Failure to do so could expose the owner to damages. This case essentially placed the burden of preventing online copyright infringement back on the owner.

The DCMA establishes safe harbors for internet hosts, so that they are not liable for the infringing acts of individual website owners or public posts on websites. Online companies like Facebook, MySpace, and YouTube enjoy the benefit of this safe harbor if they expeditiously remove allegedly infringing material, upon receiving a Takedown Notice from the owner. The online company then must notify the posting party, so that he can send a counternotification that he believes, in good faith, that he is not infringing. Unless the owner filed an infringement suit against the posting party, the online company, obviously caught in the middle of this war, then has 14 business days to restore the material on their site.

Because the Takedown Notice is relatively easy to send, and it starts such a flurry of burdens on online companies, the Lenz case requires copyright owners to do their due diligence to first determine whether there has been fair use of their material. Otherwise, the copyright holder faces liability for misrepresentation.

While strict copyright laws are intended to promote creativity, by protecting the rights of those who express creativity on a tangible medium. Although initially counterintuitive to place the burden back on copyright owners to perform due diligence investigations on alleged infringers, this requirement may, in itself, promote creativity. Lenz's attorney, Corynne McSherry argued that people who post on online sites "create a new and more vibrant public sphere," and that these posts should not be discouraged.

I absolutely agree with McSherry. I am one of millions of Facebook junkies. My friends' videos, photos, and posts are what make Facebook so intriguing (and addictive). The fair use of copyrighted material becomes a springboard for my friends' own creative works. Without my friends' contributions, the allure of Facebook would literally fade away.

What do you think? Read more about this story in an article by the ABA Journal. I'd love to hear your comments--contact me to discuss!

Warez is a term internet users created that refers to illegally downloaded copyrighted works. It likely originated from the plural of "software" as such groups often use specialized computer programs and servers to transfer large amounts of data, such a music and digital films.

Illegal downloading is a serious crime in the United States. In fact, I discussed the harsher penalties recently imposed by President Bush in the Pro-IP Act of 2008.

A Federal Court of Appeals recently upheld a 30-month sentence for downloading copyrighted works through a warez group. The defendant was guilty of illegally downloading films and music from the Czech Republic.

In this case, the defendant was indicted under a Federal statute for willful copyright infringement by reproducing or distributing during a 180-day period at least ten copies of one or more copyrighted works with a retail value of more than $2500. Even though the defendant had no criminal record and did not benefit financially from the activity, a federal judge determined that the prison sentence was reasonable.

All things considered, it is a good idea to be aware of the downloading activities on your computers or networks. According to federal law, many people may qualify for harsh penalties, including some very hard time.

If you have a successful business, you may want to consider expanding through franchising. By franchising, you can grow larger and faster because the franchisees provide the funds for the growth, not you.

One important issue to consider before franchising is whether you have developed a strong trademark for your business. This is crucial because a strong trademark delivers a consistent message to consumers about your franchise's products and services. Franchisees will pay higher royalties for a franchise like Subway, which has a nationally reputed trademark, than they will for a franchise with little or no consumer recognition.

In the very least, be sure to register your trademark before franchising. Registration provides a presumption that your trademark is valid. This will facilitate any claim of infringement in the unfortunate event that one of your franchisees attempts to improperly license or use your trademark.

A strong trademark is a term or phrase that does not merely describe the goods or services. Rather, strong trademarks require imagination, thought, or perceptions to link the mark with the provider of the goods or services. Such marks may suggest the quality of the goods or services, or may not have anything at all to do with the goods or services. For example, Greyhound might imply that a bus line provides fast transportation. Apple, on the other hand, may have nothing to do with a line of computers.

In an earlier post, it was stated that an inaccurate declaration of use on a trademark application would amount to fraud unless corrected before registration. According to a recent Trademark Trial and Appeals Board case, however, such inaccurate statements of use can be cured even after trademark registration.

If the registrant corrects the false statement prior to any challenge to the registration, it creates a presumption against fraud. This means that if the challenging party produces no other evidence to support registration fraud, the registrant will be found not-guilty of fraud. This decision provides a positive direction for future trademark registrants, even though it is not binding and therefore not mandatory authority. The option to cure a statement that has the potential to incur liability of fraud is a benefit to the trademark owner. Many future owners are initially unsure about the exact intended use of their mark. As a result, a common practice is to overstate such declarations of use because an understatement will likely lead to insufficient trademark protection.

Don't take a chance with your trademark application! Have a competent trademark attorney prepare or review your application.

Has this ever happened to you? You come up with a great idea for an invention. But before giving any thought to getting a patent, you contact a company and offer to sell your lucrative and profitable idea. Have you forfeited your rights to patent the invention? How do you disclose a proposal without forfeiting ownership?

You may still be able to patent your invention. The patent application will require proof that you came up with the idea first. One way to establish you are the inventor is to provide evidence of correspondence between you and the company discussing the idea.

