New Photographers: Signed Contracts Needed at the Start of Every Project

“He Walks Dogs” by Damian Gadal from Flickr (Creative Commons License)

I recently heard a question from a new photographer. They are new to the business and focused on building their brand and rapport with potential clients. Their question was, “Should I have a contract on hand at the beginning stages of my business?”

My response was an emphatic: “Yes!”

Photography Contracts: Every Job, Every Time

A contract is a relationship management document. It puts everyone on the same page about what each side is giving and getting and sets the expectations about how each side should behave.

I tell my photographer clients to never accept a job without a signed contract, this applies even to TFP shoots (trade for photos). Your contract should outline what the client is hiring you to do, how/when you’ll be compensated, how the client can use the images, and who owns the copyright. It should also have terms that address how problems will be resolved.

If the Prospect Balks at a Contract

If you have a prospective client who says they “don’t think a contract is necessary,” turn and run. This raises to red flags for me: either they don’t understand how the business works, or they have devious reasons for not wanting a contract that could bite you in the butt in the future.

One of the best pieces of advice I got early in my career was, “You never regret the client you didn’t take.” I have had no regrets about declining a representation when a client balks at how I do business. Every time I decline one of these clients, I feel like I’ve dodged a bullet.

Don’t Worry that Requiring a Contract will Push Clients Away

Don’t worry about being perceived as “pushy” my holding firm that a contract is required. You can be polite and respectful while say, “This is how I do business. If you don’t want to sign a contract, that’s fine, but you won’t be working with me.”

You set the rules for how you work with clients. If they balk at your contract (assuming it’s reasonable), they shouldn’t be your client. A reasonable client would expect you to require a contract. A person with any business acumen won’t want to work with you without one.

Let the prospects who don’t want contracts to self-select out. If you have problems with a client at the beginning of the relationship, it’s an indicator that they will be problematic throughout the project.

If the prospect asks for a referral to another photographer, I recommend saying, “All the reputable photographers I know won’t take on a client without a signed contract.”

It’s Cheaper and Easier to Prevent Legal Problems than to Fix Them

This has been proven time and time again in my legal career. When a client comes to me with a business dispute, one of my first questions is, “What does your contract say?” When my client doesn’t have a contract, I have to piece together the terms of their agreement from emails, text messages, and the parties’ actions. Often my client spends more just having me piece these things together than what it would have cost them to have a custom contract template made.

Additionally, in a dispute, it’s much easier to create a demand letter than references the terms the other side agreed to and back them into a corner where they have to try to defend the indefensible rather than assert what the terms of the agreement are from the assembly of bits and pieces of communications and actions that the other side can more easily debate.

Lights Camera LawsuitTM

If you need help with your photography contracts and managing client expectations, I hope you’ll check out my online course coming out later this year: “Lights, Camera, Lawsuit: The Legal Side of Professional Photography.” It will address the most common questions professional photographers face, including what terms to include in every contract template. Leading up to the release date, I’m sending weekly updates with tips about the legalities of photography. Please add yourself to this exclusive list to stay in the loop, and get first dibs on discounts!

Lawyer Responds to Photographers’ Problems

“Photo Shoot” by Cliff from Flickr (Creative Commons License)

Last week, I saw a thread in an online photography group that started with a simple question: “What problems do you face as a photographer?” After reading hundreds of the responses, I wanted to respond to some of their problems as both a lawyer and an entrepreneur:

Competition – Other Photographers Offering Half the Price

My first thought when I read this was, “There’s a good chance it’s also half the quality.” You never want to be in a race to the lowest price. Instead of worrying about price, focus on what makes you different from the competition.

If someone wants a cheap photographer to document their once in a lifetime event, like their wedding, that’s their choice. If I were facing a client who said, “I can get someone to photograph my wedding at half this price,” I hope my response would be something like, “This is your special day. You have to choose who you trust to capture these moments for you.”

Personally, I have no problem when a client self-selects out from working with me if they don’t want to pay my rate. It’s better that they decide that early and go with someone else.

This problem reminds me of a sign I saw in a tattoo parlor: “Good tattoos aren’t cheap. Cheap tattoos aren’t good.” The same is likely true for photographers.

Clients Don’t See What We’re Worth

Part of being an entrepreneur is educating prospective client about the value we bring. It’s not that skilled photographers cost so much, but they’re worth so much. Some of the ways you can do this is by having a high-quality portfolio and a stellar reputation.

Remember: You’re not just taking photos; you’re creating an experience – every interaction from the first “hello” to the final deliverable. Your ability to take and edit photos are important, but so are the way you carry yourself, how you communicate, and your creativity, work ethic, and confidence in your skills. All of those things add or detract from your value as an artist. You want to be in a position where people want to hire you, not just any photographer.

I had a similar situation when I hired the designer who created the logos for Scarlet MavenTM and Lights Camera LawsuitTM. I could have used a discount service like 99 Designs or Fiverr, but I didn’t want to entrust a stranger with this task. I wanted to work with Square Peg Creative and Dina Miller. I’d seen and loved the way she created. I was willing to pay extra for that experience, and the resulting logos that I love.

