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William Robert Samuels
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William Samuels’s Answers

17 total


  • Use of a Trademarked name on Apple's AppStore

    We are a software company based in Canada. Almost a year ago, we posted on Apple's AppStore, an iPhone App. recently, we were contacted by a US company about the fact that a part of our iPhone App is a Trademark in the US. So, we immediately, rem...

    William’s Answer

    You are likely in the clear. By stopping any infringement the other party may be satidfied with the result. Unless you made a lot of money from sales of the app., or they lost a lot of money from sales of the app., suing you for damages likely will not be in their interest, especially as it sound like you have ceased any infringing activity and it sounds like you had no intent to infringe in the first place.

    Still, according to US trademark law (Lanham Act, 15 USC 1117) the other party could seek (1) your profits from any sales using the infringing mark, (2) any damages they sustained by the infringement, and (3) the costs of bringing the action. There are a variety of factors to consider regarding whether that could or would happen—and, as mentioned, it sounds like pursuing that route would not be worthwhile for the other party.

    Good luck!

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • Copyright Infringement? Taking a AVI file i Got for free from the internet & encoding it ontoo a DVD and then selling it

    I am wondering if gettting an AVI file from the internet for free off of a site that has no warring to the united states to own them and encode them ontoo a DVD with windows DVD maker. I persanly e mailed a few people on here but i didnt get a ...

    William’s Answer

    Fully Agreed with Ms. Koslyn. The issue is not necessarily about your right to use the content personally, though that may indeed be in question depending on where you got the files. The issue is regarding the right to sell the content or use the content in certain ways.

    Consult a criminal defense attorney as soon as possible.

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • Is this phrase copyrighted? "If you think education is expensive, try ignorance"

    fear of copyright infringment if I use this phrase on web page

    William’s Answer

    While in agreement with the previous posting, I also might figure out if and when another party has used the phrase in relation to their goods or services. If someone else has made such use of the phrase in commerce, then you need to consider their trademark rights and that type of infringement. Consider situations where you might feel that someone “took” the phrase from you. Good luck!

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • Is it legal to use a company's trademark in the domain name of a consumer complaint website (ie: AcmeStinks.com)?

    And if so, is it also legal to spiff their tagline (for example, WeAllHateAcme.com, where Acme's tagline is "We All Love Acme")? Even if it is legal to create such a site, does doing such put one at risk for an expensive legal defense?

    William’s Answer

    The following applies to the domain name question and the tag line question:

    There are several issues to consider in looking at these issues. First, whether they are legal to do. Second, whether the company about which you are commenting and which owns the trademarks is going to sue you anyway. Depending on who they are and what the marks are, the products are, and the impact you make, I could see the latter being quite likely even if you are acting within your rights. You should know that.

    Recall that we have relatively strong free speech rights in the US based on the First Amendment, so certain parodies of trademarks may be permissible if they are not too directly tied to commercial use. Also, where your use is editorial or artistic to the extent that there is no “likelihood of confusion" then, you’re likely in okay shape as a court may use the First Amendment as a factor in considering infringement. Be aware: the less commercial your parody and site are, the less likely you will be liable for infringement or dilution. Parodies that involve commercial use of the mark likely be seen as infringing. So, if you’re selling t-shirts, for example, that is not going to work in your favor.

    Regardless of whether you act within your rights, the other party very likely will take issue with your activities. Prepare for them to be (very) displeased and you’ll likely want to consult a lawyer somewhere down the line.

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • Is it legal to illustrate a trademark for display in a public location? For ex., a mural of Orlando with Mickey in the mural.

    My husband is an artist and was recently asked to designed a mural for a restaurant that contains a few well known trademarks. He's been commissioned by an ad agency and their attorneys say it's fine.

    William’s Answer

    A quick point also is that regardless of the actual legality—whether the mural is fair use, non-infringing, etc.—the owners of any potentially trademarked matter that is included in the mural may sue or take issue with the included matter anyway. This will involve lawyers, even if your husband and the commissioning parties have done nothing wrong. On that note, I second Ms. Koslyn’s point about indemnity.

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • Software license guidelines?

    If I download education software on one campus is that software required to stay on that campus property?

    William’s Answer

    Unfortunately, this is not enough information to answer your question. What is important to know is that a license defines your rights in regard to the licensed property. In this case, that licensed property is education software. So, the answer to your questions lies in the terms of that software license.

    If by “campus property” you mean the bounds of the actual school campus, I would be quite doubtful that you would have such a limitation in that you could bring a laptop home to your residence with the software on the machine and likely not be in violation of the license. If you are wondering whether you can put the software on your home computer, for example, I would suspect that might be in violation of the license, but it may not be if the school purchased your machine for you or if you use your machine or the software for educational purposes only.

    What are critical, despite any and all conjecture such as my comments above, are the terms of the actual license. Without those terms, you cannot get a proper answer.

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • Copyright trademark infringement, under CO law is it okay to take image of actor and sell it on t-shirts

    I have taken an 1980's image of molly ringwald changed it about 80% and silkscreened to a t-shirt to sell. Is this wrong?? I was told by a teacher that as long as you change the image 80% it's considered pop art and isn't illegal.

    William’s Answer

    Agreed with both of the answers above--just keep in mind and look into Right of Publicity and also consider that you cannot develop trademark rights in the name, portrait, or signature identifying a particular living individual except by that individual’s written consent…

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • How much do I charge the department of tourism to use my song as the main theme of a campaign

    Greetings. I recently heard about you on a music licensing forum where I am seeking an answer to the following situation. FYI, I am not a professional musician nor composer this is just a lucky opportunity from a single surge of creativity ...

    William’s Answer

    As Ms. Koslyn says, you should hire an attorney who has expertise in this area or law because she or he can negotiate terms of a deal for you. There are no set rules, per se, and so the royalty rate and the right to be the performer potentially can be negotiated. Perhaps you would give a bit on the royalty payment in order to perform the song? You would want to discuss these and likely other issues with your attorney before you go into the negotiation. This does sound like a great opportunity. Good luck!

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • I was issued a patent in February 2009. Another party using my claims was issued a patent in July 2009. Is that infringement?

    The person filing the second patent had access to my confidential patent application prior to the publication of my patent and prior to filing their own application.

    William’s Answer

    It is not infringement, per se. The short answer is that it is hard to tell with the facts you offer here. Someone can take a patented subject matter and design around it, which it sounds may have happened in this instance. I am not sure how the person filing the second patent application had access to your confidential patent application—if it were confidential, how did he or she have access? If the application were already made public, then there is nothing confidential about it, unfortunately. If the individual had access to confidential information of yours, you may have other recourse. Patent design-arounds happen all the time.

    You should discuss the specifics of this matter with a knowledgeable attorney in order to develop the best strategy for protecting your rights. Even if the other party successfully designed around your patent it does not mean you may not have rights.

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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  • Can a phrase that is a nickname of a city be copyrighted? For example "The People's Republic of Austin"

    I market some shirts with the phrase and now realize that someone has copyrighted it. It's ambiguous as to exactly what is copyrighted; the phase itself, or a logo tied to the phrase because it is just a "Creative Commons" copyright and it is not ...

    William’s Answer

    I agree with Ms. Koslyn, but I want to stress that you also be very aware of potential trademark claims and be sure to discuss those with your IP attorney if and when you meet with her or him. While you may have fair use claims in copyright, and you may have such claims in trademark, you will want to be aware of the different claims one can or would make in response to your use of the catch phrase.

    Please note that this information is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

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