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Michael P Matesky II
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Michael Matesky’s Answers

150 total


  • I didn't legally register my biz name, but have been using it since 2005. Can I protect it?

    I rec'd an "unauthorized use of trademark" letter on a business name I've been using in WA since 2005. According to letter, they applied for TM in 2007, granted 2009. Do I have a chance of "winning" based on my length of active usage, biz license...

    Michael’s Answer

    The short answer to your question is "Yes, you have a chance." Whether that is a miniscule chance or a pretty darn good chance depends on a detailed factual analysis that cannot (or at least should not) be conducted on public forum like Avvo.

    If you have used a trademark in a certain geographic area prior to the opposing party's use in that location and/or filing of a federal trademark application, you may have prior "common law" rights in that geographic scope.

    If your business name or trademark is important to you, it is worth it to consult with qualified trademark counsel in determining how to respond to this letter.

    Good luck!

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  • Do we need to pursue a copyright infringement lawsuit?

    A real estate firm wants to pay us for uncompensated work performed on behalf of their agent. The same agent willingly infringed upon our copyrighted material for several critical marketing days, even after acknowledging in writing that we were e...

    Michael’s Answer

    Ultimately, this is a question that only you can answer after receiving advise from a competent copyright dispute attorney, and an attorney can only properly advise you after a private consultation discussing all the pertinent facts.

    From your description, it sounds like statutory damages and attorney fees may be available. However, statutory damages can vary greatly, from $750 to $150,000 per infringed work. Moreover, an award of attorney fees is not guaranteed. Depending on how much the other side is offering you now, it might be more attractive to take the guaranteed money and avoid the hassle of a lawsuit. On the other hand, it is possible that you may obtain more by holding out and threatening (and perhaps ultimately filing) suit.

    I strongly recommend getting advice from qualified counsel on this matter.

    Good luck!

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  • Trademark violation when Print and Web collide?

    I was approached a few years back by a large newspaper organization that wanted to buy 4 of my web domains. These domains I own are part of a "real" LLC business that I am running online, and not simply domains that I am "squatting" on in hopes o...

    Michael’s Answer

    This sounds like a somewhat complex factual/legal history. I recommend you talk to a trademark attorney in private to get a reliable analysis of your options.

    Generally speaking, a party with federal trademark registrations has the upper hand in arguing that they own valid trademark rights. However, if you can provide solid evidence that you were using very similar marks for very similar goods/services *before* they began using their marks, you may have a strong case that you have prior common law trademark rights, and that their use constitutes infringement. That depends on a lot of factual determinations that should not be hashed out on Avvo, though.

    Moreover, in applying for these marks, the other side would have had to swear that they had the exclusive right to use the mark in question. If they did so knowing of your prior use/rights in the marks, that could make their registrations vulnerable to cancellation for fraud. That's not necessarily a slam dunk argument, but something to consider.

    I'd be happy to offer a free initial phone consultation to discuss options if you are interested.

    Good luck!

    Mike

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  • Do I have the rights to my photographs?

    I received photographs from a photographer & he told me that I do not have permission to upload them onto the internet or sell them. We did not sign any contract but I do have the photos. Am I still able to upload them & possibly sell them since n...

    Michael’s Answer

    The short answer is "probably not." In most cases, the photographer to takes pictures owns the copyright in the pictures, even if you are paying him/her to take the photos for you. Depending on the circumstances, there may be an "implied license" for you to make certain uses of the photos, but that's a case-by-case determination.

    If you really want to make certain uses of the photos, you might try talking to the photographer and seeing if he or she will grant permission. For example, the photographer might have no problem if you upload the photos to Facebook if you give credit to the photographer, or might be willing to license them for resale if you split any profits.

    Good luck!

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  • My ex husband's wife recently hacked into my personal email account and got hundreds of personal emails

    My ex husband's wife recently hacked into my personal email account and got hundreds of personal emails regarding my social security, income, properties, bank accounts as well as emails with them and our lawyers regarding our case. They gained acc...

