Skip to main content
William F Lang IV

William Lang’s Answers

408 total

  • Can I copyright inherited (unpublished, personal) photos authored by late Aunt who bequeathed all of her personal photos to me?

    My brother has threatened to take legal action against my daughter for posting photos of our late parents and late brother. The "original" photos are hard copies and I gave my daughter permission to digitize these photos. She has all the original ...

    William’s Answer

    • Selected as best answer

    Ownership of the copyright originated with the author of the photos, not the person who possessed the physical copies. Copyright is personal property, and passes either by will or the intestacy statutes like other personal property. In order to establish ownership of the copyright, the author of the photos would need to be definitively identified, and then the chain of title established. Copyright can be registered by specifying the author, the claimant, and the fact that the copyright was inherited.

    Even if copyright exists, a defense of fair use would likely prevail, since the photos are being digitized for personal, family, noncommercial reasons and to enhance/repair them rather than to distribute them.

    As a practical matter, unless an application for registration was filed before your daughter digitized the photos, a suit would be unworthwhile, because statutory damages and attorney fees would be unavailable. Actual damages and an injunction would still be available (assuming that the fair use defense could be overcome), but actual damages must be proven and would be very difficult to prove in this case without some significant additional facts.

    You and your daughter are likely safe.

    See question 
  • Do I need permission to use a real place in my book?

    I am writing book that features two real medical facilities: Boston Medical Center and Spaulding Rehabilitation Center. Both the names and the details of the facilities appear in the book. I would like to know if I should contact these places for...

    William’s Answer

    It depends. If you are merely mentioning the place in a fictional story, that should be fine. If you are mentioning the place prominently in a medical book in a manner that might imply affiliation or endorsement, that would be trademark infringement. If you are portraying either place in a negative light, that could also be problematic. I would suggest having your use reviewed by an attorney.

    See question 
  • Can I trademark my "marketplace" website?

    Hi, thanks for considering my question. Firstly, I mean no offense by mentioning I’ve successfully registered 4 trademarks in the past with no legal assistance, and intended the same with this matter. However I now see it’s not so straightforward,...

    William’s Answer

    You can certainly protect the name of your website as long as the name you pick does not create a likelihood of confusion with someone else's name, and as long as the name is distinctive of your goods. Distinctiveness can be inherent (in the case of suggestive or arbitrary marks) or acquired (in the case of descriptive marks that have become known as a source of goods or services through continuous, substantially exclusive use). The trademark protects the name only, not the concept, and not any software you may have prepared to make the site work better.

    The portions of the website containing original content that you create can - and should - be protected through copyright registration. Make sure you have a work made for hire agreement with your web designer so that you will own the copyright.

    From what you describe, it does not appear that there is anything different about your market that might be patentable subject matter, but if you are doing anything unique to make the site function better than your competition, you might consider having it evaluated to determine whether it is sufficiently novel and nonobvious for patent protection, as well as whether it falls within the scope of patentable software.

    since it appears that some content (sales listings) will be user generated, you should have a procedure for dealing with intellectual property infringement. Provide a contact point for notifications regarding counterfeit or otherwise infringing goods. List the contact information with the Copyright Office contact database so that you can take advantage of the DMCA safe harbor provisions.

    See question 
  • Is my jewelry design illegal?

    I am having a certain jewelry design produced by a manufacturer and just came across a business in the same city who has a very similar design and claims that their product is copyrighted. The crystals used are the same but vary in size and shape ...

    William’s Answer

    It is difficult to add to the excellent advice you have received so far, but a few points are worth making:

    1) Obtaining copyright registration for a jewelry design is difficult. I have had more success with design patent than for copyright, although I always encourage considering both. Do they actually have a registration or just an application? (Not having a registration does not mean they do not have copyright, but it means that their remedies are limited.)

    2) Copyright infringement requires actual copying. Actual copying is shown by access + substantial similarity. Keep in mind that even if you did not actually copy, you could still have to defend your actions in court if the other party believes they have a case that you did.

    3) Substantial similarity is determined by comparing the copyrightable features of the allegedly infringed design to your design. The fact that the ring is sized verses adjustable is irrelevant - that is functional. The standard, unavoidable features of the ring are excluded from the analysis. Determining the copyrighted features will likely require both examination of the design as well as examination of the records of the Copyright Office.

    3) When was your jewelry design created? When was theirs created? When and how did you become aware of theirs> To what extent was the manufacturer involved in the design? If you created yours first, and/or can show that you created yours before becoming aware of theirs, that is helpful. On the other hand, if the overseas manufacturer had a hand in creating the design, it may well be that the manufacturer is also making their design, in which case you could have a serious problem.