How to Tell People I’m a Proper Photographer

The best way to tell people that you’re a professional photographer is to act like one. Create a business entity, a website with a portfolio, and contract templates for your services. If you want people to take your seriously, you have to act like a professional.

Speaking of Contracts

Contracts are relationship management documents. Once a client signs the contract, they are bound by its terms. Whenever there’s a problem, you can refer back to the contract and the terms they already agreed to. This is where you can put information like,

  • The deposit is non-refundable.
  • The photographer chooses the best images to show client. The client will not get raw images.
  • There’s no guarantee you’ll capture every image the client was hoping for.
  • The client is not allowed to edit the final images. This includes adding filters or stickers or cropping the images.

There’s a video I recommend to almost every entrepreneur called F*ck You, Pay Me, that features a graphic designer and his lawyer talking about how they use contracts to make sure the client pays per the contract’s terms. The suggestions work for many types of professional creatives.

Clients with High Expectations and Low Budgets

While many people don’t like talking about money, it is a topic you want to discuss early in the vetting process by either giving the prospective client your price list or asking about their budget. Don’t be afraid to be frank with clients who have expectations that are way beyond what they can afford. Tell them what they can afford based on their budget, as well as what you could do if they are willing to pay more so they can make an educated decision about what they want.

Clients Who Try to Negotiate on Price

In the photographer-client relationship, they are hiring you. You get to decide what is and is not negotiable in your contract. If your rates are not negotiable, be clear about that the first time they ask.

In my practice, I hand pick who are my pro bono clients and who gets a discount. That’s my call, not the other way around.

Here’s a tip I saw from another photographer: Make your prices all-inclusive. Don’t list separate prices for shooting and editing, because it opens the door for clients to try to haggle on one or the other.

Companies that Want You to Work for Free or Magazines that Want to Use Images for Free

Oh, it’s so cute when people want you to work for “exposure.” You get to decide how you respond to those requests. Here are some of my favorites:

  • Exposure is not a currency that my landlord accepts.
  • I can’t pay my mortgage with exposure.
  • People die of exposure.

Chasing Payments

Ideally, you want to create a photographer-client relationship where it’s easier to comply with the terms of the contract and pay on time, than not. Many photographers charge a non-refundable deposit to book a shoot or event and require the balance to be paid in by the day of the shoot or event. At the latest, I don’t recommend a photographer provide proofs unless they’ve been paid for the shoot.

You also want to have terms in your contract about cancelled appointments, late payments, and non-payments, so that you set yourself up to get paid what you’re owed in a timely manner.

Are You Free Next Week?

You can put the information about how far in advance a prospective client should expect to book you near your contact information or in your FAQs if you have them.  

People Assuming You will Photoshop them Perfect

This problem reminds me of Christian Siriano on Project Runway when he said, “I’m not a miracle worker, lady. I can’t make you have an ass!”

In talking with your client, set some expectations about what Photoshop can and can’t do. Assume your client doesn’t know anything about photography, unless they are a professional photographer themselves. You can educate your clients by showing them before and after images so they can see the type of edits you’ll be doing for them.

It’s ok to have fun with it, if that’s your style, by saying things like, “If you’re 5’2”, I can’t make you 5’10”,” or “If you have a ‘dad bod,’ I can’t transform you into Thor.” On the softer, more realistic side, remind your client that it’s your job to capture them looking their best, not like someone else.

Bonus Tips from my Experience as Model: Posing

Several people said they had problems with posing models or giving direction. As a model, my response is, “Don’t be afraid to try.” You’re the one behind the camera. I can’t see how I look.

If you give a model a pose and it doesn’t create a good image, try something else. I won’t know if you didn’t get the shot you wanted. I’ll think you have lots of ideas.

It’s ok to think out loud and say things such as, “I like how this light is hitting your eyes, let’s try this.”

I’ve you are afraid you won’t remember the ideas you wanted to try from other images, bring notes to the shoot. It shows you’re prepared, and thinking about what types of images might be best for me.

Learning how to pose models and give direction is something you develop over time, with practice, and watching others. Unless you’re doing some extreme work, no one is going to die. And don’t forget – I can’t see how I look, so as far as I know, whatever you’re trying is brilliant.

Lights Camera LawsuitTM

If you’re looking for help with the business or legal side of being a photographer, I hope you’ll check out my online course coming out later this year: “Lights, Camera, Lawsuit: The Legal Side of Professional Photography.” It will address the most common problems professional photographers face, including contracts, copyright, and managing client expectations. Please add yourself to this exclusive list if you want to stay in the loop, and get additional helpful information leading up to the release.

How to Give a Discount on your Photography Services without Discounting your Value

The Belly Dancer with the Fans” by mmockingbird from Flickr (Creative Commons License)

Sometimes photographers, like all service providers, want to provide a discount for their services. Perhaps it’s for a friend, someone you’ve always wanted to work with, or an organization you know can’t afford you and you want to help.

Nothing Wrong with a Discount

There is nothing wrong with offering a discount for your photography services, whether it’s a special one-off or a promotion that’s available to any client.