However, a more effective method to avoid forfeiting a claim to an invention is to plan ahead by filing a provisional application for patent. A provisional application grants an earlier filing date as well as "Patent Pending" status to be used when disclosing your idea. Protection lasts up to 12 months from the filing date and is a relatively inexpensive investment. Thus, you are able to disclose your invention to potential buyers without fear of it being stolen and without the higher application costs associated with non-provisional patent applications. Before the 12-month period lapses, you can either allow the pendency status to expire or convert the provisional application to a non-provisional application, which will provide the benefit, if the application is granted, of being able to sue for patent infringement.

You can protect your secret formulas, recipes, or processes through trade secret law as long as the information at question is valuable to your business and you keep the information secret. But what measures do you have to take to maintain secrecy?

The Florida Uniform Trade Secrets Act, which governs trade secrets in Florida, only requires the information to be subjected to efforts that are reasonable under the circumstances to maintain secrecy.

One of the more famous cases that concern the maintenance of trade secrets is that of Coca-Cola. As you may be familiar, the secret formula for Coca-Cola is known to only a handful of senior executives. Each recipe holder must swear by oath not to disclose the secret recipe. This inclusive group appoints a successor when one of them dies to ensure the number of individuals with knowledge of the Coke formula remains constant. Finally, the designated executives are not permitted to travel together because a single accident might eliminate the formula's existence.

Another case involved KFC's extreme measures taken to protect their recipe from being stolen, during its relocation.

Surely, you do not have to go to these extremes to protect your trade secret. Secrecy is the main requirement. Therefore, you can maintain secrecy simply by not disclosing your information. You can accomplish this by keeping written documents, such as recipes, in a secured environment such as a safe or even a locked drawer. Also, if you must disclose your information, to essential employees for example, be sure that you use a confidentiality agreement or have them sign a non-disclosure form. Furthermore, if you wish to protect a website source code, you can prevent Internet users from viewing the code.

I disclosed the secret to preserving trade secrets in an article published by the Jacksonville Business Journal; read to find out more!

If your employer assigns you the task of producing a creative work, such as a photograph or a collage for advertising purposes, do not automatically assume you will own the intellectual property (IP) rights or even receive credit for it.

The employer usually owns the IP rights to anything made in the "ordinary course of employment." This is known as the work-for-hire doctrine. As with most legal concepts, the doctrine defines the "ordinary course of employment" in a very precise manner, reducing it into factors to be considered together. One factor is whether or not the work is produced during company time or with company resources. Another factor is whether either party takes action to indicate ownership of the intellectual party. Finally, a third inquiry is whether the work is included in the employee's job description. Projects that are within the employee's job description are likely considered works-for-hire.

However, you can still retain IP ownership over property created in the ordinary course of employment by executing a written agreement with the employer. Negotiate with your employer so that the terms of the agreement are clear and all parties involved are aware of expectations and responsibilities. Retaining such rights is important because IP licensing can be highly profitable.

If you have thought about engaging in creative endeavors for your employer, consider whether the product is going to be a work-for-hire. If you are unsure about your rights, or wish to retain certain rights with the ability to license, contact me for advice regarding negotiations and drafting the written agreement.

KFC. Coca-Cola. Pepsi. What do these companies have in common? Their success depends largely on a secret recipe or formula. If your business is built upon such a recipe or formula, then you may have considered protecting your information as a trade secret.

In Florida, the Florida Uniform Trade Secrets Act governs trade secrets. A trade secret is defined as information that is subject to efforts to maintain secrecy and derives value from not being generally known to other persons who could obtain value with it. See my advice for trade secret holders, in the Jacksonville Business Journal.

As mentioned earlier, a trade secret offers legal protection such as damages or an injunction. Unlike trademarks or patents, trade secret protection does not require a formal registration. To gain protection, you must generally follow three guidelines: the information cannot be generally known to the public, the information must be valuable to your business, and finally, you must take reasonable measurements to protect the secrecy of the information. Your trade secret may last as long as you protect it.

Want more information about protecting your trade secrets? Contact me, and I will be happy to give you a consultation.

Controversy surrounds a future Washington D.C. memorial dedicated to the late Dr. Martin Luther King Jr. The Martin Luther King Jr. National Memorial Project Foundation, a nonprofit organization, arranged the construction of the memorial and is paying for it through private fundraising efforts. The Foundation will transfer the memorial to the National Park Service upon completion. Dr. King's descendants charged the Foundation nearly $800,000 in licensing fees for the use of his words and image in the fundraising materials.

In response to the royalties payments, critics have blasted the King family for "profiteering." One professor even stated, "any family would be so thrilled to have their forefathers celebrated and memorialized in D.C. that it would never dawn on them to ask for a penny."

Those criticizing the King Family fail to acknowledge they have a right of publicity. In the past, when commercial merchandisers or publishers used Dr. King's words or image without permission, the Kings sued for their share of the income. The right of publicity is a common law doctrine, which allows an entity to charge royalties for, or prevent altogether, the commercial use of a protected name, likeness, or personality. Unlike copyrights or trademarks, the right of publicity does not expire after a certain number of years or death of the property holder. Rather, the right is descendible to the holder's heirs and lasts as long as it is enforced.

