Copyright Law Blog

Clamping Down on the Use of Trademarks as Key Words

August 12th, 2009 at 12:39am Under copyright infringement

When Internet users search online for information, they use search engines like Yahoo, Google, and MSN. Because some page owners have paid for some of its links to the search engine websites and the links come up whenever the website owners results appear as a search result, there have recently been conflicts between the owners of trademarks and some third parties. Efforts are being made to clamp down and contain the unauthorized utilization and misappropriation of trademarks and other intellectual property items when it comes to Internet search related issues.
In one such trademark conflict, J.S. Wentworth complained that Peachtree Settlement Funding infringed the trademarks JG WENTWORTH and J.G.WENTWORTH. The Defendant had used these trademarks as keywords and had paid to have links appear to its own website immediately proximate to the link to Plaintiff’s website on the search-results screen each time a user of the Internet searched the Google engine for J.G. Wentworth or JG Wentworth.
Because Peachtree Settlement Funding and J.G. Wentworth are competitors in the field of structured settlements, Plaintiff claimed that Defendant had stolen potential customers and diluted the effectiveness of its various trademarks, and that this caused a subtantial profit loss for the plaintiff. Defendant Peachtree moved to have the complaint dismissed.
The court acknowledged two important operative issues:
1. Whether Defendant used the trademark as keywords in the Google AdWords advertising program under the Trademark Acts use in commerce. Owner of a trademark establishes rights through the use of the trademark in public marketplace.
2. Whether the use of the Plaintiff’s trademark infringed trademark rights provided for in the Act because it had a good chance of confusing the consumer.
On whether the trademark was used in commerce, Defendant argued that the trademarks use was not for the public to see, and was not meant to be associated to Peachtree Settlement Funding, only an analog to the users personal response to a trademark. Defendant claimed it was not used in commerce in connection with the sale of goods or services to confuse consumers. Disagreeing, the court decided that Defendants use of the trademarks as keywords in their Google AdWords links, designed to draw internet users, constituted use in commerce under the Act.
Regarding infringement, however, Defendant argued that using the J.G. WENTWORTH trademarks as keywords was not likely to confuse the consumer. Here the court agreed, and stated [a]t no point are potential consumers taken by a search engine to defendants website…the links to defendants website always appear as independent and distinct links on the search result pages. There was also no accusation that the Defendants ads and links that used the Plaintiffs were in any way discernable to [I]nternet users and potential customers, and that [d]ue to the separate and distinct nature of the links created on any of the search results pages in question, potential customers have no opportunity to confuse defendants services, goods, advertisements, links or websites for those of plaintiff. The court then decided that the use of Plaintiffs trademarks was not trademark infringement under the Trademark Act and the court dismissed the complaint.
The J.G. Wentworth v. Settlement Funding case confirms that it is not copyright infringement to use other companies trademarks in their online advertising keywords, in the opinion of this Pennsilvania court. Similar decisions have been made by other courts as well, including California, New York, and Virginia, and the Second Court of Appeals.
However, its important also that online advertisers such as Google AdWords and the trademark owners be aware that the issues of trademark infringement on these ads has not been resolved nationwide. Some courts have decided that purchase of a keyword does constitute use in commerce, and some have not reached a conclusion regarding the question of likelihood of consumer confusion. Other courts, such as New Jersey, California, Georgia, Minnesota, and the ninth Circuit Court of Appeals, have focused on the facts at trials instead of addressing the issues of use in commerce.
In general, however, the courts seem to side with the advertisers who use the keywords rather than the owners of trademarks, although it may be a while before the issue is fully resolved.

Websites and Intellectual Property, Patents, Trademarks, and Copyrights

August 7th, 2009 at 06:41pm Under copyright protection

To clear up confusion as to how to protect the Intellectual Property of websites, this article will give a brief explanation on how websites might be protected under Patent Law, Trademark Law, and Copyright Law.

The first concept to understand regarding Intellectual Property is the fact that patent law, trademark law, and copyright law overlap.  It is possible to get a patent, a trademark, and a copyright on a bicycle.  A patent can be applied for a unique braking system on the bike.  A trademark can be created for a unique and non-functional look of the bike (and word marks).  And a copyright can be extended to various graphics on the bicycle as well.  The three pillars of intellectual property: patents, copyrights, and trademarks are no mutually exclusive.

As such, a website which incorporates a novel and non-obvious method or process can be afforded patent protection.  One bad example is the Amazon 1-click patent.  This is a bad example in the sense that the patent was probably improperly issued due to serious questions related to USC 103 which requires non-obvioiusness.

