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Frank A. Natoli
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Frank Natoli’s Answers

7,882 total


  • Is it legal to make a music video with someone else's song?

    Hi, I was wondering how legal it is to make a music video with someone else's song? I've tried to read into copyright laws, but I just don't understand them. I'm applying to go to a film school this fall, and I have to submit some things for a...

    Frank’s Answer

    Your exposure regards to the artists involved is probably quite low because you are not taking this work to market rather using it for your submissions. But all these institutions are very aware of IP rights and may frown upon a submission that seems to have no respect for copyright law. I would just use royalty free music or seek a license.

    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 
  • What different licenses and from whom do I need so I can make a smartphone app to teach how to play copyrighted songs in piano?

    The idea I have of an app is one which shows which piano key to play and when, so the user can play a popular song (for example "Imagine" by John Lennon). Do I need to get a license from whomever represents John Lennon's estate? Or do I just buy t...

    Frank’s Answer

    You received some good insights from my colleagues. I would only 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, copyright/DMCA considerations, written terms and conditions of use, privacy policy and EULA drafting among others. Only once you fully explain your platform along with all the details and features can you be certain to know exactly which license(s) you will need.

    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 
  • If I design a businesses logo and they never trademark it, who owns it?

    8 years ago I designed a logo for a business (LLC) I started with some friends. Like everyone else involved I was paid for my normal work but never for the additional work, the design of the businesses logo, which is now a nationally recognized sy...

    Frank’s Answer

    At first blush, it sounds like this was contributed to the entity and belongs to the LLC. It matters not that you were not paid in addition for contributing that work. Business owners wear many hats. And now eight years later you want to be paid for your time in designing the logo? Really? First, it is most likely that the statute of limitations would bar your claim for money damages 8 years later. For example in IL the SoL for oral contracts is 5 years. If you have a written agreement however the SoL is 10 years. Next, what do you think your damages are here exactly? Eight years ago I could have had a logo designed from a provider on Elance for $100.

    I think you might be wasting your time here, but if you are taking this seriously 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 use our company name, without asking, if I don't copyright it using uspto, even if it is a registered business name?

    I have a t-shirt clothing company. We create our own designs and a few of them have our company name in them. It was brought to my attention that someone wanted to use the name and design of one of our t-shirts for their organization. Our company ...

    Frank’s Answer

    The artistic design and the name itself are two different analyses. It is possible for two companies to share the same name. For example, we are not confused as between Delta Airlines and Delta faucets, but as the goods and services they identify become more closely related it increases the risk of infringement. Further, if there is no federal trademark registration then your rights to the name will only extend to your common law market area which is considered the scope of your market penetration and market reputation. So for example, you might be able to do something about it if they too are operating in CO but not if they are operating in say NY.

    As for the designs, 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. IN your case, the designs may also be serving as a proper logo like the Golden Arches of McDonald's and in which case should also be filed with the USPTO.

    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 CO 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 
  • Copyright law...image on old record album

    There's an old record album (Christmas songs) I have from the 1970s. I like the image on the album or would like to use it for a collage presentation. I doubt the unknown singer renewed copyrights if they expired if there are copyrights to the ima...

    Frank’s Answer

    It would be all but certain that the image is till under copyright. This might not matter either depending on what your purposes are for using it. For example, you say a collage presentation. If for example the image is used specifically because it helps express your social or political commentary then perhaps this use falls under the realm of fair use. Also, some use might be entirely transformational whereby you would obviate copyright infringement. Or perhaps your use is just for personal use in which case the law would consider it de minimis for infringement purchases.

    If you think you need more 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 
  • Need assistance with business name mentioning another entity's copyrighted name.

    We rent private condos in condominium hotel named Palms Place and would like to make DBA and website "Premium Suites at Palms Place" or similar, also we plan to form not official organization PalmsPlaceOwners.com. I believe this name is patented o...