To date, the King Family has not charged for the actual memorial because it only features public domain materials, which are not protected and can be used by anyone. The Foundation may be liable to the Kings for future fees, however, if it uses words or quotes that fall within the Family's property rights. Some argue against this because the memorial will be given to the government, not a commercial entity. However, the King's should be permitted to charge at least a nominal fee in order to maintain their right of publicity.

In response to businesses' growing frustration with the limited availability of simple internet domain names, the Internet Corporation for Assigned Names and Numbers (ICANN) plans to sell new top-level domain (TLD) names.

Domain names have historically ended with these popular TLDs: .com, .net, and .edu. Currently, there are only 21 TLDs. ICANN proposes to make "personalized" TLDs available to any business with $185,000. Allowing a business to have their name become the TLD opens up an enormous, and possibly endless, combination for domain names. For example, a famous fast food chain can end their domain name in ".mcdonalds." Subdomain names for the TLD can also be available to identify a particular business, like "bankofamerica.bank."

The availability of personalized TLDs will become a nightmare from the intellectual property enforcement standpoint. The increasing number of domain names means additional time and money to monitor misappropriation, and to protect customers from infringers.

In attempting a preemptive strike against infringers, ICANN proposes that it will review applicants who must argue why they should be awarded a particular TLD. Grounds for rejecting an applicant include: having a TLD that is confusingly similar to another, pursuing an immoral TLD like .xxx, or seeking a culturally or politically insensitive TLD.

When does a fan's admiration become copyright infringement? This question was at issue when J.K. Rowling, author of the famed Harry Potter novels, filed a complaint against Steve Vander Ark, a fan of the series. In ruling for infringement, a federal judged enjoined Ark from publishing his book, "The Harry Potter Lexicon" and awarded Rowling monetary damages.

Prior to writing the book, Ark created a website, also called "The Harry Potter Lexicon." The website defines and cross references characters and elements from Rowling's novels in addition to providing updates about Harry Potter film releases and events.

During the lawsuit, Ark defended his position with fair use. Fair use is a legal defense that allows an author or artist copy a limited amount of preexisting material, without permission, for incorporation into a new work.

However, the judge determined that the Lexicon was a mere compilation of Rowling's copyrighted work and did not qualify as a new expression for the fair use defense. Other examples of compilations include "Best Of" albums such as Best Hits of the 1980s. Generally, the creators of such compilations must either own the rights or have authorization to use the individual works.

I'm sure you noticed this artistic image of Barack Obama during the 2008 Presidential Election. Street artist, Shepard Fairey, created it and based the work on an Associated Press photo found on Google Image. Now, AP claims that the artist copied their photo without the "required permission." Is this an example of copyright infringement? For now, the parties' attorneys are not disclosing much information; however Fairey's lawyer has brought mentioned the doctrine of fair use.

Fair use is a legal defense to avoid copyright infringement liability. It is not an exact rule; rather, it weighs various factors: the purpose and character of the use, the nature of the work that was copied, the amount the copyrighted work was copied, and the effect of the new work on potential markets for the copyrighted work.

Fairey's poster features a portrait of Barack Obama looking into the distance and splashed in red, white, and blue. At the bottom is an underlined word reading, "HOPE." Fairey said he made the picture specifically for the campaign after being requested to do so. However, the Obama campaign was hesitant about using an image to which they did not own the rights. Although the image was never officially used by the Presidential campaign, supporters distributed copies of the popular image at rallies and posted it on their websites

Now that the election is over, Fairey's work will be displayed in an art exhibit at the Institute of Contemporary Art in Boston as well as an exhibit at the National Portrait Gallery in Washington. The work is also being published in various books pertaining to the 2008 Election.

If you are an artist and wish to create a piece of artwork based on previous work, you may want to first consider getting authorization from the original owners. You can be sure that the details will be negotiated. Our law firm not only does trademark registration, but also negotiates licensing deals, drafts cease & desist letters, and is well-equipped to litigate a dispute. If you need assistance in these matters, contact us.

What happens to your intellectual property when you share it on a social network such a Facebook? For a short period of time, user content such as photos appeared to belong to the website.

Recently, Facebook briefly changed its terms of service. The new terms appeared to claim ownership in the intellectual property rights of any user content you uploaded, even after you deleted your account. Critics claimed that under this version of the terms, Facebook could potentially use your photos for commercial purposes or prevent you from doing the same.

After protest from users, Facebook CEO, Mark Zuckerberg, reverted back to an original version of the terms of use. The language granting Facebook such extensive ownership of your content appears to be absent. Zuckerberg stated in his blog that it is necessary to have some license over user content in order for the network to exist.

The team at Facebook is now in the process of drafting new terms of service that is more user friendly and easier to understand. Facebook users are encouraged to provide ideas for the new document. Read more about this topic here.

You may have seen advertisements wherein one brand name compares its product with that of its direct competitor. Such ads point out key differences between the products while displaying the competitor's trademark. You may have wondered how an advertiser can use another company's trademark without being liable for infringement. Also, if you own a business, you may have wondered if you are permitted to use your competitor's trademark in your advertisements.