A website may also be able to qualify for trademark protection through various logos, words, colors, sounds, or other source identifiers which are placed throughout the website.  A consistent look throughout the website pages can be given trademark rights.  A closely related issue may be cyber-squatting which is actually covered under another narrow law.

And a website may also have copyright rights as well.  Most websites have an assortment of images, articles, artwork, and other text which certainly comes under copyright law.  Moreover, any software running on those websites may also qualify for copyright law through their source code and object code which may be registered with the Library of Congress.

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Trademarks And Copyrights And His Orchestra

July 30th, 2009 at 06:40am Under copyright protection

Definition of Trademarks: Certain words, phrases, names, designs or logos used on the Site constitute trade marks, service marks or trade names of TopShopping or other entities as indicated. The display of any such marks or names on the Site does not imply that a license has been granted by TopShopping or such other entities.

Definition of Copyright: The copyright for any creative concepts and copy developed by Sustainable Media shall be automatically transferred to the client upon full payment of services. Sustainable Media reserves the right to use examples of the completed work for the purpose of future publications on copywriting, educational purposes and then marketing Sustainable Media’s business. Where applicable, the client will be given any necessary credit for usage of the project elements.

So you’ve put all this work into your business: you’ve got a name, you’ve made some marketing materials, even written some things for your customers. If you don’t want your competitors to be able to take what you’ve done and exploit it, though, you’re going to need to take some steps to protect yourself.

Your name is one of the most important assets your business has — it’s how your customers identify you. Knowing your name is the first step to trusting you and recommending you to others. But what can you do if you’re afraid that someone else might start using your name, or simply start another company with a similar enough name to confuse people?

You can trademark both your business’ name as well as the names of any products you sell. The only condition is that they can’t be too similar to names that someone has already trademarked, and you can’t usually trademark words that are in common use.

Copyrights are similar to trademarks in terms of the kind of protection they offer, but different in how they work. In almost all countries, ownership of copyright is automatic, and costs nothing. The moment you write (or draw, or record) something, you own the copyright on it, and can take action against anyone who makes a copy of it without your permission. This article you’re reading right now, for example, has the automatic copyright. If you decided to copy it without permission and put it on your own website, then that would be illegal. Not that you would do such a thing, of course.

A copyright lasts longer than a trademark: typically it lasts until you die, and then a set number of years after that, depending on your country and the kind of thing that was copyrighted. After the end of this time, the work becomes ‘public domain’, free for anyone to use.

Of course, copyright is a right, not something that you absolutely must go along with. If you want to give people permission to freely use and redistribute something you’ve made, then you have the legal right to do this. You can even give up your copyright on a piece of work altogether, simply by writing on it that you no longer want to own the copyright.

“In the business world an executive knows something about everything, a technician knows everything about something and the switchboard operator knows everything.”
Harold Coffin.

ASSIGNMENT OF PATENTS, TRADEMARKS, AND COPYRIGHTS

July 28th, 2009 at 12:40pm Under copyright infringement

The main difference between assigning a patent and licensing a patent is important.  Assigning Patents, Trademarks or Copyrights is basically selling the complete ownership interest in that patent, trademark, or copyright.  And the licensing of a patent, trademark, or copyright is like “renting” that patent, trademark, or copyright.

Assignment of Patents, Trademarks or Copyrights can be made in whole or in part.  In other words, you may assign away 50%, 1%, or 99% of your interest in that Patent, Trademark, or Copyright.  Assignments may be integrated into a contract, or may be drafted separately.  And the assignment of Patents, Trademarks or Copyrights can be fairly straight forward.

By way of contrast, the licensing of Patents, Trademarks or Copyrights is essentially “renting” those Patents, Trademarks or Copyrights.  In the most strict legal sense, a license for Patents, Trademarks or Copyrights is basically a promise not to sue the licensee for infringement of those Patents, Trademarks or Copyrights which belong to you.  These licenses are typically time-constrained.  They may be made for a fixed number of months, years, decades, or contingent upon a specific event.

Assignments, like deeds, are not time sensitive.  Once you assign those Patents, Trademarks or Copyrights, your rights in those Patents, Trademarks or Copyrights are gone forever.  In other words, you cannot assign those rights in your Patents, Trademarks or Copyrights for a period of months, years, or decades.

For this reason, an assignment of Patents, Trademarks or Copyrights will be more valuable than a simple license to those Patents, Trademarks or Copyrights.  As such, any assignment you make should be duly recorded with the USPTO, Library of Congress, or your Secretary of State.

