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Charles Colman’s Answers

20 total


  • How many times can the US Trademark examiner allow someone to abandon an appliction then "revive" it?

    I filed a trademark application and was rejected over an “intend to use” application that was filed before mine (mine was also "intend to use"). The other application was allowed, and the owner never filed the proof of use, so it was abandoned. I ...

    Charles’s Answer

    One can only file extensions on an intent-to-use application for a total of three years. (http://tess2.uspto.gov/tmdb/tmep/1100.htm#_T110801) Although inadvertent abandonment during this period may be saved by timely petitions to revive, I sincerely doubt that the revival mechanism can be used to circumvent the three-year maximum.

    Furthermore, there are requirements that an ITU applicant must satisfy in order to either revive OR extend the time in which to file his Statement of Use. For example, the entity seeking to revive an abandoned application must have "firsthand knowledge of the facts, that the delay in filing the response on or before the due date was unintentional," and must attest to this under penalty of perjury. (http://www.bitlaw.com/source/37cfr/2_66.html) Similarly, an applicant for an extension on an ITU application must swear that he has "still has a bona fide intention to use the mark in commerce," and after the first extension, must show "good cause" for subsequent extensions, as proven by "a statement of the applicant's ongoing efforts to make use of the mark in commerce on or in connection with each of the relevant goods or services." (http://www.bitlaw.com/source/37cfr/2_89.html) If the applicant who appears to be sitting on the application for the mark you want to register has falsely attested to any of these facts, various legal avenues may be available to you. Of course, you will have to consult a trademark attorney to explore your options.

    Good luck!

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  • I have an outline for a book and I am talking to a "ghost writer". How do I protect it?

    Should I copyright the book outline or just have a written contract with the ghost writer at this point? If contract is ok, should the contract be notarized and recorded?

    Charles’s Answer

    To correct a possible misunderstanding, copyright protection "attaches" as soon as eligible material is fixed in a tangible medium. So the question (my apologies for nitpicking) is whether you should seek a *federal registration* for the book outline. I say yes: registration through the Copyright Office's online platform (https://eco.copyright.gov/eService_enu/start.swe?SWECmd=Start&SWEHo=eco.copyright.gov) is only $35, and the benefits of prompt registration may be significant later on. (Hire an intellectual property attorney if you are uncomfortable registering the work yourself; this requires minimal work and shouldn't cost much.) Even if all you have is a "thin" copyright, as Pamela suggests, the downside of trying to obtain a certificate of registration is probably minimal, and it seems to me that at least some aspects of the outline -- especially the more detailed it is -- are probably copyrightable.

    In any event, you should most certainly enter into a contract with the ghostwriter. Although ideas are not, by themselves, copyrightable (http://lawoffashion.com/blog/story/03/14/2011/46), cases like the facebook dispute portrayed in "The Social Network" and a recent, similar dispute over the Huffington Post show that contract law can be a powerful tool in theft-of-idea situations. Only an Arizona-licensed attorney lawyer will be able to tell you exactly what your contract should look like, and how it should be memorialized, in order to be enforceable. But as a matter of common sense, the more proof you have of a valid contract, the better -- both to head off litigation in the first place, and to supply admissible evidence in the unfortunate event litigation does arise in the future.

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  • If I use the name zezetops for a product that is not associated with music would I be liable in civil court?

    I want to open a new business and use the name zezetops. Similar sound but different spelling and not associated with music. Am I liable?

    Charles’s Answer

    I wholeheartedly agree with the other practitioners' comments; as a result, I would avoid using the proposed trademark. Pamela is right that spelling is usually irrelevant in trademark disputes, so that probably won't protect you. Vincent is correct that there may be liability for trademark "dilution" even if there is no likelihood of confusion between the existing mark and your products -- and under certain state laws (like New York's) the mark diluted need not be "famous," as it must be for a dilution claim to succeed under federal law. To avoid reinventing the wheel, I'll just direct you to blog posts where I already discussed the relevant legal issues in some depth:

    http://lawoffashion.com/blog/story/04/28/2011/52 (discussing trademark lawsuits over products bearing celebrities' names or likenesses)

    http://lawoffashion.com/blog/story/12/30/2010/34 (discussing the so-called "right of publicity," generally)

    The U.S. Patent and Trademark Office's publications and the federal courts routinely say things to the effect of "the field of possible choices is virtually limitless," and thus give "junior users" of a trademark relatively little leeway. In short, hire an IP attorney and proceed very cautiously.

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  • I have used information gleaned from various sources to create a unique format for doing tea parties. My format includes an

    etiquette presentation, history of tea, and a music concert to follow. No one does teas like I do, and even those who have been to England have said they never experienced something so unique. I use dramatization in the presentation of these facts...