Comparative advertising is widely used and even encouraged in the United States because it relays more information to consumers, enabling them to make better choices. If you plan to engage in comparative advertising, however, you should be careful to use the competitor's trademark in a way that is accurate and non-deceptive. You should also show that the products sold under the competitor's mark are different form yours. Also, do not give the impression that the competitor endorses or supports your product. Finally, in displaying the competitor's trademark in your advertisement, do not alter their logo or name in any way, and remember to include the proper designation such as "TM" or "®."

The most popular form of comparative advertising is when a product is "compared with other leading brands." Other brand names are not specifically identified, therefore avoiding allegations of improper use of the marks.

Another form of comparative advertising actually involves permissive use of the competitor's brand name. For example, if Cheer laundry detergent wanted to compare their product with Tide, Cheer may agree to pay Tide for permission to use the Tide logo.

If you are a trademark applicant or registrant with the United States Patent and Trademark Office, be weary if a company contacts you offering services such as trademark monitoring or document filing. Such companies may appear to be affiliated with the USPTO and often request fees for their services. They usually send official looking communications that include personalized information like your trademark file number or the name of your mark. Such items are public information. Do not be confused as these companies are not government entities. They merely attempt to profit from public naivety. In a recent news article, the USPTO has warned that it does not provide such trademark services and is not affiliated with any such companies that do.

Further, if you have employed an attorney to file your trademark application, then you should not receive any correspondence from the USPTO. Your attorney acts as your agent in dealing with trademark matters. Therefore, all USPTO communications should go to your counsel.

If a company or organization that appears to be affiliated with the USPTO has contacted you or requested fees, you may file a complaint with the Federal Trade Commission.

If you have any questions regarding the trademark filing process, or are unsure if you have received a communication from the USPTO, contact an experienced trademark attorney.

Small businesses rely on their proprietary assets, and many of these business depend on global transactions. However, less than one fifth of these businesses realize that their federal trademark and patent protections are limited to the United States. Are your IP assets protected abroad?

Without a doubt, profits fall prey to overseas counterfeiting and piracy. Counterfeiting is the creation of imitation products while piracy involves the unauthorized use or reproduction of software.

Stopfakes.gov is a great resource to help determine whether you should seek international protection. The website features different tool-kits to educate business owners about intellectual property (IP) protection in various foreign countries. Also included are instructions for filing a compliant against international infringers.

Strategy Targeting Organized Piracy (STOP) is part of a government effort with a two part objective. The first part is to strengthen IP enforcement throughout the world. The second part is to prevent IP crime throughout the world. STOP, along with other government organizations, provide protection to domestic businesses by regulating U.S. boarders and preventing the importation of counterfeited products, for example.

For more information on international trademarks or patents, contact a trademark attorney who understand the need to work closely with IP counsel abroad.

Worthington Millwork, based in Jacksonville, Florida, specializes in the design of architectural columns. Their website features a user-friendly approach to custom-designing columns; clients use the "3-Step Column Builder" to chose the base, column, and capital combination.

In addition to receiving trademark registration for their logo earlier this year, the company has recently been issued a Certificate of Trademark Registration from the U.S. Patent & Trademark Office for their name: Worthington. The mark consists of standard characters without a claim to any particular font, size, style, size, or color. This means that parties intending to use the name in any context--for example, over the radio, in different colors, or different fonts--will have to receive permission from Worthington Millwork.

Trademark registration includes many benefits such as the right to file a Complaint in federal court. By registering their name, Worthington has ensured that others will not be able to use it in the same class of goods or services. Improper use would lead to customer confusion and Worthington would have the power to take legal action. Thus trademark registration protects the company. Registration also protects the consumer by discouraging impostors from marketing inferior goods or services under the same name.

Are you interested in registering your company name or logo? Contact a trademark attorney for advice and help with the process.

Eolas is suing Apple and 22 other companies, including Adobe, Amazon, Apple, Blockbuster, Citigroup, Ebay, Frito-Lay, Google, J.C. Penney, JP Morgan Chase & Co., Office Depot, Playboy, Staples, Sun Microsystems, Texas Instruments, Yahoo and YouTube.

The suit alleges that these companies are in violation of Eoals' US Patent Numbers 5,838,906 and 7,599,985, which involve fully-interactive browser embedded applications. The company has stated that they developed their technology over 15 years ago, long before the marketplace had heard of them or thought of using them.

Intellectual property rights are the foundation of most business models, especially those based on technology. The US patent system has been very effective in protecting innovators from competitors who would unfairly profit from the innovator's hard work.

If you have a business legal matter, please contact our firm for legal counsel.

Find out more about this lawsuit at Patent holder that won against Microsoft now targets Apple.

Have you ever said, "Wrap it in cellophane" to ask for your food to be wrapped in plastic? How about, "Kleenex is softer to blow your nose" to recommend facial tissue to a friend, or "I need a xerox of this report" to request a photocopy of your document?