    I echo the advice to review the issues with a copyright attorney before this becomes a full blown dispute.

    See question 
  • I have a replacement part for a unit designed and patented by another company. Should I be looking at an improvement patent?

    A company has designed a unit comprised of multiple moving parts, one of which has failed and has a long record of failing. The entire unit is hidden and not accessible without tools but has a critical role in securing two surfaces together. I ha...

    William’s Answer

    Others have provided good advice on the two issues that must be considered: patentability and infringement. These are completely separate issues.

    Regarding infringement, the purchaser of a patented product is permitted to repair the product, but not to the extent of creating a new copy of the patented product. The nature of your part would need to be evaluated with respect to the entire device to determine whether it is a repair or effectively results in making a replacement product. This analysis should be performed before you sell or install your replacement part.

    As others noted, your device is patentable if it is novel (no one has done it before) and nonobvious (not obvious to one skilled in the art in light of what has been done before). A patent does not permit you to make your product, or negate infringement of someone else's patent. Rather, a patent permits you to exclude others.

    I encourage you to have your device evaluated by a patent attorney to determine the answers to both questions.

    See question 
  • Trademark applicaton

    want to trademark a business name for off road clothing, set up social media. then day job got busy and i stepped back for 6 mo. got back in it to find someone had started using the name for their www. they are a bicycle club i am an off road clot...

    William’s Answer

    Answering this question requires a look at whether the bicycle club is actually using the name as a trademark, as well as the relatedness of the goods and services, and the markets in which the goods or services are provided.

    In general, use as a domain name is not trademark use. However, if they are using the name beyond use as a domain name, for example, in a large font across the top of their web page, in connection with a club that actually exists and accepts members, then that is trademark use. If it is just a domain name, with no active website, that would not concern me, although they could still be using the name in a trademark sense in other ways.

    A bicycle club would likely be unrelated to off road clothing (unless the bicycle club also sells clothing, which it might). A closer look would be helpful, but it does not appear from the question that the goods and services are related.

    Even if they are using the name as a trademark, and even if the goods and services are related, then it may still be possible for you to use the name. If no one has sought federal registration, and you and they are in completely different regions of the country, then each of you may develop common law rights in your own regions. Trademark rights arise from use of the mark in connection with goods or services. Federal registration provides a presumption of the right to exclusive use throughout the country, but is inferior to pre-existing common law rights based on actual use in the regions where the common law marks had been used up to the date on which the application for registration was filed. In such a case, if they are in a different state, then filing an application for state trademark registration may be advisable.

    I would encourage you to obtain a full trademark clearance search before beginning to use your mark. Others may well have registrations and/or common law rights that have not yet been identified and evaluated. Because the standard is likelihood of confusion, variations, misspellings, and fragments of the name are searched - searching only for an exact match is insufficient. With such a search and clearance opinion conducted, you can invest in developing your trademark with confidence.

    See question 
  • Hello. My question is how much does it cost the search if a certain product is patented? Do you provide any confirmation about r

    I made some basic research on Google patent page but I am not sure if a certain product is patented or not.

    William’s Answer

    It depends on the technology area, as well as the type of search you need. As a general rule, a more complicated invention means more time will be required and greater search cost.

    Are you interested because you want to know if patent protection is available, or because you want to know if someone else's patent will be infringed? It is entirely possible for patent protection to be available, yet your invention infringes someone else's patent. Similarly, it is entirely possible for no patent protection to be available, but there is no danger of infringement. Patentability and infringement are separate inquiries.

    A patentability search is really not designed to produce a simple yes or no answer about whether a product is patented. Rather, it is intended to identify the closest prior art, and to identify the features of the invention that are, and are not, disclosed by the prior art. Ultimately, the relevant question is "Can claims be drafted that do not read on the known prior art, but which are broad enough so that avoiding infringement will require giving up some advantage that you have?" If so, then preparing a patent application is advisable.

    A patentability search will focus on all patents related to a given technology area, regardless of age or enforceable status. However, the search is typically performed with cost balancing and does not guarantee that all references are found.

    A freedom to operate search is much more extensive and expensive, focusing on all relevant, presently enforceable patents. Many more patents will be provided in the search results, since the goal is to leave no stone unturned. The claims of all of these patents must be compared to your invention to determine whether a risk of infringement exists with respect to any of them. Not only is more searching time required, but more analysis time is required as well.