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Best Practices for Trademark Protection in China

July 20th, 2009 at 06:41pm Under trademark law

While Chinese Intellectual Property laws have seen considerable improvements over the years, they can do little to supplement the lack of initiative on behalf of businesses that fail to timely register their trademark rights. The most effective protection that trademark holders can achieve over their rights begins by exercising proper diligence and care. Being able to take full advantage of the possibilities offered by the legal framework governing this discipline in order to achieve the most adequate level of security is based upon this fundamental assumption. This is a rule valid worldwide and China is most certainly not the exception. However, a sad series of common misperceptions often distort this reality.With this in mind, this article delves into some of the fundamentals of securing trademark protection in the country.WHERE TO STARTIt is important to note from the outset that China essentially follows standard international practice in terms of the cost, the complexity, and the steps entailed in securing trademark protection and registration. It is in no small part thanks to China’s participation and accession to the World Trade Organization. There are certainly a few particularities that are not present in other countries –particularly Western ones-, but most negative can be easily overcome with adequate preparation and, most importantly, having well-versed local counsel.Registration is naturally the first and most basic step that needs to be undertaken. Nevertheless, it never ceases to amaze how foreign entities initially neglect this crucial aspect while misguided by fabled notions that wrongly override their common business sense. In fact, many –if not most- of the best practices that guide business decisions in the rest of the world apply equally to China. No emphasis can be spared in highlighting that this is the key to overcoming some of the obstacles in the field.Wisdom accrued through past experiences dictates that the ideal time to proceed with registration is even before entering the Mainland’s market. It is best to begin as early as possible; a philosophy underlined by the fact that the mere use or adoption of a trademark in connection with a particular commercial activity does not grant the holder exclusive rights or a priority for their acquisition.Indeed, China uses a “first-to-file” system, meaning that under most circumstances a prior registrant’s claim is more likely to succeed over that of a prior user. There are many tales of competitors or sadly even employees or local trade partners that have come to realize that this is a fact that can be used to leverage, take advantage of, or pressure foreign entities that have not proceeded to timely address the necessity of securing their trademark rights. This is not the case, however, for well-known marks thanks to the extended privileges granted to them under the Paris Convention. REGISTRATION WITH CHINESE CHARACTERISTICSWhile beginning the process of registration is a positive first step in the right track to commence a successful trademark enforcement strategy, it is important to consider that branding and localization not only play an important role, but also are a necessity to account for the cultural and practical considerations that arise due to the language barrier.Some of the most successful cases of entities conducting business in China are tied to masterful local branding. Take for instance the case of the “Coca-Cola” or “Pepsi” trademarks. Despite the language differences, they have cleverly managed to phonetically tie their valuable local and global brands, while also giving Chinese consumers a meaning that they can relate to in their own language. Respectively, both trademarks arguably sound somewhat similar in Chinese and Western pronunciations, thus being able to take advantage of their associated worldwide goodwill, but also –through a clever play of words- adopt a completely new meaning when written in Chinese characters, which makes them far more appealing locally. While these may be extreme examples in the sense that considerable branding effort was undertaken by the owners to come up with an optimal marketing strategy, they serve to exemplify a basic fact when it comes to Chinese trademarks. That is, most consumers have difficulty reading or understanding the Latin alphabet. This can be overcome by employing the services of a branding agency or the assistance of local counsel fluent in the language to help adapt the mark and the name of the owner to the market. However, it should be noted that the Chinese Trademarks Office can register marks written both in the Latin alphabet and in Chinese characters. In fact, a single application can cover both instances. However, to ensure that the rights holder gets the broadest possible scope of protection, it is advisable to secure each registration in as many forms and variations as deemed convenient. Of course, this entails additional work when applying for registration and during the process of conducting searches to clear the mark for availability, but not doing this may entail the risk of crippling the registration’s effectiveness.While obtaining the corresponding registration is as simple as in most jurisdictions, a not-so-desirable characteristic of the Chinese process is its duration. Obtaining approval can take several years under normal conditions. However, this is no cause to despair, as senior applicants are granted protection against junior applicants for conflicting trademarks as of the date of filing, provided that all substantive requirements for registration are complied with.THE BORDERS OF PROTECTIONOne final fact that should be noted, while not strictly related to the registration of trademarks rights in China, but it does have significant importance over their enforcement, is that customs authorities have been empowered with their own monitoring system to help prevent the export of counterfeited goods. Trademark owners, provided they are registered in China, can now apply for protection of their trademark rights directly at the borders, by having customs agents actively check for potentially infringing exports. Product samples, packaging and even suspected instances of piracy can be submitted before their consideration, which causes them to, ex officio, take measures to curb and stop these kinds of practices when detected. Simple cares such as the ones mentioned in this article can help prevent some common pitfalls when entering the Chinese market. In the trademarks field, many problems can be avoided by taking simple precautionary measures that go a long way in avoiding the need to engage in costly and uncertain litigation.