Cellophane, Kleenex, and Xerox are all trademarked brand names. By using a brand name to describe a generic product, you may be furthering trademark dilution.

Dilution occurs when a trademark becomes so overused that the trademark starts to identify a product itself, rather than the brand or company behind the product. Personally, I find that to be the case with "Band-Aid" and "Google." Why? Because we over-look the fact that the plastic bandage for our paper cut was not, in fact, made by Johnson & Johnson, even if we did ask for a Band-Aid. In addition, how many other Internet search engines are used when we're asked to "Google it"? Compare this with consumers' attitudes to other products: watch how noses turn up to cola that did not originate from the Coca-Cola company!

If a trademark becomes too diluted, it may become a generic term and lose protection under trademark laws. Companies on the verge of losing their protected status due to dilution will often launch extensive and expensive campaigns to prevent the public from using their trademarks in a generic fashion.

Are you concerned about the dilution of your trademark? Contact a trademark attorney for a consultation.

During the week of June 22-27, 2009, inventors and innovators gathered in Alexandria, VA for Innovation Week. The United States Patent and Trademark Office hosted this event at their headquarters in order to celebrate the important role patents and the USPTO play in the economy and the advancement of science and technology.

The event was open to the public and included dexhibits on display, technology specific presentations to patent examiners, and a multi-day conference for independent inventors.  Interested parties were able to attend Innovation Week as a spectator or were able to take a more active role in the event by participating as a keynote speaker, technology specific presenter, and patent exhibitor.

No "orphan works" are not the labors of a parentless child. Orphan works are copyrighted materials where the creator is difficult or impossible to find. If a reasonable effort is put into finding the creator, the work is considered to be orphaned. The problem arises when people want to make legitimate and good-faith use of the orphan work, but can't find the creator to enter into a licensing agreement.

In Canada, my native country, the Copyright Board of Canada has permitted the issuance of licenses on behalf of lost authors for the use of orphan works. As of August 2008, the Board issued 226 licenses, and only seven applications have been denied.

Here in the U.S., legislation is pending in Congress, intended to ease the orphan works problem. It is similar to the Canadian model, in that reasonable steps must be undertaken to locate the creator. If a license is granted to a good faith user, the legislation proposes to attach an orphan works symbol on the licensed material, in the event that the original author surfaces. If and when the original author steps forward, the good faith user will then have to pay reasonable compensation, the amount to be determined by the parties or by a court of law.

If you have expressed your creativity in any form, protect your expressions from becoming orphaned! Contact a copyright attorney to register your works.

In general, the "TM" symbol used in conjunction with a trademark means that the party using that mark is claiming ownership of the mark, but has not registered the mark. The "R" symbol can only be used to show that a trademark has been registered.

There is a classification for trademarks for words that are literally associated with the products they identify. These marks are generic. Words like "milk," "car," or "towel" are all generic words, because they are the nouns of those particular goods. Generic marks can never be used as trademarks. It prevents others from using those words to label those products.

Just because a party uses the "TM" symbol on a generic mark does not make that word a trademark. In fact, three cases before the Trademark Trial and Appeal Board specifically stated that "The presence of the letters 'SM' or 'TM' do not transform an otherwise unregistrable designation into a mark." See In re Remington Products Inc., 3 USPQ2D 1714 (TTAB 1987), In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984), and In re Minnetonka, Inc., 212 USPQ 772 (TTAB 1981).

Wonder if your trademark is registrable? Contact me for a consultation.

The new Pro-IP Act makes current copyright laws more strict, in a sense. For instance, any property used to commit (or facilitate the commission of) a criminal offense involving copyrighted works may be seized. This provision amends §506 of the existing Copyright Act. Also, it makes it unlawful to export unauthorized copies of protected works from the U.S.

The new Pro-IP Act amps up enforcement efforts against counterfeiting and piracy. One of the ways it achieves this is that the Act creates a position, appointed by the President: the Intellectual Property Enforcement Coordinator (IPEC), within the Executive branch. The role of the IPEC is to develop & implement a Joint Strategic Plan to combat counterfeiting and piracy. In addition, the Act increases funding and resources to enforce copyright laws.

Not surprisingly, copyright holders, owners, and registrants are happy about these stricter laws that protect them and their works. However, public advisory groups and those advocating for more access to creative works educational settings are concerned that this new law does not benefit groups that it intends to benefit, namely, the public and students. Some criticisms are regarding the increase in expected litigation, making it cost-prohibitive to give the public or students access to a greater variety of creative works. Another concern is that the PRO-IP Act is of more benefit to big media companies, rather than the public and independent artists.

The new Pro-IP Act is the thankfully succinct nickname for the new "Prioritizing Resources and Organization for Intellectual Property" Act. Its objective is to protect innovation, and to better encourage creative contributions to the U.S. economy. President Bush signed the bill into law on October 13, 2008.

In an age where an 11-year old's act of downloading music can cost his parents a six-figure (and in some cases, seven-figure!) judgment, the new Pro-IP act makes it more likely that these judgments roll into the eight-digit categories.