    Charles’s Answer

    I agree with Pamela that if you are focused on protecting the "format" of the tea parties, copyright law may prove problematic for you. As Section 102(b) of the Copyright Act states, "[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." (For more on this, see my discussion at http://lawoffashion.com/blog/story/03/14/2011/46.)

    With that said, some of the elements you describe may be protected by copyright, such as the exact words you use in the presentation. If someone were to put on a similar tea party for the public, and you sued them for copyright infringement, the court would have to sift through the copyrightable and uncopyrightable elements of your parties and THEN determine whether there is "substantial similarity" between your work and the defendant's. (For an example of an infringement case in which a court did this sort of filtering with an allegedly infringed "system" -- rather than a purely expressive work -- see http://bit.ly/jjbMAj.) In general, the closer your party is to a dramatic performance rather than an instructional session, the more sympathetic a judge (and copyright protection, in general) will be.

    As noted in the linked case, if the Copyright Office does issue a certificate of registration for whatever you filed, this serves as "prima facie" evidence of the validity of your copyright -- in other words, the initial burden will be on an alleged infringer to challenge the validity of your copyright. But as this same case illustrates, this burden-shifting may not mean all that much if the your infringement case truly hinges on the "format" of your parties rather than the specific "expression" of your ideas.

    In short, situations like this call for a very fact-specific analysis. I would echo Pamela's suggestion that you consult an IP attorney if you are serious about protecting your creation through all possible means.

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  • Website Template Ownership Agreement (Contract)

    Hello, let's say I've hired a web designer (from India) to make a custom designed website template for me. He makes it. Then, I want to transfer all the template's right to me (so I can sell the template online (just as if I created it). My ...

    Charles’s Answer

    No attorney on this site will be able to tell you for sure, because large portions of the document are blocked (in order to force people to purchase it, presumably.) Furthermore, even if the contract is effective under U.S./California law, it may not be enforceable under Indian law. With that said...

    I gather from your question that you are more concerned about the transfer of intellectual property rights than the terms of the work order. I discussed transfers of intellectual property rights in a fair amount of detail here: http://lawoffashion.com/blog/story/04/20/2011/50. To sum up my blog post, there are a limited number of ways in which one can be an "author" (or even a subsequent "owner") of a U.S. copyright, and they are governed by Section 101 ("Definitions; work made for hire," http://www.copyright.gov/title17/92chap1.html) and Sections 201 and 204 ("Ownership of copyright" and "Execution of transfers of copyright ownership," http://www.copyright.gov/title17/92chap2.html) of the Copyright Act.

    It seems likely that this programmer is an independent contractor rather than an employee, so the "scope of employment" method of getting the copyright is out. Further, a custom-designed website template may or may not fall under the specific categories of independent contractor "works made for hire" -- I am not aware of any definitive court ruling on this issue, though the language of the statute does not bode well for hiring parties. This means that, for copyright purposes, you will have to focus on the portion of the document labeled "assignment." It would be worth spending a small amount of money to consult with a California intellectual property attorney about the wording of a valid assignment. Only an attorney, and not a website like the one selling the form, can keep up with changes in the law that may affect the validity of contractual language.

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  • Are the following protected under copyright law in the U.S.?

    1. Reproductions of paintings dated pre1923? 2. Reproductions of paintings by artist now dead 70 years? 3. Photos of "generic" fabric from on-line fabric retailer -- yellow silk, gingham check, black sequined velvet, -- I use to create frame ar...

    Charles’s Answer

    1. No; pre-1924 paintings are now in the public domain under federal copyright law.
    2. This is a more difficult question; the answer will depend on when and under what circumstances the painting was originally created. The "life-plus-70 year" copyright term has only been in place since 1998 (before that, it was life-plus-50, and before the 1976 Copyright Act, the term of protection wasn't based on the life of the author at all.)
    3. While fabric patterns of sufficient originality are protected by copyright (see http://lawoffashion.com/blog/story/12/26/2010/37), yellow silk, for example, isn't a "pattern" at all -- and one cannot copyright a color by itself (though in certain instances, a color may be protected by trademark, http://lawoffashion.com/blog/story/03/23/2011/47.) If the gingham check is in no way original, you might be in the clear with that one as well. I would be more wary of the black sequined velvet, at least without seeing the actual pattern. Further, be aware that there could potentially be a copyright in the PHOTO even if there is no copyright in the pattern that is the subject of the photo... though it would be a very "thin" copyright. If so, your use of the relevant photo(s) to create note cards might infringe on the copyright owner's right to create "derivative works." Many judges would be skeptical of a copyright infringement claim where there is so little originality in the primary work. Still, why not at least offer to pay a small amount to license the image, and avoid the risk?
    4. The same principles apply here. It does not necessarily matter whether the creator is deceased; the answer will depend on the pattern in question. Obtaining a license would again be the most prudent course of action.
    5. I understand this question to be whether your card company is providing a "graphic service" and whether your cards are a "design resource," for purposes of Dover's copyright statement. This is essentially a question of contractual interpretation, and the highlighted language may be sufficiently ambiguous for the issue to be disputed. The best course here, quite simply, is to ask Dover what it meant by this. Obviously, its images will have limited market value if purchasers can't make *any* public use of them, so the company has a reasonable incentive to provide a lenient answer. However, try to get that answer in writing, in case they later change their minds.