    Michael’s Answer

    This sounds like a potential violation of the federal Wiretap Act and the federal Stored Communications Act, and potentially other statutes. The Wiretap Act and the Stored Communications Act have statutory damages provisions, so it may be worthwhile to file suit even if you can't show money damages. I would recommend seeking out a Florida-licensed attorney with experience handling such cases to better understand your options.

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  • Distributing Goverment Documents (Freely Available)

    I've been issued a cease and desist for deep linking to copyrighted material bypassing the normal login requirement (registration is free). My question is two parts; - Do they have a case or am I safe continuing on? - The alternative would ...

    Michael’s Answer

    Unfortunately, nobody can give you a reliable answer to your question without analyzing the facts surrounding these particular documents, and I don't recommend sharing those facts on a public forum like Avvo.

    For example, while you are correct that works created by federal employees within the scope of their employment are not protected by copyright, the U.S. government may also publish a number of works created by outside contractors. Moreover, the terms and conditions of the website for which you are bypassing the log-in requirements may bear on your potential liability.

    Unless you are willing to simply do what is asked in the letter you received, you should probably talk to an experienced copyright attorney to understand your options.

    Good luck!

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  • Do I still own the the rights to distribute software and or source code as I see fit?

    In 2011 I developed a program that gained in popularity. I was contracted late last year to develop the program further by integrating it with a third party website to submit data that it collects. Terms of the contract stated that I would be paid...

    Michael’s Answer

    Unfortunately, nobody is going to be able to give you a reliable answer without actually reviewing the contract in its entirely, along with the facts surrounding your original development of the software and subsequent negotiation of the follow-up contract.

    If it's important to you, get a knowledgeable attorney to review the contract and give you reliable legal advice.

    Good luck!

    Mike

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  • Can someone use a trademarked name if they put a space between the two words?

    For example, Foxyhound is the trademarked name. Can someone use Foxy Hound as a business name or is this covered under the trademarked Foxyhound name?

    Michael’s Answer

    The standard for infringement of a trademark is "likelihood of confusion." In other words, if you are using a mark in a manner likely to cause confusion in relation to a preexisting mark, then you are infringing that mark.

    This is determined by looking at lots of factors, and the similarity of the marks is one of the most important factors. The marks do not need to be identical to be infringing. However, even identical marks might not be infringing if other factors, such as the similarity of the goods/services, make confusion unmlikely.

    For example, if someone sells clothing under the FOXYHOUND mark and you sell clothing under the FOXY HOUND mark, that will likely cause confusion, and would be infringement. But if someone sells clothing under the FOXYHOUND mark and you sell aerospace engineering services under the FOXY HOUND mark, that would probably not be infringing.

    The only way to get a realistic understanding of whether use of a particular mark is likely to infringe is to discuss all the details with a qualified trademark attorney.

    Good luck!

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  • Would it be considered copyright infringement if somebody uses a business/domain name I registered first with one letter changed

    if i register a domain first and someone uses the same name and only changes one letter for example: DOCTOR.COM vs DOCTORS.COM

    Michael’s Answer

    Unfortunately, the only true answer any of us can give is "maybe."

    It might be considered trademark infringement, and it might be considered a violation of the Uniform Domain Name Dispute Resolution Policy (UDRP). But this isn't a question that can be answered in the abstract with hypothetical examples. A lot depends on the actual details.

    If it's a matter of importance to you, I recommend speaking with a qualified trademark attorney with domain name experience. I'd be happy to offer a brief initial phone consultation if you are interested.

    Good luck!

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  • If I own the trademark to a band name, can I legally...

    ...remove a member from the website and have a cease and desist letter sent to them to have them stop using the name in public?

    Michael’s Answer

    Well, you can stop them from using it in certain ways, but you can't stop them from using it to accurately describe that they were a former member of the band.

    Of course, this assumes you are the rightful owner of the trademark, but that can be a tricky question in some cases.

    Also, this assumes you have the right to kick them out of the band. A written band agreement can make this a much easier issue to deal with.

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