How to Profit From Intellectual Assets you May not Know you Have

July 20th, 2009 at 12:42am Under intellectual property

If you’d like to capitalize on your business’ intellectual assets, there’s an old proverb that will fill the bill, if you’ll learn how it applies today: “Finders, keepers; Losers, weepers.” The Playground goes entrepreneurial!

Our biggest corporations have always hovered over their copyrights, their trademarks and their licensing agreements, protecting them through legal means. This can be just as profitable for companies that aren’t that big if you’ll look carefully at your processes and then learn how to promote and protect them like the big boys.

The management of intellectual assets (your companies ‘property’) isn’t only about how many new products you can bring to the market; it’s about new ideas and innovations that improve on existing goods and services. It’s all a matter of “finders, keepers,” which can be just as easy for the smallest firms to play as it is for the largest.

For all the years you’ve been in business, has there been some product or process that’s been improved on for the traditional marketing of your goods? Did your office assistant come up with a new “Eureka!” for keeping track of your client’s habits or abilities? Did you add two new steps to a production process that created more cost-efficiencies?

Look deeper. Is the way your service or product brand worth protecting? Can it become a profit generator by co-branding with another company? Inc. magazine in its May editions cited the case of Starbucks licensing its name to Jim Beam for a new liqueur, and Harley-Davidson partnering with Coca-Cola to reap millions of dollars in royalties from products incorporating both names.

Is what you know innovative (different) and would it be valuable to someone else? If your answer is yes, learn how to protect and profit from these assets or risk joining the ranks of “losers, weepers.”

Four additional tips to keep in mind:

1. Industry reports cite the growing number of Intellectual Property (IP) lawyers courting small firms instead of traditional big business clients. Go to Google.com and type in “IP lawyers” along with your state or city’s name. Some IP law firm Web sites carry free articles on IP trends.

2. Non-Disclosure Agreements (NDA) are mandatory when you’re developing some new product or process and you’re seeking help from outside your company. You’ll protect your asset from the beginning. One smart article on how NDAs work is at About.com, a product of the New York Times Co., at http://management.about.com/cs/ipandpatents/a/NDA062199.htm?p=1.

3. Don’t let your assets loose, even inadvertently, through outgoing emails. Sandhills Publishing Company’s www.processing.com shares safeguards for your outgoing email procedures at www.processor.com/mirapoint-Inc.

4. Consider an outside sleuth to help you find your hidden intellectual assets. Have you ever enlisted the help of a friend to help you find a misplaced item? Invariably, you’ll hear, “Well, there it is, right in front of your nose.” Outside consultants with keen expertise and sharp insights into how to spot potential intellectual assets can prove exponentially more valuable to your bottom line than that sharp-eyed friend.

The Difference Between Trade Secrets And Trademarks

July 19th, 2009 at 06:43pm Under trademark law

Some people get confused between trade secrets and trademarks. A trademark is something that is publicly recognized and known as being officially associated with a particular company. In contrast a trade secret can be a much more broad definition and by its very name is not made public.
According to the laws in most states, any device, pattern, formula, idea, or collection of information that gives the owner an advantage in the marketplace and is protected by the owner in a way that shows that it can be reasonably expected to keep their competitors or the public from finding out about it without stealing it is considered a trade secret.
There are many examples I can give of trade secrets. In an actual product, a trade secret could be the way certain ingredients are combined in the formulation of a nutritional supplement. Recipes, in particular those employed at commercial restaurants, are considered to be trade secrets.
One very famous one that I can think of right off is Colonel Sander’s recipe for his Kentucky Fried Chicken. An idea for an invention that one has that they have not filed for a patent on yet would also be considered a trade secret, as are the complex algorithms that search engines like Google use to give us search results online.
Trade secrets are the opposite of other types of protecting of intellectual property such as trademarks and patents. The whole idea of a trade secret is to keep it from public knowledge and it is basically something that a person or company does themselves. Your trade secret will be given protection under law until you make the information public.
Companies and individuals protect information that they are unable to guard with other legal means such as patents and trademarks. There are numerous things that can be considered trade secrets. An idea that will give you a big jump over your competition in a particular market or even an idea for a piece of software or a website would also be a trade secret. Business information that you keep secret and only allow access to by employees such as marketing plans, costs, and pricing would be protected under law.
According to the law, the owner of a trade secret can legally prevent employees from using trade secret information or disclosing it by binding them with confidentiality or non-disclosure agreements. They also have legal protection from people who get the information by stealing it or through industrial espionage as well as people who get the information knowing that it is a protected trade secret.
The best way for a company to protect itself legally is to have employees sign a non-disclosure agreement, also known as an NDA. You should also have them signed by anyone that you do business with such as lenders and investors. An intellectual property attorney can help you with drafting this important document.

