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Frank A. Natoli
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Frank Natoli’s Answers

7,897 total


  • Is it possible to legally protect a marketing strategy with the sole purpose of generating user traffic and site usage?

    My colleagues and I are looking to start an online business and came up with an excellent idea (marketing strategy) to generate traffic and usage and viewership? Our intentions are to protect this concept and prevent other competitors from capital...

    Frank’s Answer

    There are many ways to protect IP formally, but general business concepts are not protectable.

    It makes no sense to try and take stabs at the wind here. I suggest that you consult with a lawyer in private and discuss your objectives and best strategy 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 
  • Do I have any legal rights in this situation?

    Hello, I have artwork registered with the copyright office. Recently, this artwork was used on a prominent TV show (displayed on a characters shirt). I am just wondering what rights, if any, I would have in a situation like this. Thank you.

    Frank’s Answer

    At a glance, it looks like you received some very good responses. This happens all the time and just because your work appears incidentally in the shot does not mean you have a cause of action. If however it was more the focal point of the work or scene then perhaps a line was crossed. This is a more nuanced analysis of course.

    Did you authorize the use of your work on the shirt? If not, then that sounds like actionable infringement to me.

    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 I use a famous (unknown source) as a tagline for my business?

    I am wondering if I can use famous quotes with unknown sources like "what gets measured get managed" or "what gets measured get done" as a tagline for my business. If yes, do I have to include the quotation mark?

    Frank’s Answer

    Using quotes will generally be permitted. This is largely because using what amounts to a very small portion of a much larger body of work will not be considered copyright infringement and short phrases or small groups of words are not protected under copyright law. Now in some cases, especially where the work from which the quote was pulled is widely recognizable (the money part; like the chorus of a very famous song for example) it may be a copyright infringement issue.

    That said, some phrases are being employed as trademarks (slogans or taglines) and you need to be careful that whatever you use will not be considered infringing. In most cases, this will probably be obvious but certainly not in all.

    Further, using the names and likenesses of authors can easily become a publicity and privacy rights issue, especially if it seems that you are playing off of their celebrity and name recognition.

    If you intend to use a famous quote to promote your business, you need to be very careful that you are not associating yourself with someone else in violation of their right to publicity and privacy. I would talk it over with IP counsel before making any commitments.

    Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. 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 VA 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.

    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 on all the text names 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 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 legally include a quote with the name of the source in my product (student planner)?

    I want to include inspiring quotes in my product. Is that illegal? What if the source is unknown? Do I have to say "-unknown"

    Frank’s Answer

    Using quotes will generally be permitted. This is largely because using what amounts to a very small portion of a much larger body of work will not be considered copyright infringement and short phrases or small groups of words are not protected under copyright law. Now in some cases, especially where the work from which the quote was pulled is widely recognizable (the money part; like the chorus of a very famous song for example) it may be a copyright infringement issue.

    That said, some phrases are being employed as trademarks (slogans or taglines) and you need to be careful that whatever you use will not be considered infringing. In most cases, this will probably be obvious but certainly not in all.

    Further, using the names and likenesses of authors can easily become a publicity and privacy rights issue, especially if it seems that you are playing off of their celebrity and name recognition.

    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 someone provide a specific answer to my situation regarding fair use in a podcast?

    I have a podcast. I would like to use sound bites from either film, tv, and radio shows as an introduction to different segments. I'd also, on occasion, like to use snippets of songs to close out different episodes. Kind of like what HBO does to c...

    Frank’s Answer

    The specific answer is no you can't use another's sound recording in your podcast without permission which comes in the form of a license.

    In some cases, you might be operating in the realm of fair use. For example, you are reviewing and critiquing material and use a very small segment to help illustrate your critique. Like a film critic using a 20 second clip of a 90 minute movie.

    Further, fair use 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.

    Before you jump in, 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 
  • How do stop a former employer from using my copyrighted material (or make them pay me to use it)?

    I worked in a clinical "lab"; I put lab in quotes because the place is a joke, designed solely to milk insurance companies for reimbursements. I re-designed all of their test reports with the help of a freelancer in Poland who I paid through Upwor...

