Logos, products, inventions, and trade secrets are all considered intellectual property and should be protected. Keep your business and your brand secure.
Introduction Cardi B has made the word “okurr” part of her brand, which she had hoped to use on various merchandise. However the trademark was refused by the United States Patent and Trademark office (“USPTO”). The reason? Because it was widely used as a “commonplace term, message, or expression widely used […] in the drag community and by celebrities as an alternate way of saying ‘OK’.” In a generation of social media, a random phrase can go viral in minutes. Trademarking a word, phrase or slogan does not prevent anyone from uttering those phrases. But it does limit their commercial use. What is a Trademark? A trademark is: a word, phrase, symbol or design, or a combination of those which identify and distinguish the source of goods from one party to another. There are two key elements in that definition: 1) Trademarks protect commercial products and services. Trademarking a common phrase like “okurr” won’t stop others from using it in everyday conversation. 2) Trademarks identify the source of goods and services. Therefore, either your trademark must be inherently distinctive, identifying you as the source of a product. Or, your trademark must have acquired distinctivenes. You must prove that the public identifies your trademark with your particular good or service. And, that you are the source of that good or service. The strongest trademarks are “inherently distinctive,” which makes them easiest to register with the USPTO and to defend in case of infringement. The basics of trademark law A trademark does not mean, however, that no one else can use your word, phrase, or symbol in connection with any and all goods and services. It means only that somebody else can’t use a similar trademark with similar goods or services. The key criterion: trademark infringement occurs when someone else’s use of a trademark would likely cause confusion about the source of goods or services. The Facebook Example Facebook, for example, has trademarked “face” for a “[t]elecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars”. But that doesn’t interfere with a company like North Face using for use of the word with their clothing and outdoor gear, because consumers are unlikely to get confused and believe that North Face is pitching telecommunication services, or that Facebook is outdoor clothing. How do I trademark a Generic, Common Word or Phrase? The strongest trademarks are “inherently distinctive.” This makes them easiest to register with the USPTO and to defend in case of infringement. Common words and phrases can be trademarked. This happens when the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. That secondary meaning must be one that identifies the phrase with a particular good or service. Cardi B’s application did not show a secondary meaning of the word. Trying to register a trademark using generic words will often result in a denial from the USPTO. Hotels.com could not register its name as a trademark because “hotels” was ruled to be too generic. Even with dot com added. Another “generic” concern is that some trademarks end up being so popular that they become “generalized” and lose protection when the trademark becomes synonymous with the general type of goods. Famous examples of these include aspirin, escalator, rollerblade, and thermos. Can you Register your Name? Just because it’s your name doesn’t mean you automatically own it under trademark law. Kylie Jenner’s trademark battle illustrates how difficult it can be to receive protection of a mark that includes one’s name. Kylie Jenner submitted an application to register “Kylie Jenner” as a trademark. However, Kylie Minogue then filed a notice of opposition, claiming that Jenner’s proposed trademark would “confuse audiences and dilute Minogue’s brand.” Although Kylie Minogue withdrew her opposition, the USPTO rejected Jenner’s application anyway, finding it would be too similar to an already registered trademark. Jenner has since requested that the USPTO cancel the “Kylee” trademark, alleging its owner has not used it in commerce and has otherwise abandoned it. Not Maintaining the Trademark (Abandonment) In order to keep registered trademark protections, the owner must continue to use the mark in commerce or else risk losing the rights to it. The owner also has to stay up to date on registration renewal deadlines. Required maintenance documents must be filed between the fifth and sixth year and between the ninth and tenth year after registration and then every ten years thereafter. Neglecting to Enforce Your Trademark Protection Once your trademark is registered with the USPTO, it’s time to make sure all of that work wasn’t for naught. This means you are the one ultimately responsible for making sure no one is infringing upon your trademark rights. Failing to monitor and protect your trademark—such as taking legal action-can have serious consequences, including the value of your mark being diminished and a loss of trademark rights.
