Thank you in advance. My company's name is "Daily Zen Bento," and we operate in San Francisco, California. I have recently received a cease and desist letter to discontinue the usage of this name by ZB Incorporated (Zen Bento), an Idaho corp...
Assuming the registration is valid (and there are various reasons why it might be invalid, which cannot be explained fully here -- especially in the abstract), it accomplishes various things, including the following:
1) It grants the owner/registrant nationwide rights in the mark, AS IF the owner were using the mark throughout the 50 states -- even if s/he is not. This principle is sometimes referred to as "constructive nationwide use."
2) The registration "freezes" any EXISTING remote geographical uses in connection with similar goods and services to the region and scope of use that pre-dates the registration. In other words, the registration does not suddenly make the previously existing business a trademark infringer, BUT it does prevent that business from expanding.
3) The registration *does not* prevent others from using a similar mark in connection with goods or services where no "likelihood of confusion" would result; for example, if someone registered "XYZ" in connection with dairy products, someone else could probably go ahead and start a new business using "XYZ" in connection with accounting services. HOWEVER, once a mark becomes "famous," this no longer holds true. For example, one probably can't start a business selling "Cadillac milk" because the "Cadillac" mark is famous enough to quality for federal protection against so-called trademark "dilution." There are also state causes of action for dilution, which don't always require that a mark be famous, but these tend not to carry the day in trademark disputes.
On a final note, I should add that there seems to be a misconception that trademark registrations are gospel. They are not. They can be challenged on a variety of bases, even after they are issued. To illustrate, Yves Saint Laurent is currently seeking to cancel Christian Louboutin's long-registered trademark in its signature "red soles" on various bases, including fraud on the Trademark Office and "functionality": http://lawoffashion.com/blog/story/07/14/2011/71 . It is true, as the previous answer indicates, that after five years after registration and substantially exclusive use, one can no longer challenge a registrant's mark on the ground of "mere descriptiveness," but a challenge for "genericism," for example -- along with many other bases for challenge -- remains.
I hope this has been helpful.See question
I made a video for cheap to get future work. Company hired new editor for a new project and wants all my raw footage. I agreed to give them a HD of the final video which they paid for upon the initial work for hire. I worked via an agency and they...
It's true that unless you were an "employee" -- and it sounds like you were an "independent contractor" instead -- your work for the company would not be a "work made for hire" unless "the parties have expressly agreed [to this arrangement] in a written instrument signed by them." (http://www.copyright.gov/title17/92chap2.html#201). However, as Attorney Ross points out, a "written instrument" can take many forms, including e-mails.
Furthermore, it is possible that you put something in an e-mail or other informal writing that "assigned" your intellectual property rights in the footage to the company. "Legalese" is not required to effect an assignment; "plain language," if it evidences the necessary intent, can result in transfer of rights as well. Again, some sort of written instrument is required, though the bar is quite low: a written confirmation of an oral transfer is sufficient (http://www.copyright.gov/title17/92chap2.html#204). (The appellate courts currently disagree over whether such a confirmation must be executed before the work is created, or is valid even after the work is created, if it confirms a pre-creation oral transfer.)
Going beyond the "work made for hire" doctrine and the rules about copyright assignments, there are a variety of legal tools that the company may be able to use to its advantage. (Some of them may work to your advantage, too, depending on the precise facts and your goals. But as my colleagues point out, one must keep in mind the potential *business* fallout from aggressive legal maneuvering.) I ran through the gamut of rights-transferring mechanisms on my blog at the following URL: http://lawoffashion.com/blog/story/04/20/2011/50 -- hopefully you will find it helpful.See question
I want to use the name of a fairly well-known song/album from the 70s as the name of blog I'm creating. I have searched the trademark database using TESS and found nothing. Is it okay to use? I do plan to credit the artist on the blog. The song wa...
The USPTO generally does not allow registrations of the titles of single artistic works, so you'll find that even famous films, for example, often do not appear in the TESS database. But TESS isn't the be all and end all of trademark protection; unlike in the copyright context, you don't need to have registered a trademark to sue for infringement (or dilution, which is another topic altogether.) Thus, you can bet that if you tried to start a blog called "Bridget Jones's Diary," whatever movie studio owns the rights to the film would come after you.
