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Maurice N Ross
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Maurice Ross’s Answers

6,120 total


  • Question about Domain name ownership for trademark registered in USA

    I have recently got a notification for one my .net domain (registered with Godaddy, on my Indian address). The notification is from the owner of same domain name .com (registered and doing business in USA) - to transfer domain to them to avoid any...

    Maurice’s Answer

    This depends on whether, in fact, your use of the domain constitutes trademark infringement and/or represents cybersquatting. If you are using the name to operate a legitimate business or to identify specific goods and services, and if you are the senior user of the trademark in commerce compared to the company who send you the notice, then you might be able to continue to use the domain name. But if you simply acquired a domain name without using it, or if your purpose involves buying and selling domain names, then you could be accused of cybersquatting and trademark infringement., Of course, you don't have to do anything until you receive a court order. But unless you are legitimately using this domain name in your business, you probably should consider complying with this request. This is a fact intensive issue, and none of us can advise you without knowing much more information. Thus, I suggest that you retain legal counsel.

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  • How to Participate in swtor2credits Summer Promo:Free 5% - 10% Swtor Credits?

    Hi:SWTOR players,Swtor2credits offer Free 5% - 10% Swtor Credits Bonus from July 1st to July 20th, 2016 GMT. At the same time, the 8% off code "CHEAPSW8" can also be used when you are paying in shopping cart. That means you will get double discoun...

    Maurice’s Answer

    This is spam. It is totally unacceptable

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  • Photographer suing us for using his image on a flyer on a bulletin board

    Our shop had small flyer templates with our name and contact info printed and put them in a Take One box by the door and encouraged customers to print or paste their own images about what our shop means to them on a template and put it up in their...

    Maurice’s Answer

    I doubt if you are liable in this situation. You did not publish or copy the infringing photograph. Further, you could not be held liable in these circumstances for inducing or contributing to the infringement---you had no intent to encourage infringement by your customers. Without having specific intent to induce infringement by your customers, you cannot be held liable.

    You should not pay one dime to settle this matter. Instead, you should retain legal counsel to send an appropriate, but hard-hitting, letter demanding that photographer withdraw this spurious allegation. The letter should threaten the photographer and his lawyer with counterclaims, including claims for attorneys fees and sanctions.

    Even though you are not liable, it is quite possible that this photographer and his attorney will sue you for infringement. Thus, you need to retain IP litigation counsel. Unfortunately, it may cost you more to retain counsel than they are demanding to settle the case, This is a common tactic among certain unscrupulous copyright owners and their attorneys--which many of us call "trolls". The make a settlement demand which they know will be less than you would have to pay to retain legal counsel to defend the claim. Because it is usually cheaper for the accused party to pay the settlement demand than to hire counsel, a high percentage of persons in your position ending paying the bad guys.

    I urge you, however, to retain legal counsel and refuse to give in to this "troll" conduct. Handling this without legal counsel is dangerous and could come back to haunt you. For example, if you cave in and pay this settlement demand in order to avoid paying legal fees, the same photographer and lawyer may come back again, accuse you of infringement, and demand more money. If you do want to settle, you must retain counsel to draft appropriate settlement documents which protect you from future claims by this same "troll" attorney, Thus, even though this claim is baseless, you need to retain a lawyer to deal with this.

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  • Can they enforce their copyright?

    If some music company is set up in US by a European (not a dual citizen), and the producer (the person who spends money for making songs or musics) is himself, and the singer of the songs is an Iranian (not a dual citizen), and the unpublished son...

    Maurice’s Answer

    You keep asking the same question. If a a valid copyright registration exists, it can be enforced by the copyright owner. Further, if there are two copyright owners, either one of them can take steps to enforce the copyright in a U.S. Court. In this case, even if the Iranian singer could not enforce the copyright, the other owners of the copyright could do so.

    The problem here arises from the sanctions that the U.S. imposes on Iran. If there were not sanctions in place, then you would have no problem enforcing this copyright. But the sanctions may make it illegal for either a U.S. or European company to work with you to register and enforce this copyright, and/or to collect funds from the United States either from licensing or a court judgment and transfer part or all of those funds to you.