Downloading music is not the only way that copyright laws can be violated. Any type of "copy and paste" work could be an act of infringement. This has widespread implications as more people, including children, are blogging, sharing ring tones, and personalizing web pages.

Now I've seen it all. ...all except for Elvis, that is. In browsing through the Copyright Office's FAQs, there is an answer to the question posed: "How do I protect my sighting of Elvis?"

Copyright protects creative expression on a tangible medium. That means that the expression must have some element of creativity to be protected. While works like sculptures, paintings, and musical scores are obviously creative expressions; lists and forms are among items that are not, and cannot be protected.

A "tangible medium" is something like paper, canvas, or digital recordings. So while a song you sing outloud is, in itself, not eligible for copyright protection, it can be if you write the lyrics on paper or save the melody to a CD.

So to answer the question about whether a sighting can be protected, the answer is unequivocally "No." However, while the sighting itself cannot be protected, if you took a photograph (a creative expression on a tangible medium), the photograph can be eligible for copyright protection. For the Copyright Office's detailed answer, click here.

Of the five titles of the Digital Millennium Copyright Act ("DCMA"), I have the most inquiries about Title II, the Online Copyright Infringement Liability Limitation Act ("OCILLA"). This title addresses liability of online service providers ("OSPs") in copyright infringement actions.

With the advent of the Internet, instances of copyright infringement exploded. Copying another's work is as easy as a copy and paste from one source to another. Copyright owners faced the challenge of enforcing their rights against online infringers, who were either difficult and/or expensive to find, and once found, these infringers often had no money to compensate the original author/creator. As such, copyright owners turned to OSPs as parties in litigation, since OSPs were easier to find, and often had more financial resources to pursue.

The DMCA was signed into law in 1998 to better protect OSPs from the massive onslaught of infringement claims. In general, OCILLA created safe harbors for OSPs, such that OSPs could not be held liable for copyright infringement if its capacity was only as a passive conduit for Internet information, and if it did not know about or actively participate in the alleged infringement.

To qualify for these safe harbors, OSPs should do the following:

1) Designate an agent to receive infringement claim notices from copyright owners;

2) Designate a person to deal with those infringement claim notices;

3) Implement and execute a policy to terminate the accounts of repeate copyright infringers, and make this policy known to all Internet subscribers;

4) Take action, such as removing or blocking access to allegedly infringing content, once alleged infringement has been discovered; and

5) Accomodate and cooperate with measures that copyright owners take to identify or protect their copyrighted works (which could include use of watermarks or encryption to prevent copying and pasting of their work).

For more information, visit the U.S. Copyright Office website.

Around the world, all eyes would turn to Times Square in New York City on New Year's Eve. Millions would watch as Dick Clark entertained us, and finally counted down to the infamous dropping ball in the seconds before the new year arrived in the Big Apple.

He was born on November 30, 1929, but he alleges in a recent trademark registration that he has been using his name, "Dick Clark," since 1948 to "promote the goods and services of others by allowing sponsors to affiliate their goods and services with a television celebrity." (Reg. No. 3533080).

Dick Clark also holds the phrase, "Dick Clark's New Year's Rockin' Eve," to be his trademarks. He has one registration for the phrase's use in association with slot machines (Reg. No. 2688315). He also has a pending application for use of the phrase in conjunction with pre-recorded CDs, DVDs, and video tapes (Ser. No. 77612030).

Interestingly, his familiar sign-off catchphrase is not a registered trademark: "For now, Dick Clark. So long!"

A divorced, single mother of four is taking on the mogul of sexy lingerie. She can do it because she spent $12,000 to build a prototype and apply for a patent, which was issued in 2004.

Katerina Plew invented a bra featuring numerous loops and hooks, so the straps can be positioned in a combination that would keep them hidden under most styles of clothing. Plew sent a copy of her patent and various promotional materials to Victoria's Secret, in hopes that she could license the rights to them. About a year after Victoria's Secret cancelled their appointment with her, Plew saw her invention offered for sale at a Victoria's Secret store. Watch the AP video featuring Plew's story.

Plew took the proper steps to protect her invention. Take a look at the patent for this bra. Without this patent, she would not be able to prove how others are infringing upon how her invention is made. If you have an invention, I recommend that you build a working prototype, and seek the advice of a patent attorney before attempting to market or promote your invention.

Last summer I took a vacation far from my office in Jacksonville, Florida, to visit New York City for the first time. It was an interesting experience, to say the least. One of the most interesting sights, of course, being The Naked Cowboy.

The Naked Cowboy is not your average guitar-strumming entertainer. You can't miss him: he's the buff guy in white briefs, a straw hat, cowboy boots, and oh yeah, he spends most of his days in the middle of Times Square. If that's not surprising enough for you, he allegedly makes $5,000 per hour.

Recently, Mars, Inc. launched an ad campaign for their product, M&Ms. The TV commercial features a blue version of their candy coated chocolate, standing in Times Square, dressed in a manner that unmistakably is mimicking The Naked Cowboy.