With that said, a single song title that has not been turned into a franchise is a very tough sell for a trademark infringement plaintiff, especially if there are many other works by that title or the title is a fairly commonplace phrase. That doesn't mean musical artists (or their labels) don't make a stink about individuals or companies using song titles for other purposes; recently, Ke$ha sent a cease-and-desist letter over the use of the phrase "Tik Tok" (her most popular song) as the name of an iPod Nano wristband. You can read more about the dispute on my blog: http://lawoffashion.com/blog/story/05/10/2011/53. My post discusses the legal standard in situations like this (of course, you'll need to consult an attorney to analyze the specific facts in your situation.) At the end of the day, you might very well win a trademark case against the owner of the song whose title you're using, but ask yourself if you want the hassle and expense. There is no surefire way to gauge the likelihood that you will be threatened or sued, but perhaps poke around on the Internet to see if the band in question, or their label or publisher, or other entities associated with the song, seem to be especially litigious.See question
Now RS is asking me for money because they said I broke the law. But I did not sell any! They asked me to pay $800 if I will pay the amount in once, or $1000 if I will make a payment plan. Are they allowed to do that??? Once again I did not sell a...
As the above answers indicate, it is difficult to respond to the question without more information. If the items you were selling were "pirated copies" (i.e. counterfeits), then as Pamela states, it doesn't matter whether any sale was consummated.
However, if the items were genuine, the issues become much more complicated. It's generally not trademark infringement to sell a genuine good on a site like eBay, even if you refer to the product by its name. As for copyright, under the "first-sale doctrine," a company cannot prevent you from reselling copyrighted software that you OWN. (See http://en.wikipedia.org/wiki/First-sale_doctrine.) However, as Bret's answer indicates, you may not technically "own" the software at all -- a so-called "End User License Agreement" ("EULA") may govern your use of it, and may prevent you from reselling it. The issues surrounding the interpretation of EULAs are numerous, and include the following:
1) Did you purchase the software directly from Rosetta Stone? If not, it's possible you aren't bound by the EULA.
2) If you are bound by the EULA, what exactly does it prevent you from doing? Very precise language has to be used in EULAs in order to stop licensees from "assigning" their rights to others. A sale on eBay might be a valid "assignment," depending on the EULA's language.
3) Even if the EULA is worded correctly, from Rosetta Stone's point of view, is it enforceable? Some courts have invalidated take-it-or-leave-it EULAs on the grounds of "unconscionability." (See http://en.wikipedia.org/wiki/Unconscionability.)
4) If the EULA is enforceable, what remedies does it grant to Rosetta Stone? Have you actually done anything to constitute a "material breach" of the EULA? Is there a "liquidated damages" clause or other provision by which RS might have arrived at its $800 figure?
As you can see, these questions are quite complicated, and almost certainly require the assistance of an IP lawyer. That assistance might, but will not necessarily, cost more than $800. (And with a lawyer's assistance, you might be able to resell the software and partly recoup your losses... though of course, there can never be such a guarantee.) At the very least, you should try to provide more information in your question, in order to assist other attorneys in answering it. Good luck!See question
My novel has a plot say... a band of sorcerers are summoned for help by a remote town infested by a mysterious creature (later discovered to be a werewolf). The story details are... During the course of inspection by the sorcerers, the Mayor's dau...
The previous answers are informative and helpful. I write only to draw your attention to a recent case that came to mind while reading your question, Frye v. YMCA Camp Kitaki (8th Cir. 2010.) One law firm posted an excellent summary of the case here: http://bit.ly/jUrUiM. The court's full opinion can be found here: http://caselaw.findlaw.com/us-8th-circuit/1535730.html. (I know some attorneys don't like to subject non-attorneys to full judicial opinions, but I find it to be a useful technique to show people how judges think/apply legal rules.)