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  • Can I sue for IIED for Breach of Contract even if I don't have economic damages?

    I own a small business, and one very unhappy employee posted on facebook some priveleged information about my company last night. (Yes, I will be firing them come Monday.) I do not know what the fallout will be money-wise yet, but in this econom...

    Charles’s Answer

    • Selected as best answer

    You will need to consult a California-licensed attorney to parse and analyze the various legal issues here. For example, "intentional infliction of emotional distress" is a completely separate cause of action from breach of contract. I take it your question is whether you can recover damages for emotional distress in a breach of contract action. The answer, generally, is that such damages are only available 1) when the breach was made in "bad faith," AND 2) when a separate economic loss has resulted from the breach. See Maxwell v. Fire Insurance Exchange, 60 Cal. App. 4th 1446 (1998). Obviously, as an initial matter, you will need to examine your written contract (if any) with this employee to determine whether any provision was, in fact, breached. It is conceivable that your employee breached a provision of an oral contract, but a case premised on this will be an evidentiary nightmare.

    Even if there is no written contract with the employee and/or or no provision on point, you may have a TORT (as opposed to contract-based) cause of action against the employee. At least one California appellate court has found that a managerial employee owes a so-called "fiduciary duty" to her employer; further, California law recognizes a "fiduciary-like" cause of action for breach of the duty of loyalty where an employee has taken action against her employer's best interest. See Diodes, Inc. v. Franzen, 260 Cal.App.2d 244 (1968); Stokes v. Dole Nut Co., 41 Cal.App.4th 285 (1995). One or both causes of action may be viable here, which is significant, because a California plaintiff MAY recover emotional distress damages caused by a breach of fiduciary duty. See Jahn v. Brickey, 168 Cal. App. 3d 399 (1985)

    Since you mentioned "intentional infliction of emotional distress" in your question, I'll discuss it briefly. If you wish to pursue an IIED claim against your employee, you should be aware of the elements you will have to prove: "(1) EXTREME AND OUTRAGEOUS conduct by the defendant with the intent to cause, or reckless disregard for the probability of causing, emotional distress; (2) suffering of SEVERE OR EXTREME emotional distress by the plaintiff; and (3) the plaintiff's emotional distress is actually and proximately the result of defendant's outrageous conduct." Myung Chang v. Lederman, 172 Cal. App. 4th 67 (2009) (capitalization mine). As you can see, the courts have imposed a fairly high barrier to recovery for IIED, partly in recognition that many of our everyday actions cause emotional harm to others, but should not give rise to legal liability.

    Finally, you might have a cause of action for the improper disclosure of "trade secrets," but be aware that the requirements for trade secret protection are quite stringent, and that this area of law is rather specialized. Again, you will have to consult a California-licensed attorney for a legal conclusion.

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  • Can I use public domain elements within my work and still be able to copyright/protect it?

    I am working on a series of fictional writing pieces. I have been photographing models in various scenarios that compliment the articles and stories. In some cases, I was hoping to use screencaps from public domain films. I have been unable to fin...

    Charles’s Answer

    As my colleagues have noted, the use of public domain elements within your work will not be a barrier to copyright protection for its new, original elements. Section 103 of the Copyright Act makes this clear: "The subject matter of copyright . . . includes compilations and derivative works, but protection for a work employing preexisting material . . . extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work[.]"

    Although it is true that trademark protection may last as long as the mark is continually used in interstate commerce, the fleeting use of another's trademark in your film does not necessarily constitute trademark *infringement* (which requires that the trademark owner prove a "likelihood of confusion," see http://lawoffashion.com/blog/story/12/27/2010/36) or trademark dilution (which is a more complicated concept, about which you will need to consult an attorney.) Further, given the age of the footage you are using (pre-1924 works), it seems likely that many or even all of the relevant trademarks are "dead" due to non-use or have lost their "secondary meaning" among the public (i.e., consumers' mental association between the good/service and the mark, which is necessary for trademark protection in film titles, for example. See http://lawoffashion.com/blog/story/05/10/2011/53 for more on this.)