The Naked Cowboy, whose real name is Robert Burke, is suing Mars, Inc. for $6 million for trademark infringement, unfair use of his image to endorse a product he does not support, and attorneys' fees. See the Complaint he filed here. The trademark infringement allegations are based on Burke's registered trademarks of the name "The Naked Cowboy," and his image (Reg. Nos. 2560456 & 2760208, respectively).

With the Complaint filed in February, it could be months or years until the case is dismissed, settled, or goes to trial. For updated information, contact me, and I'll see what information I can dig up.

Just because another party has registered a trademark does not necessarily exclude you from using and registering that trademark as well. Trademark protection depends on the scope of use, extent of use, use of the trademark in a geographic location, and association with a particular set of goods or services, among other factors.

Furthermore, a registered owner may agree to allow another to use the registered trademark, or grant a license to another to use that trademark. Permissive use or licensing involves negotiation of fees, costs, use, and royalties.

On the other hand, registration does not guarantee exclusive ownership. Rights associated with registration may cease if the owner stops using the trademark (either entirely or for the purposes stated in the application for registration), if the owner fails to pay maintenance fees, or if another party can prove that the registered owner was not, in fact, the first to continuously use the trademark to identify goods or services.

Trademark rights continue as long as the owner continues to use it consistently to identify goods or services. A trademark owner can lose rights to the trademark through abandonment of the mark, non-use of the mark, or by granting naked licenses. Tally-Ho Inc. v. Coast Community College District, 889 F.2d 1018, Footnote 6 (11th Cir. 1989).

Getting our minds out of the gutter, "naked licenses" have nothing to do with nudity. Naked licenses are when a trademark owner licenses the use of a trademark without controlling the quality of the goods or services provided by the licensee. If consumers cannot expect consistency of goods or services associated with a trademark, in effect, consumers will cease to attribute those products with that mark. This is essentially the same as non-use of a trademark.

Quality control is vital in trademarks and licensing, which is why many franchises thrive. The intolerance for anomalies assures consumers that they can depend on the goods and services to be exactly as they expect. This high level of predictability is the secret to many franchises' success.

So trademark owners, don't be caught with your pants down when licensing the your rights. Ensure that your licensees are delivering the same quality of goods and services that you have originally attached to your trademark.

Recently, at the Florida Coastal School of Law campus in Jacksonville, Florida, law professor, Carolyn Herman and patent attorney, Clark Wilson, presented a seminar entitled, "Identifying Intellectual Property Issues for the General Practitioner." It was a succinct presentation covering patent, trademark, and copyright laws.

This is the second annual presentation of this seminar, which was given in conjunction with Florida Coastal's Alumni Weekend celebration. I recommend this seminar to attorneys, business executives, entrepreneurs, and inventors alike, and would encourage anyone interested in attending to sign up for the seminar again next year.

How did powdered urine, an artificial penis, and a jock strap have two California entrepreneurs likely to plead guilty to charges of conspiracy to defraud the government?

When those items are the "Whizzinator" and "Number 1," which have been put together to help government employees pass drug tests, that's how.

It has been reported that a truck driver for the Department of Transportation beat mandatory drug testing by using these proxy pee products. In another instance, a Whizzinator customer allegedly used this product to pass a probation officer's drug test.

I was not able to confirm that there was a patent filed for this invention. Assuming that this invention is novel and unobvious (the two most basic requirements for an invention to be patentable), I can't help but wonder: does the use of this invention threaten national security if government employees in certain positions are trying to beat a drug test? If so, it could mean that an application was filed, but the government issued a secrecy order, preventing the publication typical of most patent applications. Specifically, Sec. 115 of the Manual of Patent Examining Procedures states:

If the agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.

I did, however, see that the term "Whizzinator" is a federally registered trademark (Reg. #2782181).

In spite of the registered trademark, prosecutors are seeking to take control of the Internet domain names, http://www.whizzinator.com/ and http://www.gonumber1.com/. Check them out while you can!

Politicians made the rounds in Jacksonville, Florida during 2008, promoting their campaigns. In a country where corporate powerhouses like Napster have made headlines for prosecuting teenagers who download music without permission or payment, could presidential candidates McCain or Obama be accused of a similar transgression?

Apparently so. The band, the Foo Fighters, has accused McCain of misappropriating their song, "Hero," for the purpose of promoting his campaign. Similarly, Obama has been under fire for using the legendary song, "Soul Man" without Sam Moore's permission.

Even McCain's running-mate and co-maverick, Sarah Palin, has been in cahoots with the band, Heart, for the use of the song, "Barracuda." If Heart has not been compensated for the use of their hard-driving rock song, they should be! Association with the song has given birth to a pop culture brand name. This has parleed into an entire line of "Sarahcuda" products, the intent of which are obviously to promote Palin.

Copyright misappropriation is theft. Because I represent musicians, most of whom are garage bands and independent artists, I do a lot of advising as to proper channels to get permission for using the music and lyrics of popular artists. On the flip side, I also stand up for these "lone voices," when they feel that another artist has misappropriated their work. My name is Jo-Anne Yau, and I approved this message.