The challenge is you don’t want to cheapen the perceived value you provide. When a person buys an item at a cheap price, they may have lower expectations about it and will perceive it as less valuable than a similar product that performs the same function but costs twice as much. You don’t want your clients to discount the value you’re giving them, even when they get it at a discounted price.   

Have you noticed that it’s often the clients who are getting the biggest discounts who complain the most? I made that mistake once. I quoted someone an exceptionally low flat fee to do their contract because I thought it would be an easy project. The nitpicked so much and requested so many changes, that by the time it was done, the amount I made per hour of work was laughable. (This was also the client who taught me to put a cap on the number of edits I’d do on a flat fee project. If they wanted more edits after that, they had to pay hourly.)

Always Show a Photography Client your Value

Even when you give a client a discount, always include your standard price and then the discount. Being a professional photographer is two jobs in one – you’re an artist and an entrepreneur. The entrepreneur’s job includes educating clients and prospects what you are worth. Photography clients are not just paying for your time, but also your talents. Remind them about the value you bring to the table, regardless of what they’re paying.

This tactic is not offensive.  You see this when you buy things online. The website always starts by posting the price and tells you how much of a discount they’re giving you and the price you’re getting.

How to Write an Invoice or Contract with a Discount

This is how I’d write an invoice or payment section of a photography contract that includes a discount:

Sitting Fee:                       $200.00

I-Like-You Discount:           -$75.00

Total Sitting Fee:               $125.00

You get to choose what you’re going to call your discounts. I encourage my clients to be creative and include their personality in their contracts, but you have to decide what works for you.

Lights Camera LawsuitTM

If you need help with your photography contracts and managing client expectations, I hope you’ll check out my online course coming out later this year: “Lights, Camera, Lawsuit: The Legal Side of Professional Photography.” It will address the most common questions professional photographers face, including how to explain these concepts in plain English. Leading up to the release date, I’m sending weekly updates with tips about the legalities of photography. Please add yourself to this exclusive list if you want to stay in the loop. (Psst! People on this list also get first dibs on discounts!)

Clarify What Your Photography Client is Buying: Prints vs Digital License

“Shooting the Dress” by Garry Knight from Flickr (Creative Commons License)

Professional portrait photographers generally need at least two contracts when working with a client: one for the sitting and one for the deliverables. For the latter, make sure the client is crystal clear about what they are, and equally important, what they are not buying. Having clarity on the front end will prevents problems on the back end.

Assume Clients Don’t Understand Copyright

Part of your job as a professional photographer is to educate your client about the basics of copyright and how it applies to images you’ve been hired to create. Many people assume that they are allowed to take a print, scan it, and share online or via email.

In my pre-lawyer life, that’s what I thought. I spent plenty of time in the computer lab during my undergrad scanning photos. There was even a bulletin board dedicated to the photos that people left in the machine.

This is still an issue for Joe Average people. Here’s a real question that recently came across my screen: I hired a photographer to take family pictures. I want to share them online and with extended family. The photographer says I can’t do that. Why?

I suspect this person bought prints and not a digital license, or they have a license but it doesn’t include an allowance to distribute the images.

As a risk-adverse lawyer, I would put specific verbiage in the contract that states what the client can and can’t do with the photos, including that only the digital version the photographer provides can be used to share the images with family and friends, probably in bold print.

This serves two purposes:

  1. It protects your copyright, and
  2. It maintains the quality of your work.

It’s also a good idea to include the information about your socials so they can tag you. (Good clients give credit their photographer when posting images online, even if they’re not required to.)

What the Client gets with Prints

When a client buys prints, they are buying the tangible object – the picture on whatever medium it was printed. They are buying the thing. They are not getting the copyright right or any copyright rights (unless that’s part of the contract they signed).

The limits of what someone can do with a print are similar to what they can do if they bought a book. They can display it, sell it, give it away, destroy it, etc. What they can’t do is make copies of it.

Scanning a print is making a copy. So is taking a photo of the photo.

I’ve seen people do this at amusement parks. They don’t want to buy the photo the park took of them on the rollercoaster, so they take a photo of the screen where the image is displayed – so they take photo of the photo. When I’ve seen this happen, the teenage clerk usually says, “We’re not supposed to let people do that.” Now you know why. 

What the Client gets with a Digital License

What a client can do with a digital license depends on the limits within the license itself.

Whoever owns a copyright has the exclusive right to control if and how the work is copied, distributed, displayed, performed, and what derivative works can be made from it. If I were writing a license for a photographer, I’d address all five of these rights – including “perform,” even though that’s not a verb we typically use in regards to photographs, but I’d rather be thorough.

Most of the time, the photography licenses I draft are for a non-exclusive, perpetual, worldwide license. It also addresses whether the licensee is allowed to use the images for commercial use. Sometimes the photographer requests additional provisions, like one that says the licensee isn’t allowed to alter the images, which may include cropping.

Following the license provision, I often add a sentence that states all other uses of the images must be approved by the photographer in advance.

