Skip to main content
Joel Benjamin Rothman
Avvo
Pro

Joel Rothman’s Answers

14 total


  • Can Student Organizations use College names under Trademark fair use?

    I am a member of several student organizations at my college, all of which are officially chartered. The college has issued a new policy that prevents all student organizations from using the school's name or even the organization name in marketin...

    Joel’s Answer

    Whether you can or cannot use a trademark usually comes down to whether the use creates a "likelihood of confusion" between your use and the trademark owner's use. It can be a complicated issue, but try this example: There is a cereal called TOTAL made by General Mills. There is a toothpaste called TOTAL made by Colgate. One does not infringe the other because people are not confused. No one thinks that the TOTAL cereal is toothpaste, tastes like toothpaste, or is made by Colgate, is endorsed by Colgate, etc.

    Colleges make rules about who can use their names to avoid confusion for similar reasons. Colleges do not want people to think that they are endorsing a product with their name on it unless they really are. Colleges do not want people to think that they are the source of something with their name on or have approved something with their name on it unless that is true.

    But Colleges, like cereal companies, cannot stop all uses of their marks, because some uses will not cause confusion. Also, in some situations you may have no choice and have to use a trademark in order to describe something otherwise people will not know what it is without using the name.

    "Fair Use" is a concept from copyright that does not apply here because a college name is a trademark. There are concepts in trademark law that are similar to "fair use" however and those usually concern the situations where the name must be used to accurately describe whatever the product or service is that is being sold or advertised in order so that consumers understand it.

    Bottom line is that it depends upon how you will use the College mark. Devil is in the details. But, that said, it sounds like the College may have gone too far with the policy.

    See question 
  • Trademarking?

    We're just curious but we have a fairly successful and large community based group on Facebook that just keeps growing, however, we have noticed the last couple weeks other pages on Facebook popping up using our exact name and tarnishing our name....

    Joel’s Answer

    Does it bother anyone else that so many of the answers that other lawyers provide to these questions make it seem like the lawyers writing the answers are actually robots?

    What you describe violates Section 43(a) of the Lanham Act, 15 USC 1125, which says: Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
    (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person...shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

    The tarnishment you mention is one of the effects of trademark infringement that Section 43(a) was designed to address.

    You do not need a registered trademark to enforce this, but you do need to prove that you have a valid trademark and that you have priority in time.

    Best of luck. And watch out for the robots lurking in the shadows!

    You may want to start addressing the problem by

    See question 
  • Legality of partial computer files (copyright)

    Let's say Alice and Bob are given one computer file each by Eve, without being informed of the purpose of the files. They make these files available to the general public on the internet, believing that Eve has good intentions. Later on a...

    Joel’s Answer

    • Selected as best answer

    You raise some interesting questions. With all due respect to my learned colleagues, I think that their answers may have missed some important points.

    I disagree with Mr. Sack. The two pieces of the file are each copies and each an infringement of the copyright owner's exclusive rights to copy and distribute their work under 17 USC 106. Alice and Bob are committing infringement.

    What you describe might possibly be a violation of the DMCA's anti-circumvention prohibitions which have both criminal and civil penalties. See https://www.law.cornell.edu/uscode/text/17/1201 See also http://en.wikipedia.org/wiki/MDY_Industries,_LLC_v._Blizzard_Entertainment,_Inc.

    This is a highly complicated area of the law that requires a working knowledge of technology as well as copyright law. I agree that you should consult an attorney, but make sure that the one you consult understands what is going on with the technology as well as the law.

    See question 
  • Photo Copyright law

    I joined a real estate team as an independent contractor and the team leader paid for my headshots. I am no longer on the team and the team leader doesn't want me using my photo in my marketing because he paid for it. Even though it is only myself...

    Joel’s Answer

    The photographer owns the copyright unless your "team leader" obtained a written transfer of copyright (which is probably doubtful).

    Contact the photographer and get his permission.

    See question 
  • Does a mark featured on the Kickstarter crowdfunding site qualify as evidence that the mark is being used in commerce?

    I am considering getting a trademark for something that would only be featured on Kickstarter initially.

    Joel’s Answer

    My answer to your question is probably yes.

