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Frank A. Natoli
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Frank Natoli’s Answers

7,106 total


  • Using Fairy Tales for creating a Video Game, Legal ?

    Good morning ! I'm a french video game designer, currently working on an independant project of mine with friends, to be hopefully crowdfunded. We want to create an horror game inspired by Fairy Tales, something creepy & eerie. Example Snow Wh...

    Frank’s Answer

    Good question. Just a quick note on copyright law, which as you know can be enforced in many jurisdictions around the globe through treaty although nation states might vary on the substantive law.

    In the US, any creative expression will be covered by copyright law automatically. Then you register the work with the US Copyright Office so to perfect your bundle of federal rights like the right to access the courts, the right to ask for statutory damages (sometimes the only damages worth bringing the case over), the right to attorney fees, etc.

    In the fairy tale regime, most of the works like Snow White are way too old to be covered under copyright law. As a general rule of thumb, if they were first published prior to 1923 it is very likely that they are now in the public domain and are free to use. Snow White, of course, falls into this camp as this story dates back to around 1812. Now, many different authors, creators and studios such as Disney have taken these works and have contributed their own creative expression to them. These newer interpretations do possess their own copyright protectable interests and you would need to make sure that you are not copying or creating derivative works based on those creatives.

    I think in general, what you suggest should not pose any problem, but you have to approach it carefully and make sure you get some legal attention before you pull any triggers because there is a lot at stake should you overlook something. This could be disastrous regards to any contracts you may have entered into, it could provoke a very expensive lawsuit, you could be ordered to pay statutory damages, etc.

    It is also very important to be aware of the trademark aspects as well. So for example, you cannot present a false association, sponsorship, endorsement or other affiliation with any trademark owner like Disney for example without the threat of legal action.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Is it legal to photoshop pictures of famous people?

    I have a new business that has a comedic aspect to it. We will be selling products (with original art) soon but starting with building a social media presence.

    Frank’s Answer

    Well, to answer your question directly, no, it is not illegal to merely photoshop the pi of a celeb. What is unlawful is using any name, image or likeness of a famous person (or not so famous in many cases) to sell or promote a service or product. This is called a violation of publicity and privacy rights and about a dozen states even protect this right for deceased persons ranging from 10-100 years after they pass.

    If you are taking this seriously, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can you operate business under a brand that is a non-registered dba, if that brand is included in your operating agreement.

    I want to try to be extra detailed and clear so this question doesn't get confused. I might do the opposite :) I own a Rhode Island LLC with several registered dba's, or fictitious names. It also operates email and business and enters contracts un...

    Frank’s Answer

    My first suggestion here is to just stop everything and seek a proper legal consult so all the details can be clearly understood and a best course of action can be formulated. There is no "one-way" to do these things but I suspect there might be some confusion here both on the IP side as well as the business organization side. For example, operating many varying channels of business under one liability shield can expose you to cross-liability big time.

    At this point you really need to have a proper clearance conducted on the standard character text names you are employing as trademarks (the logo is usually much less of a potential problem) and this is not something you are going to want to do yourself. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the RI secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    If you have never actually properly cleared your trademark, this would be your best next step because for all you know there could be someone located elsewhere but doing business in your area or who has a federal registration and prior rights. Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can I trademark "XYZ Software" or would that be an infringement of the existing TM for "XYZ medical" (medical software company)?

    I'd like information about how similar a company can be to an existing Trademark. For example my company makes accounting software and I want to trademark the name "XYZ software". There is a live trademark for "XYZ medical", a company which makes ...

    Frank’s Answer

    The only way you can get any actionable advice is to consult with TM counsel before you pull any triggers here. You can never receive trademark clearance advice over a Q&A platform and especially not in the hypothetical. This may not be a problem if the goods and services are very different (e.g., Delta Airlines vs Delta faucets). But as they are more closely related the specter of a problem increases.

    At this point you really need to have a proper clearance conducted and this is not something you are going to want to do yourself. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the NY secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    If you have never actually properly cleared your trademark, this would be your best next step because for all you know there could be someone located elsewhere but doing business in your area or who has a federal registration and prior rights. Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • How to copyright beats logo and lyrics

    Wanting to copyright beats and lyrics that I have made as well as start up a record label... Just need insight and advice on how to go about trademarking, copyrighting, etc..