Solution: All Print Packages Include a Digital License

One way to address this issue to require clients to purchase a digital license when they’re purchasing prints. The client won’t have to scan any images if they already have digital versions.

When you first meet with a client to discuss their needs, ask them about what they want to do with the final images, including how they want to show them to others. If you hear a client talking about how they can’t wait to share the photo with family/friends – clarify what they mean and make sure purchase a package that suits their needs.

Lights Camera LawsuitTM

If you need help with your photography contracts and managing client expectations, I hope you’ll check out my online course coming out later this year: “Lights, Camera, Lawsuit: The Legal Side of Professional Photography.” It will address the most common questions professional photographers face, including how to explain these concepts in plain English. Leading up to the release date, I’m sending weekly updates with tips about the legalities of photography. Please add yourself to this exclusive list if you want to stay in the loop. (Note: This venture is separate from my law practice, and this list is completely independent from the Carter Law newsletter.)

How to Respond When Someone Steals Your Photo

Running with the Seagulls by Ed Schipul from Flickr (Creative Commons License)

Photographers need to be mindful of the possibility that some people may use their photos without permission. People will pull images to use on their website and social media posts. Additionally, there are people who think they have rights to a photo merely because they’re in it. I’ve even heard of hair and makeup artists who take photos from the shoots they have worked on to use them in their portfolio.

This issue is compounded by the fact that there is inaccurate information about photo use on the internet. Some sources assert that you can use any photo you find on the internet as long as you give an attribution and a link to the original. They think they’re giving you free publicity, but what they may be doing is committing copyright infringement and telling you about it.

Start with the End in Mind

When I work with clients who believe their copyright has been violated, one of the first question I ask is,

How do you want this to end?

Knowing what the client wants as a result of my work tells me what avenue for recourse they’re interested in pursuing.

To maximize the likelihood of achieving your desired outcome, it’s best to decide before your photos are stolen how you want to respond to the alleged infringer so you can be prepared in advance for when it happens.

Always Respond When Someone Uses Your Photo Without Permission

You don’t set the precedent that people can use your photos without a license. If you let others use your work and then you want to assert your rights against another infringer, the infringer could point to your past behavior and argue that since you’ve allowed others to use your images without repercussions, that this new infringer should be treated the same.

(This is why you hear about companies sending strongly worded cease and desist letters to minor infringers. They have an obligation to protect their intellectual property.)

There are five ways you can respond when someone steals your photo:

Option #1: Grant Permission

If you’re ok with someone’s use of your image, you can grant them permission after the fact. It can be something simple like

Hi there. I noticed you’re using my photo for XYZ. I’m ok with uses like this, but in the future, you need to ask my permission in advance. I grant you permission for this use.

Option #2: Cease and Desist Letter

This is a letter from you (or your lawyer) to the suspected infringer that informs them of the copyright rights they violated, directs them to remove the image by a specified date, and tells them what you’ll do if they don’t comply. Be ready to follow through on whatever you threaten/promise in your letter, or you’ll lose credibility.

These are sometimes referred to as the “nastygram,” especially when it’s written by a lawyer and the client’s goal is to put the fear of god in the person so they comply. There is no rule that says you can’t send a letter that says,

I love that you love my photo, but you need to remove it by . . .

Option #3: DMCA Takedown Notice

DMCA stands for Digital Millennium Copyright Act. This option is only available in situations where your photo and the infringement of it are both on the internet. Instead of sending a cease and desist letter to the person who stole your photo, you send a takedown notice to the company that hosts the website where the infringement is occurring. Some social media platforms have a form on their site for submitting a takedown notice with designated spaces for all the information you’re required to include in a DMCA takedown.

Option #4: Send a Bill and a License

There is at least one photo licensing company that is notorious for doing this, but any photographer can send (or have their lawyer send) a letter to the suspected infringer that says,

By using my photo, you’ve agreed to my licensing terms. Here’s a copy of the license and your bill!

If you want to use this option, it’s ideal if you have your licensing terms or at least information about licensing on your website.

Option #5: Sue for Copyright Infringement

This option requires the most work in advance compared to the other options because you must register the photo’s copyright with the U.S. Copyright Office in order to be eligible to sue for infringement. There are time constraints in which you have to register you work in to be eligible for statutory damages, including attorneys’ fees. Additionally, your photo has to be stolen by someone who can afford to pay the damages, otherwise you may never collect (and you’ll likely have to pay for your attorney yourself).

If registered your photo too late, you can still sue, but you can only get your actual damages, and you have to pay your attorneys’ fees. Most of the time, in this situation, it’s not worth it to sue because you’ll spend more on your attorney than what you’d get in damages from the court.

What’s the Right Option to Protect Your Photography?

You have to make that decision yourself. Decide in advance how you want to respond when someone steals your photo and plan accordingly.

Your strategy for responding to suspected copyright infringement can include more than one of these options – such as sending a cease and desist letter yourself and if that doesn’t work, then have your attorney send one. Some people are more motivated to comply when they see the law firm’s letterhead.