    If you know the maker of a specific product and want to know if your proposed product infringes their intellectual property, then a much more narrowly tailored, less expensive analysis can be performed.

    I encourage you to speak with a patent attorney about your product and your commercialization goals. With more details about what is needed, a better cost estimate can be provided.

    See question 
  • If a trademark consists of a product name and a graphic and nothing is disclaimed can someone else use the same word portion?

    Here is the situation: if I have a composite mark consisting of graphics and a product name and no portion is disclaimed can someone else use the same word portion as part of their mark on the same or similar goods? Or is anything not disclaimed p...

    William’s Answer

    Unfortunately the question does not specify whether the trademark rights are based on registration or common law. Registration provides a presumption of the right to use the mark throughout the entire country, subject to common law rights that existed at the time the application for registration was filed. Common law rights are based on use within a specific geographic area, and enforcement of common law rights requires proof that you have established a reputation in the geograhpic region in question. State registration provides a presumption of the right to use a mark throughout the entire state, but is inferior to pre-existing common law rights and even subsequent federal registrations (although the holder of the earlier state registration would also have common law rights that must be considered).

    Likelihood of confusion is determined based on an eight factor test, but the two most important factors are the similarity of the names (appearance, sound, meaning, and commercial impression) and the relatedness of the goods or services (would consumers believe that goods or services of one type would come from a source of goods or services of the other type?).

    Getting more directly to your question, the word portion of a mark is given more weight than the design portions, although the design portions can make a difference in some cases. So, in most (almost all) cases, if trademark rights are established in the relevant geographic area, then use of the same name, without the design, would be trademark infringement. In fact, in the case of registered marks, trying to register a confusingly similar word using a completely different design (not even the absence of a design, but two completely different designs present) will almost always fail.

    When a trademark consists of a word with a design, I typically recommend registration of the word alone as a standard character mark and the work with the design as a stylized design. In some cases, registration of the design alone is also beneficial, for example, if the design alone will be used to identify a smart phone app.

    See question 
  • Developed an educational game which uses custom playing cards and rules based off the cards. Is it patentable?

    Educational game which uses specially designed cards and rules/instructions. If it is patentable, what aspects of the game would be covered? Is someone allowed to redesigned the cards and use the same set of instructions/rules? Or can they just mo...

    William’s Answer

    I agree with the other answers.

    There are possibly patentable features of the game, which may be best protected by utility or design patent, depending on whether those features are structural, a method, or ornamental. A utility patent protects unique structures and methods, while a design patent protects unique appearances. A patentability search should be performed before any patent applications are prepared and filed in order to identify the closest prior art and compare it to your game. In my experience, close prior art is quite common in the field of games, so you want this information before deciding to proceed.

    The instructions, game cards, and game board could likely be protected by copyright. Keep in mind that copyright protects the expression of an idea, not the idea itself. For example, copyright protection for the instructions would not stop someone else from providing a similar set of instructions that are expressed in a different way.

    The name of the game, as well as the name of any company you may wish to form to market the game, should be treated as trademarks. A clearance search should be performed before they are selected, and federal registration should be sought early if the search results are favorable. Trademark protects the name only, not other aspects of the game. Try to pick names that are not descriptive of aspects of the game. Suggestive names, which require a mental pause before realizing what is suggested, are a better choice and will be easier to protect as trademarks.

    See question 
  • I have a design for sports wear clothing. I am working with someone to create the prototype. Do I need a patent for my design?

    Do I need a patent for my design?

    William’s Answer

    Without knowing details of the clothing design that it is best not to reveal in public, it is impossible to say whether you need a patent for your design.

    Is the clothing directed towards performing a function better than present alternatives? If so, then it may be possible that a utility patent application, claiming the structural features of the clothing, is appropriate. Does the clothing have a unique appearance? Then perhaps a design patent may be appropriate.

    In either case, the protected features of the clothing must be novel (no one has done them before) and nonobvious (not obvious to one skilled in the art based on what has been done before).

    Whether the design is novel and nonobvious is best determined in a private conversation with a patent attorney. Most likely, a patentability search will be recommended so that the closest prior art can be identified, and your clothing compared to the prior art.

    You will also want the person you are working with to sign a nondisclosure agreement, as well as an agreement that you are to own the intellectual property, that their compensation for creating the prototype is whatever price you agreed, and that they will execute any patent declarations or assignments necessary to give effect to your ownership and ability to protect the design in the event that they make inventive contribution to the design. These agreements are much easier to obtain early in the process than after the other party believes they have invented something and wants to seek their own protection.

    See question