In short, the Frye court found that once the unprotectable "scenes a faire" elements were removed from a play with a "medieval theme" and “hero-on-a-quest plot," there was no "substantial similarity" with the plaintiff's play that could give to liability for copyright infringement. HOWEVER, keep in mind that a) the substantial similarity analysis can be very fact-specific; and b) it took a lot of time and money for the defendant to prevail in the Frye case. While you might eventually win yours (perhaps even with an award of attorneys' fees, if you're lucky), do you really want to assume the risk of litigation by using a similar storyline?See question
lv, chanel, gucci, coach, prada
There are several potential sources of liability in situations like this: federal and state counterfeiting and trademark infringement, federal and state trademark dilution, federal copyright infringement, state unfair competition, state consumer protection statutes, city-specific ordinances, etc. (See http://nyti.ms/fFp0fs.) I walked through many of these causes of action in one of my blog posts, which addressed a lawsuit brought by Coach against Jo-Ann Fabrics: http://lawoffashion.com/blog/story/04/12/2011/48. The bottom line: there are *numerous* ways you could get in trouble for this -- including criminally, as the previous answer indicates.See question
it is also important to know is it allowed to place the photo of the product which is copied from the official website of such product? As well as is there any risk if by accident write incorrect specification? Thanks.
Agreed, the purpose of the use is of great importance here. If you are doing this in order to review the products, or to facilitate a critical discussion of them, the answer is "maybe." There was a fairly in-depth discussion on this issue a few days on Avvo, at this URL: http://bit.ly/jY84GM. If that discussion doesn't pertain to you, perhaps supplement your question with more information, in order to help attorneys who would like to answer it. Good luck!See question
And adding a disclaimer on our website, and all other advertisements be sufficient to protect myself from any laws? If not, what steps should I take in ensuring I dont get sued? How can I be an entertainer for kid parties and dress up like Hel...
The previous responses are informative and adequately convey that this is NOT something you should do. I am writing only to direct you to a case where a Barney lookalike marketed as "Duffy the Dragon" gave rise to potentially viable claims of trademark and copyright infringement: Lyons Partnership v. Morris Costumes (4th Cir. 2001) (http://law.justia.com/cases/federal/appellate-courts/F3/243/789/603765/). The Fourth Circuit, a federal appellate court, placed particular emphasis on the fact that children had reacted similarly to Barney and Duffy, and determined that THIS was the relevant audience for characters like Barney (and presumably Elmo) -- NOT adults, who presumably pay more attention to the actual names the characters bear.See question
I'm from Egypt. I'm planning to start my own Language teaching center. The point is that I have designed the course as follows: every class , the students will have to watch at least 30 minutes of a movie , or an animation in class. This is becau...
I agree with Attorney Wehneman's response and his comments. I would only add that if your Language Teaching Center is a for-profit institution (as seems likely), ruling out the Section 110 exemption and thus forcing you to rely on "fair use," it would be advisable to use less than 30 minutes of any particular film.
One of the factors in the fair use test is the "amount and substantiality of the portion used in relation to the copyrighted work as a whole." See http://bit.ly/kJnnU0. In situations where a person is engaging in some "transformative use" of the original material, the "portion used" factors often takes a backseat to the other factors in Section 107. However, your situation does not appear to be one of "transformative use." As such, the "portion used" factor may be important here, and thirty minutes of a 1h30m or even two-hour movie strikes me as a significant percentage. If you are set on this class format and are unable or unwilling to license the use of the films for your classes (which would be especially advisable if you have grand ambitions for your Language Center, like expanding beyond a single location), it might be prudent to use smaller pieces of more films -- say, five or ten minutes of each. From a non-legal perspective, this could also have educational benefits, as it would expose students to a greater variety of speakers and accents.See question
I wanted to know if it's legal to make your own release form? I'm a model and one time I did a runway show and never received photos, some jobs are paid, some are trade for photo, so I wanted to have photographers sign a release so I get my photos...
As the first response indicates, you are of course free to draft your own legal documents -- and people often do. But I second the notion that it is almost always worth the trouble to consult an attorney to draft a document that won't cost much and could save you significant money (not to mention heartache, embarrassment, etc.) in the long run.
For example, an attorney would likely tell you that a "release" is what THE PHOTOGRAPHER would prefer to call the document you sign. As the model, you are obviously less interested in "releasing" the photographer from any responsibility than you are in keeping him on the hook for improper uses of your image. As such, you might want to call the agreement "Modeling Contract," or something similar, and craft the document to impose legally enforceable conditions on the photographer, along with anyone he is working for and anyone to whom he transfers the photo(s). And this is just for starters! You can learn more about the "right of publicity" (the body of law that does the most to protect models and others from the unauthorized use of their images) here: http://lawoffashion.com/blog/story/12/30/2010/34. But there's simply no substitute for consulting an attorney in circumstances like these, especially where the cost upfront should be minimal.See question