Regardless of your strategy, it’s best to speak with your attorney in advance and consult them when dealing with someone who’s using your photos without permission. There have been many times that I’ve written the cease and desist letter for my client to send that included the sentence,

I hope we can resolve this without having to get lawyers involved.

Lights Camera Lawsuit

I’m creating an online course called “Lights, Camera, Lawsuit: The Legal Side of Professional Photography,” that will address the legal issues most pertinent to professional photographers, including hours of lessons about copyright. Leading up to the release date, I’m sending weekly updates with tips about the legalities of photography. Please add yourself to this exclusive list if you want to stay in the loop. (Note: This venture is separate from my law practice, and this list is completely independent from the Carter Law newsletter.)

Let’s Talk About Trademarks

https://www.flickr.com/photos/trippinlarry/5987691227
“Lemonade, anyone?” by trippinlarry from Flickr (Creative Commons License)

I’m going to say “no” a lot today. I’ve seen many trademark questions lately, many of which make me cringe.

Here’s what you need to know about trademarks. They are synonymous with branding. Your trademarks are the names, logos, slogans, etc. that you put on your products or services that differentiate you from the competition. They inform consumers about the origin and quality of the product or service.

When you apply to register a trademark, you have to tell the U.S. Patent and Trademark Office (USPTO) what you’re claiming as a trademark and on what products or services you’re using it. The USPTO won’t register your trademark if it’s too similar to a previously registered trademark. If they have a problem with your application, they’ll send you an Office Action with an explanation of the problem, and they give you 6 months to submit a response.

This is also why it’s possible for two companies to use the same trademark when they’re products and services are so different that no one would think they came from the same company, like Delta Airlines, Delta Faucet, and Delta Dental.

Onto the questions . . .

How would an Unregistered Trademark be Better for “Brand Image” than a Registered Trademark?

 A trademark is a trademark regardless of whether you register it or not. What changes is the rights you get with your brand when it’s a registered trademark. Having a registered trademark gives you the ability to stop competitors from entering the marketplace in the U.S. while using a trademark that is confusingly similar to yours. (Trademark rights are limited by country. If you have a registered trademark in the U.S., that doesn’t mean someone couldn’t register the same trademark for the same goods somewhere else.)

When you don’t register your trademark, you only can get common law trademark rights based on the geographic area where you are using the mark in commerce. You won’t have the ability to stop a competitor from using the same or a confusingly similar trademark in another geographic area in the U.S. like you’d be able to do if you had a registered trademark.

Additionally, if you don’t register your mark, there’s a risk that your competitor will, which will limit your ability to use your trademark to the area established by your common law rights when the other mark was registered. This happened to the first Burger King restaurant. The first Burger King was “frozen” in its established area when the franchise registered the trademark. If the first Burger King company wanted to expand beyond that area, it must do so with a different trademark than “Burger King.”

If your company is going to license its trademark to others, having a registered trademark is more valuable that an unregistered trademark. For many companies, their most important asset is their intellectual property.

If I Want to Apply to Register a Trademark and There’s a Competitor That’s Already Registered a Similar Name, Will I have a Better Chance with the USPTO if I Apply to Register my Logo that Contains the Company Name?

Why do you want to a brand that’s similar to your competition? It baffles me when companies knowingly pick a name that’s like one that’s already in use. It makes wonder if the owners are trying to ride a competitors’ coattails (which is illegal) or if they don’t understand how branding works.

The purpose of having a trademark is to prevent consumer confusion. The USPTO does not want to grant companies the similar trademarks if they’re selling similar products or services.

For a lot of companies, I recommend filing the word mark for just their name (assuming it’s trademarkable) as well as the logo, because logos often change over time. The name of the product or company usually doesn’t.

The USPTO requires separate applications for the logo and the word mark if you want both as registered trademarks. When a logo contains words, those often are given more weight than the rest of the logo in terms of whether there’s confusion because that’s often the most prominent part of the logo. The logo components may help differentiate your trademark from the competition, but it may not be enough. You can always apply and see what happens.

Can I use a Cancelled Trademark if the Owner is still Manufacturing the Product?

When you do a search on the USPTO trademark database, it will show the trademarks that are “live” and “dead.” A dead trademark may be “abandoned” or “cancelled.” An abandoned trademark was one that was applied-for but never registered. A cancelled trademark was registered at one time but not anymore.

When a company has a cancelled trademark but is still using it, it likely means that they registered the trademark and did not file the renewal when it was due. The company still has common law trademark rights based on its geographic market.

It may be possible to use a cancelled mark that’s still in use as long as you’re not in the competitor’s established geographic market, but I usually don’t recommend it. It sounds like a situation where you’d be setting yourself up to get a cease and desist letter and/or sued for common law trademark infringement and unfair competition.

On the flip side, I have seen companies use trademarks that have been cancelled and the previous owner has long since stopped using the trademark or the previous owner went out of business. A few years ago, I saw popsicle companies doing this – claiming abandoned trademarks and bringing the product back to market.

Is it OK if my Trademark is Barely Different than Someone Else’s – Like Adding or Removing a Space or Adding a Word?

