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Frank A. Natoli
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Frank Natoli’s Answers

7,882 total


  • Is this PSA fair use or going too far?

    The California DOT District 8 posted a tweet https://twitter.com/Caltrans8/status/752629877057085440 which has copyrighted and trademarked Pokemon characters in it. When I asked whether they had permission, I referenced Nintendo and Pokemon's Twi...

    Frank’s Answer

    Yes, that I clearly fair use because they are specifically commenting on the Pokémon enterprise for the purpose of social / public safety commentary. Their use of the copyright protected characters is not an infringement in this context. The single most important aspect or element in the fair use analysis will always be the fourth factor which is "the effect of the use upon the potential market for or value of the copyrighted work." Basically, this speaks to whether the use could have affected the bottom line of the copyright owner. As is pretty obvious, the CA DOT's use would do nothing regards to hurting Nintendo's revenue. Regards to a trademark perspective, there is no market confusion here as it is quite clear who the source of that PSA is and what it's purpose is for.

    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 
  • Can I use college names on hand made products but not the logo without breaking copyright laws?

    I am starting a business where I engrave custom items for clients and was wondering if I use the college name but not there logo on my products if its infringement. Also if it is infringement how can I get a license easily or is there no easy way?

    Frank’s Answer

    You run the very real risk of being held accountable for trademark infringement under a secondary liability theory for contributory infringement. That is, you are a commercial enterprise engaged in assisting others to infringe for profit. There was a case not that long ago where a shoe repair/service provider was offering a service painting the soles of shoes in the China Red color made famous by designer Christian Louboutin. who acquired a trademark (trade dress) for this color on the soles of ladies shoes. While I agree that this trademark right is a bit of a stretch it did not matter and they were able to sue the shoe shop. I'm not sure how that particular case worked out but no doubt it cost that shop plenty.

    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 
  • We are a non profit ministry headquartered in Tucson Arizona and want to use the name the eagle's nest.

    I went to the Arizona Corporation Commission, and could not find anybody using just the name the Eagle's Nest. It appears that they use the Eagles Nest in combination with other words. We are going to be doing a Facebook Live program which is like...

    Frank’s Answer

    You simply can't receive any concrete trademark clearance advice over a free and quite public Q&A platform, but you are wise to recognize that you will need to have a proper clearance done.

    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 AZ 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

    See question 
  • Can I register a trademark for clothing when I add my label to clothing I buy from China?

    I sell clothing at a boutique. I buy the clothing from China and it has the label of the Chinese company sewn in. I add a label with my store's logo to each item. Can I register a trademark for my logo for clothing?

    Frank’s Answer

    Most likely yes, but only because the vast majority of Chinese wholesalers expect that you will rebrand their product and even though they have trademarks affixed they are usually not going to resist a "white-label" arrangement. But you should always get clarification to cover yourself even if it is just in an email from someone with authority there stating that they have no problem with that. Otherwise, technically this is considered "reverse passing-off" and it is a form of trademark infringement. If your transactions are much more substantial you should have legal counsel prepare a proper written agreement.

    Of course you can seek trademark registration for your own brand and logo and I would be more focused on the standard character text mark upfront (the word McDonald's as opposed to the golden arches).

    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 GA 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 
  • Does this artwork violate the copyright?

    The design is a combination of two elements, pokemon and star wars. Does it violate both copyright or has the design changed enough to be legal? http://shirtminion.com/2015/03/death-star-poke-ball-t-shirt/

    Frank’s Answer

    The test used for copyright infringement is called the "substantial similarity" test. There is little doubt in my mind that you exposure yourself here....bigtime.

    Before you make any further 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 
  • Am I in Conflict of Interest with company who made the software?

    I have several years of experience on a software made by company X. Now I am working as an independent consultant and I want to make tutorials on how this software works and sell the tutorials on the internet. I would sell the tutorials with my...

    Frank’s Answer

    There is nothing you noted here that suggests that you would be prohibited from engaging in this venture. For example, if you signed a valid non-compete agreement (generally not upheld in CA) this would be an issue. You still have general concerns like not presenting a false association, endorsement, sponsorship or other affiliation with this company nor can you paint them in a false light.

    Before you just 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 I use possibly copyrighted material for a print and digital magazine?

    I am printing an entertainment related magazine. In this magazine I am critiquing a few albums, writing editorials about music news, commenting on a movie, and commenting on a video game. My question is this, obviously I need to use things suc...

    Frank’s Answer

    There is nothing obvious about your need to use any specific material. In general, if you are commenting on or critiquing a work then you are permitted to use a reasonable portion of that work to illustrate your critique like a film critic will use a 15 second clip of a 90 minute movie for her review.

    In your case, however, it is not entirely clear what all of your uses will amount to, so you really need to have this vetted before you jump in.

    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 if they believe you are infringing. 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 
  • What can I do to prevent copycats?

    I have an app that I plan on publishing to the Apple App Store soon. I want to prevent someone from taking my app and making a million dollar scheme. What can I do to protect my work?

    Frank’s Answer

    You always have trademark protection that identifies your app in the market place. There are a lot of games for example but only one Angry Birds. I will offer some general remarks about TM protection below.

    The written code, graphics and other creative expression will be protected under copyright, but if you are not the one actually creating all of that you need to have the right written agreement (IC/work-for-hire/NDA/NNN) prepared as between you and the people doing that work to ensure that all IP is conveyed to you.

    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.

    These days patent protection in this realm is usually out of reach but certainly not in all cases. This is a huge commitment that is not required and will be very costly if possible so you really need to do your homework before making any commitments about that.

    I will also add that you should be getting some specific actionable advice on your platform. You are going to have to deal with a number of legal considerations as you move forward anyway. For example, you have the business entity structure, clearing and registering your trademark (see below), copyright/DMCA considerations, written terms and conditions of use, privacy policy and EULA drafting among others.

    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 NC 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 Can I do about stolen story line "concept"/ copyright infringement ?

    I've been writing this series for a couple years now posting excerpts of the first installment off and on to build a buzz for the series before it was released mainstream and published the first volume online for review purposes a few months ago a...

    Frank’s Answer

    The test for determining copyright infringement is called "substantial similarity." Could you be describing actual infringement? Of course. Could you be greatly exaggerating and over-reaching? Of course. The only way to know is to have a proper case/matter analysis conducted and once that is done a best course of action can be formulated.

    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 considered stealing or copyright or what?

    For the past 4 years, I have led a team through a charitable organization with a name I made for the team. The name is recognized by the organization and is used to raise funds for the organization when we join their events. A close family friend ...

    Frank’s Answer

    First, before you get ahead of yourself you need to properly clear the name if you are to use it as a trademark (a source identifier of a good or service), which I will describe more below. So it is at least possible that the name is already conflicted. Next, your friend is not really using the name as a trademark if all she is doing is using it as a handle for a personal Go Fund Me raise. There are no goods or services involved there, so I really don't see how that would be relevant to your use. Further, because you already started using the name for the organization you presumably already garnered some common law rights to it that would extend at least within your market area. A federal trademark with USPTO registration will offer presumptive rights in all 50 states. If however your friend's activities are causing an issue because of their use of the name, the organization may be well within its rights to demand that they stop. They may have rights even if not under general trademark law but rather under a common law claim like unfair competition.

    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 CA 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