    Frank’s Answer

    If in fact you were a bona fide W2 employee then I'm not so sure why you think you would have any rights to the IP under US law? By operation of law, the copyright is transferred to your employer assuming this was within the scope of your employment. The fact that you never had a job description works against you not with you in this regard. If that is a big point of contention here then that analysis will need to be done. But having said that, it would be odd for an actual employee to go out and spend his own dime on something like this if they were an employee, so it makes me think you were operating independently.

    The default under US Copyright law is that if you are an independent and not working under a properly drafted work-for-hire/assignment agreement then all the IP rights remain with the creator. The employer, however, does receive an implied license by operation of law to use whatever was prepared for all its intended purposes and this license cannot be frustrated by you, such as licensing the same to a competitor or taking the material and competing directly with them, etc.

    So it could very well be the case that even though you own the underlying IP rights they have no value practically speaking and in other cases it may still prove commercially valuable. For example, lets say Bono from U2 calls your client because he is so impressed with the logo you created he wants to license it to use on the cover of his new album. Your client, without owning the IP rights, cannot enter into that transaction without your permission, but you however could because at least presumably such an agreement would not compete with or frustrate your client's use of the same.

    Do yourself a big favor assuming you take your business seriously and are not just fooling around and have a proper master service agreement prepared to use for your clients. It can end up saving you thousands of dollars and some major headaches moving forward.

    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 I use a business name that includes within it the name of another business if we sell different products?

    For instance: an out of state pottery artisan without a registered trademark operates under the name XYZ to locally produce handcrafted goods. I want to use the name XYZ Supply Co. and sell apparel to pottery artisans online. Clearly we are in dif...

    Frank’s Answer

    Many trademarks share the same or very similar terms. For example, we are not confused as between Delta Airlines and Delta faucets. But as the goods and services become more closely related the specter of infringement increases. I could not name my new tech start-up "Boogle" and get away with it. The fact that you are operating in a different class does not mean there could not beany market confusion however and this is part of the analysis you need to get from your own TM lawyer.

    Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. 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 MN 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.

    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 on all the text names 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 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 
  • What are the requirements or liabilities related to copyright and customer provided images for printing.

    We are new laser engraving company and are looking for some clarification in relation to images provided by a customer. If we are approached by a customer and they want an image printed onto a product what are our obligations to make sure that we ...

    Frank’s Answer

    There is an "innocent printer" defense under trademark law that will mitigate your liability to merely profits on that transaction provided you did know or should have known that the material was infringing. In most cases, this will probably be obvious like someone walking in wanting a Ravens banner to hang in their car dealership. You should have a general albeit brief agreement made that just offers you a clear indemnification, defense and hold harmless in the event you are dragged into a suit under some secondary liability contributory infringement action, which happens but is quite rare.

    I suggest that you consult with an IP lawyer in private and discuss your business and 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 
  • I have a design that i want to trademark for a t shirt . the design is similar to the I love NY t shirt design, however i have

    I have a design that i want to trademark for a t shirt. the design is similar to the I love NY t shirt design, however i have redesign the heart symbol by putting the word "Your" inside of the heart. i heart symbol with the word YOUR inside of t...

    Frank’s Answer

    Yes, of course that can be an issue from a trademark analysis and perhaps even under a copyright analysis (although that might be much more attenuated). I will offer some general remarks about trademark below and encourage you to reach out to IP counsel in private to discuss all this over before you jump in.

    Before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. 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 TX 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.

    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 on all the text names 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 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 register a trademark with the USPTO using my pen name or must I use my legal name?

    I am known professionally by a pseudonym. The pseudonym is not registered anywhere. It's just a name that I made up. More people know me by the pseudonym than by my legal name.

    Frank’s Answer

    I would not recommend that. You would be better off creating an entity and filing the mark under the entity name if the concern was a record of your ownership of the mark.

    In general, before you invest in any trademark make sure you get some legal guidance upfront. It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. 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 DC 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.

    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 on all the text names 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 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