The key to whether your trademark is different enough is based on whether consumers will be confused. As such, the USPTO treats trademarks that look and sound the same as being the same. You can’t take a registered mark and change the spelling slightly and have a valid trademark for the same product or service.

When you take someone’s trademark and add a word to it, the USPTO will consider how similar the marks are. If the main part of the mark matches an existing registered mark for the same type of product or service, it’s less likely that the USPTO will register your trademark as well.

There is no equation or formula you can use to guarantee that your trademark application will be approved by the USPTO.

Can I File my Own Trademark Application?

Yes. You don’t have to be a lawyer to submit a trademark application to the USPTO, though I recommend using one. At the very least, it’s best to have a lawyer review the application before you submit it. I’ve run into too many people who submitted a trademark application by themselves for trademarks that aren’t registerable. They could have saved themselves time and money by consulting a lawyer.

Thanks for reading this post. If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

How to Write a Decent Trademark Cease and Desist Letter

https://www.flickr.com/photos/tangi_bertin/541603067/
Stop by tangi_bertin from Flickr (Creative Commons License)

A friend recently forwarded me a trademark cease and desist letter he received and asked if it was anything they needed to worry about. Now, I always tell my clients to take such letters seriously, and give them their due consideration, but then I read this particular letter. It was possibly the worst cease and desist letter I’ve ever read. It was written by an entrepreneur, not a lawyer, so I automatically mentally cut the sender some slack, but still, it was bad.

If you’re in a situation where you suspected a competitor is violating your trademark rights, please get your lawyer involved. And if you’re going to write your own cease and desist letter, make it a decent one.

Make Sure Your Trademark has Likely been Infringed

A trademark has two components. It’s the name, logo, slogan, etc. that you’re claiming as a trademark plus the product or service on which you’re using it. (It’s possible for two completely different companies to have the same trademark, like Delta Dental and Delta Airlines.) For many companies, the first trademark they register is just the word or phrase that is the name of your company or product/service. This is called a “word mark.” It’s just words, no images, graphics, or sounds.

When you have a registered word mark and someone uses the same word or phrase, it’s not automatically a violation of your trademark rights. For example, Paris Hilton has registered trademarks for “That’s Hot” for “multimedia entertainment services” and apparel. These trademarks do not give her the ability to stop everyone from ever using the phrase “that’s hot,” as a descriptor. If a person is not using the word or phrase you registered as a trademark for their business, it’s likely not trademark infringement.

What to include in a Cease and Desist Letter

While I don’t endorse the idea of business owners writing their own cease and desist letters, it happens. If you’re going to write your own, these are some of the things I’d tell my client to include in their letter if they insisted on doing it themselves:

  • Provide the legal name of the person or company that owns the trademark,
  • Identify your trademark including the registration number and a screenshot of the trademark listing from the USPTO database,
  • Identify the alleged infringing activity, preferably with a URL and/or screenshot if it’s online or photographs if it is not, and
  • Clearly state what you want the recipient to do in response to your letter with a due date for compliance.

When to get the Lawyers Involved

If you encounter suspected trademark infringement, call your lawyer. Even if you want to send a cease and desist letter yourself, call your lawyer first. They can help you make sure there’s a real trademark issue that requires your attention and help you craft the cease and desist letter.

Many of my clients want to reach out to the alleged infringer to speak business owner to business owner, first. They want to send friendly but clear cease and desist letter, and give the other side a chance to resolve the matter “without having to get the lawyers involved.” I have helped write many a letter that included that phrase. The other side doesn’t need to know that I’m already involved.

If they don’t respond favorably to my client’s friendly letter, then I will follow it up with a strongly worded nastygram that demands that they cease all uses of my client’s intellectual property and failure to do so will result in litigation (or whatever consequences my client has selected).

My recommendation for clients is to refrain from making threats in cease and desist letters unless they’re willing to follow through with it. Otherwise, if the other side calls your bluff and you don’t follow through, you will lose all credibility and any further demand letters will likely be ignored.

If you threaten litigation in your cease and desist letter, be ready to pull the trigger if the suspected infringer doesn’t comply with your demands. Some people won’t take you seriously until a lawsuit has been filed. A lawsuit will force them to deal with the situation because of the court-imposed due dates or risk the effects of a default judgment if they ignore it.

Thanks for reading this post. If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

How to Legally Use User-Generated Content

https://www.flickr.com/photos/zoidberg72/16243539933
Selfie by dr_zoidberg from Flickr (Creative Commons License)

Here’s a question I get from companies and their marketers: What are the legal dos and don’ts for using user-generated content? These are situations where a company wants to use a photo, video, or text created by one of their fans, usually from a site like Instagram, Facebook, or Trip Advisor. Many companies merely want to approach the person through the platform where they found the content they want to use and ask for permission to use it. While this strategy is convenient, it may not be in the company’s best interest.

Using Content Within a Platform

It’s easiest when a company wants to share someone’s post within the social media platform – e.g., sharing someone’s Instagram photo on the company’s Instagram. Many social media sites build this option into the platform where you don’t even have to ask for permission to share someone’s post on another’s account.  