    See question 
  • I've discovered an overlooked example of copyright infringement from a well-known 1983 film.

    Would the equitable doctrine of laches bar a plaintiff from seeking civil redress beyond the customary 3-year statute if the infringed-upon source was so obscure that the publisher (it's a piece of twentieth-century concert music) would have had n...

    Joel’s Answer

    The US Supreme Court abolished laches last year in Petrella v. MGM, so there is no bar.

    If the film is distributed in the US then it would not matter that the publisher was French since the infringement would in violation of US law.

    See question 
  • Should I use LegalZoom.com or should I contact a lawyer in my area?

    I am currently ready to begin the process to obtain a design patent and I am not sure whether I should use LegalZoom.com or contact a local lawyer. I like the idea of having a real person with an office that I can talk with face to face to explain...

    Joel’s Answer

    Caveman lawyer say: legalzoom bad. No use Legalzoom. Legalzoom give no advice. Legalzoom give no direction. No waste money on Legalzoom.

    See question 
  • I have a business on Amazon.com. I am the manufacturer of a brand of shampoo and conditioner. I am the Registered brand owner.

    Recently a 3rd party seller obtained over 30 bottles of my shampoo and was selling it for $4.99 on Amazon. I sell my product for $14/bottle. He did not purchase these shampoos from me directly. I am the only manufacturer of this shampoo & I only s...

    Joel’s Answer

    Step #1 in this situation is always to purchase his product and see what comes in the mail so you can compare it to your product. Ask a friend to make the purchase and have it shipped to their house so it will not appear suspicious to the seller. When you receive it take photos to show how it is different from your authentic product. Now you have conclusive evidence of infringement you can present to Amazon or use in a lawsuit.

    Be prepared, however, because these are not easy cases. If the seller actually has authentic product he purchased from a legitimate source (such as a wholesale customer of yours, if you ever made such a sale) then you will need other strategies because the seller owns those items and you cannot stop him from selling them unless he is doing something else wrong like using your copyrighted product images without your permission.

    We have a similar but more involved case going against Amazon that you can read about here: http://www.sriplaw.com/amazon-sued-tm-infringement-leading-edge-dancing-water-speakers/

    Good luck.

    See question 
  • Can I copyright a design for jewelry?

    i own a shop on etsy selling bracelets and there is a shop that has been there forever selling copies of my products. She will make them so similar and sell for cheaper. Can I get copyright for some of my designs and sue her?

    Joel’s Answer

    If you have not realized already, Etsy is a haven for infringement! I have posted some links below from www.artlawjournal.com that describe the problem.

    The first step is to get the infringement taken down using the Etsy DMCA takedown procedures. More info on how to do DMCA takedowns is here: http://www.sriplaw.com/guide-dmca-takedowns/

    At the same time you should register a copyright in your work with the copyright office at www.copyright.gov. You also may want to consider obtaining design patent protection for new designs which you can do if the design has been on sale for less than 6 months. We have done all these things for jewelry designers like you.

    A lawsuit would be a last resort. If you are looking for representation on contingency from any attorney, you should familiarize yourself with what lawyers consider in taking cases on a contingency basis: http://www.sriplaw.com/6-factors-considered-copyright-infringement-contingency-litigation/

    Here are the links for ArtLawJournal.com:

    http://artlawjournal.com/etsy-store-stole-art-can/

    http://artlawjournal.com/etsy-and-copyright/

    http://artlawjournal.com/how-to-protect-your-work-from-etsys-copyright-infringers/

    Good luck!

    See question 
  • What is the best way to reimburse an employee for taxable expenses?

    Our Receptionist runs errands for the company and had to increase her personal insurance policy in order to be covered under our commercial policy. We agreed to pay the difference in cost for the increase in coverage. I want to reimburse her each ...

    Joel’s Answer

    Your question says "I want to reimburse her each pay period however, that reimbursement will be taxed." This assumes that you are classifying the reimbursement as wages. If you are including the reimbursement in her wages then yes it will be taxed. But it does not have to be that way.

    There is no reason why you need to include this reimbursement in the wage portion of her paycheck. Your payroll processing company can classify this amount as non-wages. Speak to the person who prepares the checks and ask them to classify it as reimbursement. Car allowances are typically handled this way.

    See question