    With respect, you need to retain legal counsel, either in the U.S. or Europe. Using this web-site as a substitute for legal counsel in a complex situation like this is a fool's gold.

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  • 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...

    Maurice’s Answer

    It is virtually certain that this photograph is still protected by copyright. Using it without a license would violate copyright law unless your use qualified as "fair use". Given recent case law, it is quite possible that use of this image in a collage represents the type of transformational use that would be protected by fair use. But the law concerning fair use is murky, and reasonable judges and lawyers disagree in how fair use applies to specific cases like this.

    If this is for a college presentation, then it seems to me that you should not risk violating copyright law---what if your professor asks you whether your use of these images was legitimate. Most college professors are very knowledgeable about copyright law---publish or perish is the way professors look at the world. Why risk criticism from your professor.

    Note that there is no exemption from copyright law merely because you use the image to create a work for a college class. While there are some exemptions for educational use of copyrighted material, this use will not qualify.

    It is good that you raised this question---it shows great intelligence and sensitivity to the importance of IP laws. Although it may be frustrating for us to tell you that you probably can't use the image, in the long run the education you are receiving on copyright law will be very valuable.

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  • Can I sue to get my IP back?

    I developed an ingenious product, potentially worth billions of dollars, on my own. I was then approached by a large company was willing to support the development of the product further as their employee. Once I pretty much finalized the business...

    Maurice’s Answer

    I would need much more information before advising you. In particularly, I would need to review the agreement between you and this large company. In this regard, I don't understand what you mean when you say you were "dismissed". Did you become an employee of this large company? Did you enter into a contractual relationship with it for development of the product? Did you enter into a non-disclosure agreement with this company?

    Also, did you file for a patent on this product, or did the company (or someone else) file for a patent? Did you try to protect the product using trademark or copyright law? What steps did you take to protect the IP in this "ingenious" product.

    Also, how far along was the product in development? Was it only an idea? Had you developed a prototype? Was this product placed into beta testing? Testing for safety and compliance with regulatory requirements?

    Without knowing the answers to these and many other questions, i cannot begin to advise you. One thing is clear, you will need to retain IP litigation counsel to analyze the facts and recommend a course of action. If the product is really worth billions of dollars, then you need to be prepared to invest in legal counsel in order to develop a strategy for reclaiming your IP rights and developing the product commercially (if that is possible).

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  • How long does it take for a deed to be registered with ACRIS and attorney ethics.

    I paid an attorney to register a new deed but it never showed up on ACRIS. The attorney assured me it was registered, and didn't know why it wasn't there. Another situation caused me to doubt the lawyer, and I called ACRIS and was told it was nev...

    Maurice’s Answer

    This is not an intellectual property question. However, as my colleagues note, your attorney has an obligation to explain to you why the deed does not appear to be registered. It is suspicious that the attorney will not provide the cover letter number and other information. I suspect that your first attorney made a mistake of some kind, or that there were complications because the property may have had divided ownership in the past (or even now).

    I suggest that you retain another, EXPERIENCED, real estate attorney in your local area. Many such attorneys are participants in AVVO. Ask your new attorney to contact your old attorney to find out what happened, You will be amazed how responsive your old attorney will be when he finds out that you hired a new attorney to look over his shoulder. Your first attorney knows that he faces potential problems here, including the possibility that you would file a complaint against him. Thus, you should engage an attorney to assist you in straightening out---chances are a few phone calls between your new and old attorney will get to the bottom of your problem.

    Note that I am not in a position to conclude with certainty that your first attorney did something wrong. While I am suspicious, there may be perfectly reasonable explanations for what happened here. Thus, before jumping to conclusions one way or the other, it is important to bring another experienced attorney into the picture.

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  • Is my businesses name too similar to another business in a similar industry

    I'm interested in starting an ecommerce business and I want to know if my chosen name is too similar to the name of a big name business who sells similar products. The name is a woman's name (not unique name) but where the established business is ...