    Finally, be aware that pre-1972 sound recordings are covered by *state*, not federal, copyright protection, and that different rules on duration will apply to these works. In New York State, for example, protection for such works appears to be perpetual (at least until displaced by federal copyright protection in 2067.) See http://www.courts.state.ny.us/reporter/3dseries/2005/2005_02570.htm for a fairly recent New York Court of Appeals case on this. Determining the duration of copyright protection in foreign countries is notoriously difficult, but a professor at Tulane Law School has created a tool called "The Durationator" to aid in the process: http://www.durationator.com/dur.php. You might find it useful.

    Your project sounds interesting. Good luck!

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  • Can I display various product image and their details on my set for consumer reviews and will not get slapped with legal notice?

    I want to make a website where consumers can register and become members. Once they are members they are allowed to review the various products which are freely available in the Market. Hope manufacture can't ask me to pull of the product actual p...

    Charles’s Answer

    Speaking only to the question about the use of product images, I would be less cautious than some of my colleagues. You should certainly have a DMCA (notice-and-takedown) procedure in place, the details of which are readily available on your website. However, the use of a company's copyrighted photos to facilitate criticism of the products in the photos may well be a "fair use" under Section 107 of the Copyright Act (provided the company owns the copyright in the photos, as will often -- though not always -- be the case.)

    Section 107 of the Copyright Act states that it is not infringement to use copyrighted works "for such purposes as criticism, comment," etc. However, along with the statute, case law is very important in the fair use context, so you will need to consult an attorney to canvas the relevant judicial opinions for you. I'll draw your attention to just one, a 2003 Seventh Circuit case called Chicago Board of Education v. Substance, Inc. (The Seventh Circuit is the federal appellate court whose jurisdiction covers Indiana, where you live. Be aware that you might be sued where the *plaintiff* is based, or somewhere else altogether.) In the 2003 case, which involved alleged copyright infringement arising from the posting of standardized tests online, the Seventh Circuit stated: "[the defendant] was entitled to criticize the tests and to do that effectively he had to be able to quote from them, just as a parodist has to be able to quote, sometimes very extensively, from the parodied work in order to make the criticism of it that is implicit in parodying it comprehensible." (The court did, however, uphold a partial injunction against the poster.) You may be able to invoke the court's reasoning -- i.e., argue that in order for viewers to fully understand the criticisms of the reviewers on your site, or even be able to make a meaningful connection between those criticisms and the products critiqued, it is necessary to post an image of the product. But of course, the counterargument is one anticipated by other attorneys' responses to your question: you can simply take the photos yourself. Whether you choose to use pre-existing photos or take your own will depend on your attorney's fair use conclusions, your appetite for risk, and the burden (which may be extreme -- perhaps even prohibitive) of taking your own photo of every product reviewed on your site.

    I should add that if the photos you use reflect no artistic judgment whatsoever, but rather are simply head-on shots of non-copyrightable "useful articles" against a white background (for example), they may be insufficiently "original" to merit copyright protection in the first place. However, this is a fairly unconventional argument, and should not be your primary defense.

    Finally, be aware that in order to sue you for copyright infringement based on a photo, the owner of the photo must have *registered* its copyright. In many cases, companies have probably not have gone to the trouble of registering their copyrights in product photos, as their value is minimal. While the copyright owners can nevertheless register their copyrights *now* and then proceed to sue you, in many cases the delay will prevent the plaintiff from seeking the heavyweight "statutory" damages that make copyright infringement so dangerous.

    For more about the fair use doctrine, see http://lawoffashion.com/blog/story/04/22/2011/51.

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  • Want to know if I have a case

    I wrote a screen play about ten years ago .I had it copy writen with the Library of Congress and S.A.G.. A new movie has just come out that has the same story line, they tweaked some little things in the move .. But I feel it is my scipt ... I ha...

    Charles’s Answer

    I agree with the observations and opinions of the other commenters regarding copyright law. However, your sentence about the "leak" suggests that you may have a cause of action for "theft of idea" under California law.

    A theft-of-idea, a/k/a "Desny" claim (so named after the first California Supreme Court case that recognized the doctrine) is premised on the notion that "a writer and producer form an implied contract under circumstances where both understand that the writer is disclosing his idea on the condition that he will be compensated if it is used." Because copyright law does not protect ideas, as my colleagues have indicated, defendants in theft-of-idea cases have often argued that federal copyright law "preempts" theft-of-idea claims. However, just a few weeks ago, the Ninth Circuit Court of Appeals rejected this preemption argument in a case called Montz v. Pilgrim Films.

    Based on the court's opinion in the Montz case, a theft-of-idea plaintiff must show (1) that s/he disclosed an idea for sale, (2) that s/he expected to be reasonably compensated for the idea, and (3) that defendants knew the conditions on which it was offered. If you can prove each element, you may have a meritorious claim completely unrelated to copyright law. However, it appears that some of the relevant events happened quite a while ago, so you may run into an obstacle in the form of California's statute of limitations. You should consult a California-licensed attorney about your rights, if any, as soon as possible.

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