Why is a Trademark Important?

July 19th, 2009 at 12:42am Under trademark law

How Does Common Law Apply To Trademarks Used On Websites Intended For Nationwide Commerce?

July 13th, 2009 at 10:26pm Under trademark law

I understand that common law can protect a trademark in a limited geographical area. The area would be the locality that the business operates in. However, if a trademark is used on an Internet website that was designed to solicit business anywhere, does common law extend to everywhere the website can be viewed?

Introduction To Copyrights, Patents, And Trademarks

July 12th, 2009 at 06:35pm Under copyright act

What is a copyright? Can everything be copyrighted? A copyright is the expression of an idea. The idea itself is not copyrighted. Ideas can be patented and I will talk about patents later.
Let’s consider the example of a story: a poor man who found lots of cash on his way back to his home from his work. He decided to keep the cash to improve his financial situation. But he could not sleep at night because he was haunted by strange voices that told him to find the owner and return the cash. This idea cannot be protected. Anybody can write a short story based on the idea. What is protected is how the author expresses the idea in the form of texts, illustrations, drawings, photographs, etc.
Once an expression is copyrighted, others can still use it for fair use. You can tape a few 15 seconds video clips from a copyrighted TV programs and post it in your video blogs about a commentary on the program or broadcaster, etc. This will be considered a fair use and you will not infringe the copyright.
After a copyrighted material expires, it falls into the public domain. The life of a copyrighted material is the life of the author, plus 70 years. The public domain copyrighted materials can be reproduced without any infringement. For example, if you have an old picture with expired copyright, you can post the picture in your website.
In the USA, the Copyright Act of 1976 governs all copyrights. The Copyright Act does not protect any ideas, procedures, process, systems, and methods of operations, concepts, principle or discovery regardless of how it is expressed. It is the expression that is protected by the Copyright Act. You cannot copyright titles, names, slogans, and short phrases even if those have new ideas.
As mentioned earlier, the life span of a copyrighted material is the author’s life, plus 70 years in most cases. There are a few exceptions to this rule and they are: un-renewed copyrighted materials published pre-1964, materials published before 1978 without a copyrighted notice, and materials published by the US Government.
All copyrighted materials should be fixed in a tangible medium (papers, CDs, DVDs, etc.). If it is not fixed in a tangible medium, it is not copyrighted. For example, your speech to the graduating class that was never recorded, taped, or published is not protected under the US Copyright Act. Your can register your copyrighted materials with the US Copyright Office. All expressions of ideas are copyrighted regardless it is registered with the Copyright Office or not. If you register the expression with the Copyright Office, you can receive statutory damages and attorney’s fees if an infringement occurs. If the material is not registered with the Copyrighted Office, you can only recover actual damages.
A patent holder of an invention has the right to exclude others from using, selling, and making the invention. The United States Patent Office (USPTO) awards patents. There are three kinds of patents: utility, design, and plant patents.
The most frequently used patents are utility patents. They have a life span of 20 years from the effective filing date if the filing date is after June 8, 1995. A utility patent also requires periodic maintenance fees. A utility patent must be a novel, useful, and non-obvious process, machine, manufacture, or compositions of matter or improvement to the same. There are three things that define a utility patent. First, it must be novel. Nobody should have invented, published, used, or manufactured the invention before. Second, one should be able to do some thing useful with the invention. If it is just novel without any usefulness, it cannot be patented. A patentable invention should not be obvious to the person with ordinary skills in the same technology space related to the invention.
A design patent is the appearance or aesthetic of an article and it has a life span of 14 years after the patent is issued. A plant patent, as the name applies, protects a distinct plant produced asexually. It has life span of 20 years from the filing date.
A trademark is word, symbol, design, or a combination of one or more of these items. It is used to identify the source of goods or services of one company and differentiate a company’s goods and services from others. A trademark should not be confusingly similar to other existing names or symbols.
A trademark is registered with the USPTO. It can also be registered through the state’s Secretary of State’s office. If the trademark is not registered, the rights to the trademark may be geographically limited. You cannot use the symbol