    Maurice’s Answer

    Sorry but none of us can advise you on this issue without conducting a comprehensive trademark clearance analysis. The issue, as you seem to understand, is whether there is a likelihood of consumer confusion. Adding an additional word to the trademark of your competitor may not be sufficient to avoid consumer confusion, but this depends on the context and surrounding facts.

    Keep in mind, that even if your attorney advises you that a court will probably conclude that there is no consumer confusion, the big name business which sells similar products will not agree. And if it is a big name business, it probably has lots of money to spend on lawyers---trademark owners are often very aggressive in enforcing their rights--especially against new competitors.

    Thus, off the top of my head, I suggest that it would be a very bad idea to use the proposed name. Further, with due respect, it is foolish to use this web-site as a substitute for legal counsel on a matter such as this. If you are starting an e-commerce business, it is absolutely critical that you engage legal counsel--and have an adequate budget for legal counsel. Before selecting a brand name, it is critically important that your legal counsel conduct an appropriate trademark clearance analysis. Moreover, in the age of global internet commerce, it is no longer adequate to limit this clearance analysis to the United States---your lawyer needs to cover any jurisdiction in which you are likely to have customers----for example, a separate clearance analysis is required for Canada, which has its own separate trademark system.

    Note also that it is equally important that your lawyer assist you in making sure that all goods that you sell on your e-commerce web-site are authentic---you have an absolute legal duty to sell only authentic goods. You will also need to develop legally sound terms of use, privacy policies and other such policies for posting on your web-site. And you will need properly drafted contracts with parties who supply the goods you sell on your web-site, including their representations that the products comply with safety, health, and intellectual property laws and regulations. Further, any new e-commerce web-site must understand and comply with its obligations to impose cybersecurity measures to avoid hacking and disclosure of customer information.

    In short, starting an e-commerce business requires a substantial budget for legal counsel. You need to be realistic about what this costs---most new e-commerce businesses have budges of six figures to cover the cost of the necessary legal work. We no longer live in an age where you can operate an small e-commerce business from your home or backyard without a significant investment of time and resources on the relevant legal issues.

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  • Is a common law trademark enforceable when the two companies operate in different states?

    I received a notification on Etsy this morning that one of my listings violated a company's common law trademark. The company stated that they have been using the saying since 2013 & therefor own the common law trademark. This company is located i...

    Maurice’s Answer

    A company that operates in New York, but sells goods in Texas, may acquire common law trademark rights in both New York and Texas. The mere fact that the company is located in New York does not preclude it from obtaining common law trademark rights in Texas. Common law trademarks can be just as powerful as federally registered trademarks---and there is no reason why a New York company cannot acquire common law rights in Texas.

    Moreover, it is quite possible that the New York company could sue you in New York rather than Texas, and make you sent the case in New York. This is because you placed the allegedly infringing item on Etsy, with knowledge that it might be sold to consumers in New York, and would cause injury to the trademark owner in New York. That may be sufficient to subject you to personal jurisdiction within New York---the damage was inflicted by you on a New York company which probably can sue you in its home turf.

    Thus, you should take this notification very seriously. In fact, you should promptly retain intellectual property counsel. And needless to say, if your product infringes this common law trademark, you should immediately remove it from Etsy. Failure to do so upon receipt of notice could subject to to claims that your infringement has become willful and in bad faith, which could lead to punitive damages.

    Take this seriously---and immediately retain IP litigation counsel.

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  • Does "use in commerce" for goods under the Trademark Act include rent, lease, license, etc. as opposed to a sale or transport?

    According to the Trademark Act: -- The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade . . . . For purposes of this Act, a mark shall be deemed to be in use in commerce — (1) on goods when — (A) it ...

    Maurice’s Answer

    Yes---as long as interstate commerce is involved either directly or indirectly---the use must "affect" interstate commerce. Even if a transaction is primarily local (such as rental of an apartment) or local lease of equipment, it is probably sufficient to "affect" interstate commerce.

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