I recently presented my seminar, "From Emblems to Empires: Using Trademarks to Promote, Protect, and Produce Business." The audience were the members of IMPACTJax, a young professionals' group that is part of the Jacksonville Regional Chamber of Commerce.

I discussed the importance of promoting a business name by building a brand name. The goodwill and reputation should then be protected through trademark or patent registration. Only then can defensive and offensive strategies have any teeth against potential infringers. Once a business achieves a level of success with those trademarked or patented assets, I explain why franchising the operation is among other options for expanding the business. In the alternative, for entrepreneurs interested in minimizing the risk of owning a business, I also discuss the advantages of buying a franchise.

Couldn't make it to the original presentation? Contact me to see when this seminar will be presented at a venue near you.

The "secondary meaning" concept is critically intertwined with trademarks and trademark law.

Secondary meaning occurs when a trademark achieves a meaning to consumers associated with the goods or services it identifies.

For example, the primary meaning of the word, "zoom" can be defined as "to move quickly," or "to get a closer look at something." However, when used as "Zoom Zoom," consumers easily associate the slogan as identifying Mazda vehicles. Therefore, "Zoom Zoom" has achieved secondary meaning with the public, because of their association of the phrase with the Mazda brand name.

The stronger the trademark's secondary meaning, the stronger the trademark becomes when disputes arise involving ownership or use of the mark. These disputes typically arise in the form of cease and desist notices, or Complaints filed in court, alleging infringement, dilution, unfair trade practices, consumer confusion, etc.

Federal statutes governing trademark laws are found under the Lanham Act (Title 15 of the U.S. Code). The federal statutes are extensive, providing definitions, detailing procedures, and laying out remedies for aggrieved parties. Disputes under the Lanham Act are brought under federal court.

In addition to these statutes, common law and state statutes also govern trademark laws. Common law is the body of law defined by the courts, and detailed research may be required to find the answers to the questions you are looking for. In addition, each state sets forth its own statutes, and its own courts have jurisdiction to resolve disputes. For example, statutes governing Florida trademarks are set forth in Florida Statutes Chapter 495.

It is important to note that the attorney representing you in state or federal court must be admitted to practice in that particular court or jurisdicition.

When you have a trade secret, nothing is more important than keeping it secret.

Arguably the most famous recipe in the restaurant industry, the Colonel's secret recipe with 11 herbs and spices is written on a piece of paper kept in a vault at their corporate offices. The yellowing sheet of notebook paper, handwritten by the Colonel himself, however, had to be transported this week to a temporary location for safekeeping while KFC beefed up security. Transportation security measures included bodyguards for the recipe and handcuffing the briefcase containing the recipe to KFC's president.

Much ado about nothing? Not at all. If the holders of a trade secret fail to take reasonable measures to maintain the secrecy, the value of their secret will be lost if the details are publicized.

I specifically discussed the KFC secret recipe in a recent article published in the Jacksonville Business Journal. The value of the KFC franchise, an internationally recognized business, comes from exclusive access to the recipe, which arrives prepared and ready to be used by the restaurant.

"Can I get a patent on an invention that combines two or more old inventions?"

The answer depends on whether combining existing inventions creates new and unexpected results. This satisfies the U.S. Patent & Trademark Office's requirement that an invention be novel and unobvious. Novelty and unobviousness can be achieved if the components cooperate to achieve a benefit that the components could not achieve alone.

For example, combining a pencil with an eraser on the end offers the benefit of writing compositions faster than if the pencil and eraser were separate components. The advantages of the pencil cooperate with the advantages of the eraser to provide an additional benefit when they are combined.

However, the combination of your toothbrush, your comb, and your nail clippers do not cooperate to offer something more than if you used each item individually.

In effect, if your creation involves combining separate inventions, you could be eligible for patent registration if your invention as a whole offers more benefits than do the sum of its parts.

Most people think of a company logo when they think of a trademark. The Nike "swoosh" is a classic example of this type of trademark. But many people don't realize that you can trademark many things that are unique, including product names, signature sounds, and much more. As a general definition, a trademark can include any word, name, symbol, device or combination of these things, and it must be used in commerce to differentiate a product or service from others on the market.

 For example, an apple grower would not be allowed to trademark the word "apple" for his business, because it is too common and does not distinguish his product from those of other apple growers. But if the apple grower decided to start a computer company in the early eighties, he would be able to trademark "Apple" because, even though it is a commonly used word, it is not a word commonly used to describe computers. In this case, "Apple" would clearly distinguish one type of computer from another.

Perhaps most surprisingly, certain sounds can be trademarked if they are associated with a particular good or service. A well-known example would be the Intel "Bong," used in their television commercials. You can find out more about unusual trademarks by visiting You Can Trademark a Lot More Than You Think.

Trademark is a complicated legal issue. If you have a product or service that you would like to protect via trademark, you will need to seek the advice of a business law attorney. Please contact our Jacksonville, Florida area firm for expert legal counsel regarding trademarks, patents and copyrights.