Of course, I’m a risk-adverse lawyer so I tell my clients to review the terms of service first to see what happens just in case it turns out the person who created the post you shared didn’t have the right to do so and now you have to deal with the fallout. Depending on the circumstances, I might contact the person to ask the person if they took the photo (which would indicate if they’re likely the copyright holder), try to verify that the original poster is complying with the platform’s rules

Using Content Across Different Platforms

Here’s where it gets a little more complicated. These are the situations where you want to take content from someone’s post on one platform and share it on a different social media site, your website, or another third-party platform. For this situation, I recommend you have a contract drafted by a lawyer. You could have them create a template for you if curating user-generated content is part of your marketing plan.

If I were creating a contract template for obtaining permission to use content created by a user or fan, I’d likely include terms such as:

  • The user owns the IP in the content: either they created it or they have permission to use it
  • The user has authority to grant the company permission to use the content
  • The user grants the company a perpetual, irrevocable, worldwide, sublicensable, paid-in-full, royalty-free license to the company to use the content for any purpose without needing the person’s consent or credit, including the creation of derivative works (or in the alternative, that the user grants the company a copyright assignment)
  • The user will reimburse the company’s legal fees and damages if it is accused of wrongdoing because the company used the user’s content

Such a contract would also include boilerplate verbiage, like a dispute resolution provision that states how the company and user will resolve disputes if one occurs.

Always Apply Reality

In any potential legal situation, be sure to apply reality. If a company wants to use a photo with two people in it, whoever posted the image may not be able to speak on behalf of the other person in the photo, and you may need release from identifiable people to avoid being accused of violating their right of publicity.

Additionally, it will likely take longer to get permission if you want to use images and other content across platforms. Be sure to build that into your timeline if your marketing plan involves using user-generated content.

There are also those who may question whether it’s worthwhile to have a lawyer create a contract for these circumstances. When there are no issues, a contract may seem superfluous; however, contracts are imperative in situations where there is a dispute and/or the parties forget the terms of their agreement. When you work with your lawyer to create you contract, make sure it has provisions that will apply to situations that are likely to occur as well as the worst-case scenarios.

If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

Side Hustle Contracts

https://www.flickr.com/photos/joybot/6701744493
Do the Hustle! by Joybot from Flickr (Creative Commons License)

Note: The links for Chris Guillebeau’s books are affiliate links.

I admire people like Chris Guillebeau who run with ideas and make stuff happen. He’s written a number of books, including The $100 Startup: Reinvent the Way You Make a Living, Do What You Love, and Create a New Future. The most recent book of his that I wrote was Side Hustle: From Idea to Income in 27 Days where he walks you through, day-by-day what you should do to launch a side hustle business. It’s a good book, but Chris and I disagree about how to approach contracts.

Day 14: Contract

Chris calls Day 14 “Set Up a Way to Get Paid.” This chapter covers selecting a payment system, creating invoices, and using simple contracts. For your contract, he says you only need to specify what you’ll do, how much you’ll get paid, when you’ll get paid, and “any protections you require.” Chris also says that that you can communicate all of this via email without needing a separate agreement document.

<cringe><shudder>

While Chris is technically right, I would never advise a client to operate their business this way. This is the type of contract that works when nothing goes wrong; however, contracts exist to save you in two situations:

  1. When there’s confusion about the parties’ obligations, and
  2. When there’s a problem or dispute.

Always Have a Separate Written Contract

If there is situation where lawyers are needed to resolve a dispute, the first thing I ask my client is “Where’s your contract?” If it’s a series of emails, and perhaps some text messages, and phone calls or conversations you claim occurred, the first part of my job will be compiling the terms of the agreement.

When there’s a single agreement, all the terms are in one place. And when the contract requires that all changes must be in writing and signed by both parties, it minimizes the risk of confusion or a he-said-she-said situation.

When you don’t have the terms of the contract in a single document, it opens the door for complications in the future. In many cases, it’s more cost-effective to have a lawyer create a contract template for your side hustle than to have to hire one to piece together the terms from the parties’ communications and actions. 

Minimum Contract Terms

In general, I don’t advise people to write their own contracts (unless they have a law degree or sufficient contract experience), but here are the basic terms I’d expect to find a side hustle contract:

  • Parties to the contract
  • Purpose of the contract
  • Payment terms, including what happens if the customer doesn’t pay (e.g. entrepreneurs who require ½ the fee up front and ½ upon completion)
  • Intellectual property terms – related to creation, assignment, and/or license
  • Where and how problems will be resolved, including the venue, jurisdiction, and which state law will govern
  • If/how the parties can make changes to the contract
  • “Entire agreement” – all the terms in the contract are in the agreement
  • “Severability” – if the contract has any invalid terms then the parties will throw those out and the rest of the contract will remain
  • A provision that states if a party chooses not to use a right granted by the contract, they don’t waive their right to use it in the future

When I approach a new contract for a client, I try to mentally walk through the customer’s journey and address the problems that the client is trying to avoid and pre-plan how you want to deal with problems when they occur.