The Details The model, clothes, and accessories in question resemble Grande’s famous ensemble from her recent music video “7-rings.” The bejeweled pink pom-poms and purple printed camouflage joggers worn by the Forever 21 model bared a noticeably similar look to the pop icon. The brand also used lyrics from the “7-rings” song (“Gee thanks, just bought it”) as the caption accompanying one of its Instagram posts. In November of 2018, the retailer reached out to Grande seeking an endorsement deal that would include their Instagram account. The singer declined due to an offer that wasn’t high enough. The fast-fashion brand should have given up right there and spared themselves from additional financial hardships that would soon follow. Forever21 is reportedly preparing a bankruptcy filing. PN Lawyers shares a legal analysis on this riveting case that has been all the buzz this past week. The lawsuit was filed on Monday, September 2nd in the Federal District Court in Los Angeles. The suit claims Forever 21 is trying to use Grande’s image to advocate their brand without her consent. On Tuesday, September 3rd, Forever 21 stated the allegations were disputed, but no comment could be made on the pending litigation. Forever 21 is said to be hopeful about finding a reasonable resolution and remain on civil terms with the singer. Right of Publicity This case implicates the right of publicity, trademarks, copyrights, and false advertisement/endorsement claims. New York recognizes a statutory right of publicity as part of the right of privacy pursuant to N.Y. Civ. Rights Law §§50 and 51, which protects a living person’s name, portrait, picture, and voice from third-party use for advertising purposes or for the purposes of trade without written consent. In California, by contrast, where the suit was filed, rights of publicity are protected not only under statute, but also under common law. The protection California’s common law right of publicity offers extends beyond a person’s name, portrait, picture and voice; it, further, covers anything evoking a person’s image or identity. This broad protection afforded by California law to publicity encompasses any misappropriation of a person’s identity, whether a person’s image was used or not. For this reason, many individuals, and even more celebrities opt to litigate in California courts when their publicity rights are infringed. Based on the above, it seems that Grande’s claims could be successful. At the same time, it would be compelling to see where the line is drawn between protection of publicity rights and freedom of expression under the First Amendment, where neither a person’s name, nor their image, voice, or portrait has been used.
Introduction BitTorrent Litigation Updates 2019 - Evidence of Infringement. When you get a subpoena notice from your ISP informing you that a media company like Malibu Media, LLC or Strike 3 Holdings, LLC are trying to get at your name and address from your ISP, a few questions should come to mind. Things I like to know. Should you litigate? If you did not do the downloading of their movies, should you LITIGATE the case? And if so, would you be able to recover your attorney fees? Defendants can recover their attorney fees (or at least seek to) if they can show the Plaintiff filed in bad faith. There are ways to try to setup the case for this. Is Plaintiff counsel possibly over-booked? Are law firms such as Bandlow Law Firm (a main filer of file sharing lawsuits dealing with porn videos) capable of maintaining a litigation caseload with their new firm (remember he left Fox Rothschild, a huge law firm with hundreds of lawyers and is now a much smaller firm). Can they handle all the cases they are filing? There are many cases they are filing and at some point it would seem that the caseload may grow to a very large size if the cases do not quickly settle. If the innocent people would challenge the lawsuits this could cause a major problem to firms in this area. Try to get a gauge by looking at Pacer, see what their caseload might be looking like. Is the "Hash File" real evidence of infringement or just trash? Will they explain what content is found in the “hash file” (part of the infringement report filed with the Court)? These pornography companies claim the hash-file shows the evidence of infringement but that is just a random number pulled from the content. How is it that they take the hash file and match that up with a copyrighted movie on each and every file alleged to be infringing? That would be a tremendous amount of work. Don't be afraid to ask the question. Not sure you will get an answer. How can they prove files were downloadable, playable, viewable? Not all files requested through BitTorrent are actually sent and received in a fully playable or viewable format. Did the requesting computer receive a full movie? A picture of a movie? A corrupt file? Nothing? These are questions to ask and DEMAND PROOF ON. Will the Jury have a Fury? What would a jury do with a case like this (side with an adult porn company and a “hash file” or a “PCAP file” (which I have not yet seen to date). The PCAP file would show if the files (packets) in internet traffic were actually downloaded (and not corrupted file for example), but this is not attached to the complaint for some reason and not provided to Defense counsel. Why? What‘s to hide? Their (Strike Three) investigator overseas (IPP UG) are they really confirming the existence of these files, each and every one? U.S. Copyright Office - Are the Copyrights Registered? Are all the files alleged to have been downloaded and shared actually copyright registered with the United States Copyright Office? If not, those alleged infringements should not be in the complaint (court has no subject matter jurisdiction to hear the case). You have to look closely at all the alleged infringements. Make them show you they have copyrights for everything. Did they copyright AFTER they noticed alleged infringement? Cobble Cobble Nowadays, Strike 3 (running into being forced to get over the "Cobbler hurdle" as I call it - see link below) must allege “something more” than just an IP address to overcome a motion to dismiss. What do they have? Now, what I see them doing is getting the John Doe Defendant’s name from the ISP then (in what appears in my opinion to be nothing more than junk science) they will search out the Defendant on social media (most likely facebook) to see what you “interests” are or “likes” are and they are matching that up with a report (again, which appears to derive from their investigator IPP) and a list of “other movies” the DOE defendant allegedly downloaded (sometimes going back years) are compared with the social media “interests” and this is supposed to show a “correlation” that Defendant is the downloaded. Is this inadmissible character evidence (trying to show Defendant is a “serial downloaded” infringing on a massive scale) under FRE 404 or admissible "habit evidence"? If character evidence, how would this be allowed to be used as the “something more” demanded by the Cobbler case (9th Circuit)? "Additional Evidence" and Movie Preference Snooping - is it legal? Moreover, if IPP (or other investigator) is snooping on your movie and TV show interests (nothing to do with their movies and protecting their IP), and then sharing this information with the Bandlow Law Firm or other torrent Plaintiff counsel, does this violate the Federal Video Privacy Protection Act? I am going to do a separate blog that analyzes this legal theory. For now, it seems that information about what you watch and share online is being shared with other. Remember, the HULU case which said that VPPA applied to online videos as well (whether paid for or not). So, this requires a separate blog but for now, is something to think about. They will say your torrent activity is PUBLIC (no reasonable expectation of privacy) so we will be taking a look at this. Oh heaven, what about Rule 11? This all begs the question, can their complaint, as written (mainly boilerplate complaints virtually alleging the same allegations (with some slight noteable variations), survive a MTD and a Rule 11 challenge? Rule 11 requires good faith before a lawyer brings a lawsuit. If they know Cobbler is a hurdle, and if trying to get around this with character evidence (vs. habit evidence - see above), does such a complaint survive a Rule 11 challenge? More things to keep in mind. I am not arguing one way or the other, just things to keep an eye on in your case. I didn't download their movies At the end of the day, can they survive a motion for summary judgment? Are there other reasons for the downloads, if they really exist? Some examples may include: A. Group home *(many computers and laptops connecting - who dunnit) B. Unsecured WiFi (could be neighbor using your bandwidth for downloads) C. Many visitors to the household? (kids and their guests - whodunnit)? Fraternities D. Passive downloads no one was aware of (have you ever seen your computer taken over by some type of software or had your browser hijacked forcing you to reboot? E. VRBO with renters / tenants (Vacation Rental by Owner) F. Hackers The list goes on. Conclusion These are just some of the issues and questions that I think need to be asked in every case and your options of litigating (on a monthly flat fee basis with costs) versus settling should be explored. Cobbler has changed the landscape, and only time will tell if this “additional evidence” Strike 3 is coming up with (if they already have the evidence why do they need additional evidence, especially what appears to be inadmissible character evidence) will be accepted by the Court, or whether a complaint will be subject to a motion to dismiss, and if not dismissed, an answer and a POTENTIAL countersuit for unfair business practices (sharing movie interests not related to their own IP), violation of the Video Privacy Protection Act, and Declaratory Judgment of non-infringement, so that a Doe Defendant wrongfully accused can have a CHANCE to recover their attorney fees in the cases where they cannot prove the files exist on the end users computer.
The Non-Disclosure Agreement The Non-Disclosure Agreement (NDA) is a form of “protecting" inventors’ ideas from being stolen by signing a contract. It does not stop the act of revealing your secret, but does create a contractual obligation with teeth to go after the revealing party. However, an NDA covering an idea is like trying to protect a trade secret. Once someone tells your idea or secret, you lose that competitive edge forever. Your only recourse is to sue for breaching the NDA and that won’t put the secret back into the shadows. For the most part, an idea that is not even on the blackboard yet is not worth anything in the business world. Presentation matters. Unless investors can see it and have some intellectual property registration to protect, an NDA is usually indicates your invention is immature. 1. Remember talking still counts as a disclosure. If you disclose something to another, does that other person have an obligation to keep what you are saying to themselves? Even if you can explain your idea without disclosing how it really works or how to build it, what business value would that conversation actually have? To provide the actual idea’s core value, you should at least have the audience promise that they will keep the secret safe and not disclose it to another. That is an NDA. Moreover, if the audience wants to know your secrets, they will sign one. 2. Even if they sign the NDA, they always have the ability to steal or disclose your idea. That means you must litigate. You file a lawsuit. You sue for damages. The whole suit is based upon your NDA. So that means you have to plan to litigate before you disclose your idea to another. Help draft your NDA as if you already had a breach. This allows you figure out both how you can be damages and what that damage is worth. You and the audience would agree that if a breach occurs, this is what will happen. 3. What if the notion of your NDA offends the audience? Move on. Knowing that you will have to file a lawsuit does not prevent dishonest people stealing your idea. Likewise, reverse engineering or a free use excuse may obfuscate your NDA enforcement attempts. Use your own sense to realize why someone won’t sign an NDA to gauge whether you could work with that person in developing your idea or assist paying for the development. It is better to not preview your idea to those who do not respect your rights to protect your idea. 4. An NDA is not perfect. There are many ways around enforcement. And remember enforcement does not mean that an NDA will stop a third or fourth party manufacturer. Eventually you may win the contract suit against everyone, but then the question is can you recover the damages? 5. Use your best judgment to start the relationship off right? Pick the right audience. Pick the right audience.
Call Your Lawyer The very first person you must tell about your decision to close your business is your business lawyer. You must notify your lawyer as soon as possible and ask as many questions as you need regarding rules specific to your type of business entity for dissolution. For example, businesses with several owners generally need to follow different steps than businesses with a single owner. Depending on your type of business entity, your lawyer will advise you on how to proceed. Hold a Shareholders Meeting If your company has shareholders, the second step is to hold a meeting and personally notify them of your decision to close the business. In this meeting, the board will typically put the issue up for a vote, giving each shareholder a say about whether or not closing the business is the right choice. This is a crucial step, as you will need the majority of the shareholders to agree with you in order to be able to close the business. However, you must make sure to check your company’s formational documents because they typically contain rules on how to dissolve the company. Find the Right Articles of Dissolution for Your Business In Florida, the paperwork requirements for dissolution are different for every type of business entity. These documents are called Articles of Dissolution. Once you find the right articles of dissolution for your company, you can either print the forms, fill them out, and mail them, or you can fill them out and submit them online. If your company has not issued shares or started doing business in Florida, you must use the form conforming to Section 607.1401 of the Florida Statutes. All other businesses must use the form conforming to Section 607.1403 of the Florida Statutes. You can find these forms on the Florida Department of State, Division of Corporations website. It is indescribably important that you fill out and submit the right papers, which is why it is best to speak with a professional – in this case, your lawyer – who is able to tell you exactly which form to fill out. If you do not have a business lawyer, contact Jurado & Farshchian, P.L. today. Notify Vendors, Creditors, and Employees In a situation involving insolvency, the owners of a company usually sell business assets to cover debts. You must notify your vendors and clients and make the necessary arrangements to complete all contracts and pay all outstanding invoices, fees, and sales taxes. You must also cancel all business credit cards, close all business bank accounts, and terminate all lease agreements. Additionally, you must make sure to properly and promptly notify your employees that you will be closing the business. Pay the Filing Fee Once you have filled out the correct form and gathered any additional paperwork, you will be ready to take the final step, paying the filing fee. Luckily, you can do this online, through the Florida Department of State, Division of Corporations website.
Our law firm is a leader in software infringement cases in the United States. Some companies cannot believe they got figure out. Some do not know how they were BUSTED. Here is a video that helps explain the "phone home" technology that many software companies use, including Vero and VB Conversion and how they know what you are doing with their software (literally on a daily basis and in many cases going back many years).
by attorney Bryan William Bockhop
An overview of what goes into selecting method/s of protection for a new product.
by attorney Steven M. Shape
This guide explains the steps you can take to protect your company's name and logo from being misused.
The terms trademark and copyright are often used interchangeably, but they don't mean the same thing. Learn the differences of trademarks vs. copyrights.