    Frank’s Answer

    This is actually not so straight forward. There was a case on point concerning the Lexis auto brand if i remember correctly where they brought suit over a dealer for using the domain (or family of domains) like "leaseaLexis,com." The Court ruled in favor of the defendant because in such cases this use is nominative. That is, the domain is not serving as a trademark or source identifier but rather as an address or locator and the owner is really only using the trademark "Lexis" to refer to exactly the brand that they deal in.

    So in my cursory opinion, I think using a domain like "premiumsuitesatPalmsPlace.com" for a service that rents premium suits at Palms Place is not even trademark use but rather merely using their mark descriptively in text no different than what your copy says on your service pages.

    Filing a DBA or seeking a trademark registration in my opinion is crossing the line. Here you are attempting to actually associate yourself with them and this can be a problem under both trademark and several common law claims. I would suggest you get written permission before doing that.

    My comments here are off the cuff and I could be missing something very important, so if you are taking this seriously 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 name my mobile application Velcro?

    I am aware that there is a company called Velcro, but is it allowed to name an app Velcro under another company name?

    Frank’s Answer

    Maybe? We are not confused as between Delta Airlines and Delta faucets right? Same exact name, but operating in two very different classes of goods and services. However, very famous trademarks get to make what are called dilution arguments. So for example, I don't care what you intend to sell, but if you call it the "McWhatever" you can expect to hear from McDonald's lawyers. Would Velcro be considered a famous brand? I'm not so sure and there are a number of "Velcro" trademarks already registered. So I think the short answer to your question is "maybe" and you won't really know until you 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 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

    See question 
  • How close is too close for trademark infringement?

    I own the Federal registered trademark to the phrase "The Book Ninja" which is my brand. A week ago I created and sold book cover templates under that brand. Today I noticed someone else selling book cover templates, using the branding "Vector Cov...

    Frank’s Answer

    So the service is creating book cover templates and you do this under the name "The Book Ninja." And there is now another company doing business as "Vector Cover Ninja." The question is whether this creates market confusion. Definitely not an analysis that can happen here. We would need to understand just how saturated the term you share, "Ninja," is as it relates to the classes of goods or services and related classes. Many marks share the same terms even within the same class. If you honestly believe that it is causing an issue you can hire counsel to send a cease & desist after a proper review of course in the hope that they might just make some changes before they get too invested in the mark, but there are about 1200 entries of marks that use the word "ninja" and its the only word you share. This does not mean that it cannot cause an issue only that they may have very good arguments as well.

    Before you take any action on your own, 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 "StatSheet" a registered trademark?

    Starting a sports media/news website and I thought of the name "StatSheet". I don't know how to go about seeing if a name is available so I was wondering if someone could tell me if its already a registered trademark.

    Frank’s Answer

    The name is highly descriptive and is really at the weakest level of trademark protection. It is however already registered on the Supplemental Register under Statsheet.com and is owned by a DE entity with the same name. The Supp Register is where very descriptive marks like this are filed in the hope that they will one day in the future acquire sufficient distinctiveness (secondary meaning) in order to be moved to the Principal Register. The mark ChapStick started this way, but it is far from optimal. Frankly, I think you would be far better off brainstorming a more distinctive mark in any case.

    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 PA 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 
  • Is it copyright infringement when a co-designer uses a joint artistic creation without permission from the 2nd designer?

    I worked with another individual to design a business logo. We both worked on this project together. I was not hired as a contractor nor was there an agreement showing that I am working for this other individual. He did a lot of the idea work whil...

    Frank’s Answer

    Regards to the copyright aspect, I agree with my colleague. It sounds as if you would be considered joint creators and as such each can exploit the work as they wish but owe the other an accounting and share of profits after expenses if there are any.

    The other issue however is the trademark one. That will be a little more chewy to figure out. That is, the other co-creator has now adopted the design as a trademark and was first to use it in commerce, or at least as it appears. This would mean that he now has prior use rights at least with respect to the goods and services that it identifies within his common law market areas. But what was originally contemplated? Was this work created in anticipation of a partnership? Had a partnership already been formulated when this was created?

    There could be a number of ways of approaching this. So if you are taking it seriously, 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