    Frank’s Answer

    There is obviously a lot to consider and all we can offer here are general insights of course.

    Any creative expression will be covered by copyright law automatically. Then you register the work with the US Copyright Office so to perfect your bundle of federal rights like the right to access the courts, the right to ask for statutory damages (sometimes the only damages worth bringing the case over), the right to attorney fees, etc.

    At this point you really need to have a proper clearance conducted on the standard character text name (the logo is usually much less of a potential problem) and this is not something you are going to want to do yourself. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the WI secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.

    If you have never actually properly cleared your trademark, this would be your best next step because for all you know there could be someone located elsewhere but doing business in your area or who has a federal registration and prior rights. Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.

    http://www.entrepreneur.com/article/220224

    http://www.avvo.com/legal-guides/ugc/the-import...

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can I write Paris in my company logo (like the Hermes (Paris) logo) even though the company is based in Sweden?

    I'm a small business owner based in Stockholm, Sweden. Could I use the name of a city I dont live in as my logotype? For instance the company is named Céline, the logo reads: Est. 2016 - Céline - Paris, France. Would appreciate any help on thi...

    Frank’s Answer

    Your question has a couple parts to it really. The big issue at first blush is that it appears you would be infringing on the Celine mark as this would of course be false association unless Celine means something else in this context I am not aware. So while this is stating the obvious you need to make sure you properly clear your trademarks before investing in them.

    Now there is a difference as between a geographically mis-descriptive marks and presenting a false designation of goods (see: 15 U.S. Code § 1125 - False designations of origin). The former means to suggest that your product comes from a certain area because reasonable consumers associate that area with the product (Georgia peaches for example). The latter, while similar but not specific to trademark use, misleads the public into believing that they are buying say perfume made in France when in fact it might be made in Jersey.

    Lastly, your location tag places you in CA, but you state that you are in Sweden. If you are in the EU then I suggest you consult with legal counsel there as well to ensure you understand that legal landscape which is likely more relevant than the US jurisdiction.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Valid copyright notice using different name?

    I registered a copyright using my personal name. For the notice of copyright I used my company name as claimant. The names are completely different. Is the notice valid for statutory damages?

    Frank’s Answer

    Using a notice is a very good practice but it is not required, so I highly doubt that what you are describing here will matter in any meaningful way.

    If you need further clarification, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Is there anything I can do due to him essentially stealing my work to protect my work or if there is any way to copyright it?

    I am a doctoral student and have been working on a project for about a year. After I showed the results to my advisor, he told me that I should give my project to one of his favorites so that student could have a good paper published and my name w...

    Frank’s Answer

    This all depends very much on the terms you agreed to when you entered the program and the degree of control the institution has over any material developed while you are attending. But assuming that nothing prohibits your right to ownership over what you created assuredly you have rights to it.

    As noted, I would first take it up with the administration and only then if you honestly believe you are getting a run-around would I hire counsel to look into it for you and assuming that is worth your time and investment.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Is this a copyright infringement on the original artist that could cause trouble? And how would I avoid any infringement?

    I rewrote the lyrics to a popular song by a famous artist. I want to record it on my phone and post it online to share.

    Frank’s Answer

    Of course it is possible that what you describe here will be considered a derivative work and thus infringing, but there is no way for any of us to know without all the details.

    Parody is a very misunderstood area and usually requires that you comment on or poke fun of the work, the creator of the work or the message of the work (think about anything Weird Al has done). Merely taking humorous lyrics, for example, and replacing them in a popular song might be funny but that doesn't make it a parody.

    Further, fair use, of which parody is a subset, is a legal defense and the copyright holder is always free to drag you into court and force you to prove out your use as fair. So if you plan on relying on that defense you better be right and that rightness better be obvious.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question 
  • Can course curriculum be copywritten?

    Is it illegal to copy a course's curriculum and monetize it? This is not including presentations or specific written or graphic

    Frank’s Answer

    Yes it can be protected presumably and whether that infringes depends entirely on what has been copied. Plain ole facts are not protectable like recipes, but the recipe book is protectable. This is because the book has an order, layout, anecdotal content, etc. that can all be considered creative expression.

    I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    See question