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Gerry J. Elman
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Gerry Elman’s Answers

775 total


  • Can patent attorneys partner with a client?

    Do (or can they legally) patent attorneys ever trade their services for a percentage of clients product?

    Gerry’s Answer

    To protect clients, many states require that attorneys purchase "professional liability" insurance. Different insurers have different practices as to whether or not they will insure against malpractice an attorney who is in a business arrangement (such as a "piece" of the patent) with a client. So in some instances, it's possible that a patent attorney who takes back an interest in the patent may turn out to be uninsured if something should go wrong with the patent.

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  • Hi I have an idea that I would like to patent but I'm really confused on which attorney to go with.

    Just want to make a wise decision. Looking for an attorney that can give me a fixed no hassle charge.

    Gerry’s Answer

    An attorney is a member of the Bar of your state, such as New York. A patent attorney is an attorney who is also licensed by the U.S. Patent and Trademark Office (USPTO) to file and prosecute applications for patent.

    The USPTO maintains a roster of practitioners who are licensed by the USPTO as patent attorneys or patent agents. (Patent agents are patent practitioners who are not also attorneys.) see https://oedci.uspto.gov/OEDCI/

    Note that a mere "idea" cannot be the subject of a U.S. Patent.

    Many patent attorneys are active here on Avvo.com , and you can find them by searching the database of attorneys here. An advantage is that you can read their profiles including any comments or endorsements by former clients that have been published here.

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  • Can I adapt a novel a novel to screenplay that I don't own?

    I know the answer to the above question. I can't. But I am a screenwriting teacher and I want to advise my students (in a book on sale around the whole world) to try adapting a novel. In some cases, a novel they don't own. I am telling them up fro...

    Gerry’s Answer

    To expand upon Attorney Pfabe's excellent discussion of the issue you raise, the issue arises because the owner of the copyright in a work of authorship is granted by federal statute an "exclusive right" to authorize the creation of any "derivative work," and this implies the right to assert that any unauthorized derivative work is an infringtement. See the various aspects of "derivative work" liability discussed in the Wikipedia entry: https://en.wikipedia.org/wiki/Derivative_work

    In the context of whether or not it is reasonable for the law to provide the copyright holder such an absolute right to withhold permission to create a derivative work of a musical song, see the discussion at http://www.tunecore.com/blog/2013/04/should-there-be-a-compulsory-license-for-derivative-works.html

    For a general discussion of copyright policy that will be of potential interest to you and your students, see the book "Free Culture" by Prof. Lawrence Lessig, available under a Creative Commons liicense at http://www.free-culture.cc/freecontent/

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  • Can I file a trademark using a pen name?

    I want to trademark my pen name, but I don't want to reveal my real name in the documents. Can I use my pen name to file the trademark?

    Gerry’s Answer

    You haven't said what goods or services you plan to associate with your "pen name" as a trademark. Be aware that a trademark registration requires that the trademark apply to identified goods and/or services.

    As a business is typically the owner of a trademark, you could create a business entity such as a corporation or LLC and register a trademark with that entity being named as the owner.

    For actionable advice, consult an attorney with expertise in trademark registration practice.

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  • What is the procedure for informing businesses that they can license my trademark?

    If I have a trademarked service and I want to expand availability of the service by licensing that trademark to other people, is there a specific place or specific information I need to have on my website to make people aware of the option? Do I...

    Gerry’s Answer

    As Attorney Tencza observed, a trademark cannot be licensed unless the licensor provides quality control over the service. Otherwise the trademark will cease to be an effective indicator of the source or sponsorship of the service, and a third-party might later assert successfully that the term is available for anyone to adopt freely. Thus an effective trademark licensing program should be developed in consultation with a knowledgable attorney.

    Consider also that many kinds of trademark licensing schemes are subject to strict regulation by the various states, under the rubric of "franchising" or "business opportunity" laws. This is another reason to consult counsel for actionable advice.as you develop your business model.

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  • Can I sue a publisher, who first offers me the copyright that he owned, but next three months avoided to provide the agreement.

    I have asked from a publisher permissions to translate and publish an electronic version one of their books. the publisher offers me a five year license for 1000$, I answer that I agree with this price and they can send the agreement. In the same ...

    Gerry’s Answer

    This is something you should raise with a business attorney you engage for this purpose. Be sure to tell the attorney whether the publisher is located in the United States or elsewhere (as you mention that the link for the payment is in Spanish). If the publisher is abroad, it could be helpful for your attorney to be familiar with international contracts, particular with the country where the publisher is located.

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  • 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...

    Gerry’s Answer

    Although copyright does not protect an idea, it does protect your unique "expression" of the idea. Whether or not the movie improperly appropriates any of your unique expression will be something to discuss with an attorney experienced in copyright law.

    Many such lawyers in the Philadelphia area, including myself, provide preliminary conversations by phone.

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  • 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...

    Gerry’s Answer

    Whether or not there is trademark infringement is based on a factual finding of the likelihood that customers encountering goods bearing the allegedly infringing trademark would confuse their source or sponsorship with products of your company. Various evidentiary factors would be presented to the court to support such a finding. An attorney experienced in trademarks could provide you with a confidential legal opinion on this subject. Many Pennsylvania trademark attorneys, myself included, provide a preliminary phone conversation without charge.

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  • Is there any such thing as common law trade names and trade marks?

    I came across a trade name and trade mark previously used by a defunct US corporation. Neither the name nor mark have ever been registered. Notwithstanding, is it possible that the previous users of the name and mark may have a common law right t...

    Gerry’s Answer

    Yes, a company can develop rights to a trademark under the common law by using the mark on goods or in connection with its services. A "trade name" is the name of a company, and may also give rise to common law rights.

    If the company has gone out of business, and accordingly stopped using the mark and hasn't transferred its rights and goodwill to a successor, then the mark would have been abandoned, and would presumably be available now for adoption by someone else. Whether the specific facts of your situation support that conclusion should be ascertained by an intellectual property attorney you confidentially engage for actionable legal advice.

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  • What Type of Legal Action Should I Take?

    My phone and computer were hacked and some embarrassing information was shared about me with various individuals. A number of strange emails were sent to one person, who is now sending a Cease and Desist order. Before this, I sent an email to him ...

    Gerry’s Answer

    How to respond to the circumstance you describe would depend on the specific facts of your situation. In particular, it would be important to know the source of the "Cease and Desist order" that you mention and how it came to be issued.

    Your next step should be to contact an attorney for a confidential consultation. Our firm, and many other Pennsylvania attorneys, would be willing to have a preliminary conversation with you by phone without charge.

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