Using a Lawyer for your Side Hustle

If you’re going to have a side hustle, I recommend you sit down with a lawyer for an hour. Tell them your goals and your budget. An understanding lawyer will tell you about the legal issues you need to be aware of, can do a quick trademark search to see if the name(s) you want to use are already registered, and they can tell you want you can do yourself and what tasks you should hire a lawyer to do for you.

A Few Final Thoughts

Thinking about what missteps I’ve seen companies inadvertently commit, here are a few extra tidbits of information:

  • The terms of service for a website, online course, or mobile app are contracts. Write them or have them created with care.
  • Please don’t rip of another company’s terms of service and just change out the company and product names. That’s a recipe for trouble. You don’t want to represent that you do things that you don’t. I’ve also seen situations where the company’s terms of service says that it’s governed by New Jersey law and the company has no connection to that state. (The company they stole the terms from was in New Jersey.)

If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

The 10 Legal Commandments of Entrepreneurship

“Stained Glass Window Full of Light and Color” by Stock Photos for Free from Flickr (Creative Commons License)

Since becoming a lawyer in 2011, I’ve had the privilege of working with businesses on a variety of legal issues. Looking back at some of the most cringe-worthy moments I’ve experiences I’ve had and heard about from other business and intellectual property lawyers, I’ve come up with a list of the 10 legal commandments of entrepreneurship:

 

1. Thou shall have a business entity.

When you start a business, create a business entity – an LLC or corporation. Your accountant can tell you which option is best for you. By separating the business from your personal assets, you limit your personal liability if the business is sued. If you open a business without an entity (aka a sole proprietorship), you don’t have this layer of protection.

 

2. Thou shall maintain your corporate veil.

Creating a business entity is how you begin to limit your liability, and you perfect that protection with a “corporate veil.” This means having a separate bank account and credit card for the business, and the business accounts pay for business expenses and your personal accounts pay for personal expenses. This creates a clear delineation between where the company ends and the person begins in terms of your finances. If the company is sued and loses, it’s clear which assets belong to the company and your person assets are protected.

 

3. Thou shall have a signed contract at the beginning of a business relationship.

When you are hired by a client or hire someone, start with a signed contract. A contract is a relationship-management document. It is your master document that puts everyone on the same page regarding their responsibilities. This will help you avoid confusion and resolve problems. When a client comes to me with a problem with a customer, I often start by asking “What does your contract say?”

 

4. Thou shall be thoughtful and careful about looking online for a contract template.

Looking at templates online is a good place to get ideas about terms you might want to have in your contract, but don’t indiscriminately use any contract you find. You don’t know where it came from or whether it’s suitable for your needs.

 

5. Thou shall take the time to fully read and understand a contract before signing it.

Never be afraid to ask questions or request changes when considering a contract offered to you. Don’t sign anything you don’t understand, because if you sign it and later regret it, you may be stuck with it.

 

6. Thou shall respect others’ copyrights.

Do not use others’ work without permission. Create your own original content. It’s ok to be inspired by and quote others, but add something to the conversation. If we’re talking about images, do not pull any image you find using a regular Google search. Seek out sources that provide licenses for use, including images available under Creative Commons. If there is an image you want to use that’s not available, contact the copyright holder and ask for permission. To date, I’ve never had anyone say, “No.”

 

7. Thou shall check the USPTO before branding a company or product.

When entrepreneurs think “branding,” lawyers think “trademark.” The United States Patent and Trademark Office (USPTO) has a database where you can see what company names, product names, and logos others have applied for and registered for their products and services. You don’t want to fall in love with, or invest a lot of time and money in, a branding idea to find out that it’s already been claimed by someone else.

 

8. Thou shall outsource your taxes.

Every entrepreneur needs an accountant. Let them do what they’re good at.

In the time it would take you to try to do your own taxes, you could make more than enough money to pay an accountant to do your taxes for you.

 

9. Thou shall consult thy attorney.

Even when you want to do things yourself, talk to your lawyer to make sure you’re not setting yourself and your business up for future problems. My most cringe-worthy moments as a lawyer have been problems clients created for themselves that we could have helped them avoid completely if they had told us what they were thinking about doing. It is easier and cheaper to prevent legal problems than to fix them.

 

10. Thou shall act with integrity.

Put your energy into your own business, creating quality products or services for your audience.

You don’t need to stoop to bad-mouthing the competing, using trademarks that are confusing similar to others, or ride other’s coattails by doing things like using a web domain that will allow you to pull an audience based on someone else’ popularity (e.g., cybersquatting). Be so good at what you do that you don’t need to use others to make a name for yourself.

One last note: If you’re an entrepreneur, don’t be afraid to ask for help. Accountants help you make money, lawyers help you keep it, and your peers will share their experiences so you can learn from them. If you are an entrepreneur, or have plans to become one, I hope you have people around you who can help you be successful.

If you want additional information about the legal dos and don’ts of starting and running a business, I maintain a mailing list where I share my thoughts about being a lawyer/entrepreneur, updates about projects I’m working on, upcoming speaking engagements, and I may provide information about products, services, and discounts. Please add yourself if you’re interested. You can also contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn.