Registered Trade Name vs Registered Trademark: Who Wins?

February 5, 2021 by Leave a Comment
“Kum & Go,” photo by Dustin Murrell Broadcast Journalist (Creative Commons License)

Last week, I wrote about intellectual property disputes where one side had the website domain and the other side has the registered trademark. Someone asked me how do registered trade names factor into these situations.

What’s a Trade Name?

In general, a trade name is something you register with your state. This is different than registering a trademark with the U.S. Patent and Trademark Office (USPTO). This is a way to register the name of your company or your product with your state. It typically takes only a matter of days to get and is cheap. In Arizona, the filing fee for a trade name is $10.00, whereas the minimum filing fee to register a trademark with the USPTO is $250, and it takes months (if not longer) for the USPTO to process your application. Your state may also give you the ability to register a state-level slogan or logo.

Value of Registering a Trade Name

To be honest, there’s little value in registering a trade name at the state level. It could be helpful in situations where the name of your legal entity is different than the company or product name. For example, if your entity was XYZ Company LLC and your did business as Green Ice Marketing, if you registered Green Ice Marketing as your trade name, your state might not let another company use the same name and compete with you ask Green Ice Marketing LLC.

Even if you have a state-level trade name, it does not automatically give you statewide common law trademark rights. Common law trademark rights are based on your established geographic market, based on where you’re using the mark in commerce. Thus, if you register a trade name with your state, but you’re only using it commerce in your county, your common law trademark rights may only be that county, not the whole state.

Registering a trade name creates a third-party record of when you started using a trademark, which may be helpful in a trademark dispute, but there are other ways to demonstrate when you began using a particular trademark in commerce.

Trade Name vs Trademark

In a trademark dispute, timing is often a deciding factor when two companies are selling similar products using the same or confusingly similar trademarks. In a trade name vs trademark dispute, there are two ways it could go down.

Option #1: You Registered a Trade Name Before They Registered the Trademark.

As stated above, when you only register a trade name with your state, there are no associated federal trademark rights that come with that registration. You only get common law trademark rights based on the established geographic market where you’re using your trade name in commerce.

The moment your competition registered the trademark with the USPTO, you become “frozen” in your established geographic market. The registrant gets the exclusive right to use the trademark everywhere else in the United States except within the geographic market you established prior to their registration.

It’s like a snow globe dropped over your area at that moment. They can’t go into your area, and you can’t expand beyond that invisible barrier unless you rebrand. This is what happened in the Burger King situation.

Option #2: You Registered a Trade Name After They Registered the Trademark.

Once someone registered a trademark with the USPTO, they have the right to keep competitors from entering the marketplace in the U.S. while using their trademark or one that is confusingly similar to it.

Once they get their trademark, you can’t start using it too for a similar product or service.

Here’s the rub. You state probably will not cross-check the USPTO database if you try to register the same mark as a trade name. They will deny your trade name application only if it matches something in their database of registered trade names in that state. Similar to the web domain situation, a lot people get a false sense of security when they can get a state-level trade name, but it won’t provide any protection from an accusation of trademark infringement in this situation.

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You Have the Domain. They Have the Trademark. Who Wins in the IP Dispute?

January 28, 2021 by 2 Comments
“Stone Stacks – Lindisfarne” by Linton Snapper from Flickr (Creative Common License)

I saw this scenario come through my Reddit feed. Two U.S. companies are in the same industry and using the same name for their brand. One has the dot-com web domain. The other has registered the brand as a trademark with the U.S. Patent and Trademark Office (USPTO). Which company should get to use the brand and force the other to change their name?

Timing Matters: Who Was First

The answer to every legal question starts with “It depends,” and here it depends on which company was using the mark in commerce first. By “use” I mean which company made the first bona fide offer for sale to the public, not who came up with the idea for the brand first.

Option #1: You Started Using the Domain Before They Registered the Trademark

If two companies in the same industry the U.S. are using the same trademark, but not one has registered it with the USPTO, then each one can establish what are called common law rights in the mark in the geographic areas where they are respectively using the trademark. They can co-exist peaceful as long as one doesn’t try to infiltrate the other’s established geographic market.

Here’s what happens when they register the trademark with the USPTO – they get the exclusive right to use the trademark everywhere in the U.S., except within your established geographic area at that time. It’s like a snow globe drops over your geographic market. They can’t go into your area, but you can’t expand your market beyond that boundary. This is what happened when the chain Burger King registered their trademark and there was a mom-and-pop restaurant with the same name already in existence. If you want to expand your geographic market beyond that invisible boundary, you have to rebrand.

These rules are easier to follow when businesses were brick and mortar establishments. Now that commerce is largely internet-based, a company is likely to naturally expand merely by being online. You probably can’t add any new social media platforms using the trademark without them claiming your infringing on their intellectual property rights.

If you come to me with this situation, unless you’ve established nationwide common law rights before they registered the trademark, it’s often best to save your money on litigation and rebrand instead.

Option #2: They Registered the Trademark Before You Start Using the Domain

Remember, when they registered their trademark with the USPTO, they got the exclusive right to use their trademark everywhere in the U.S. except any geographic area where you established your market for the same mark prior to that date. If they registered before you started using the mark at all, you can’t enter the marketplace using that trademark in that industry. They win. You lose. You have to rebrand.

What if it’s the same situation, but you were using the mark before they registered but you hadn’t created the website yet? Publishing the website after they registered, even if you were already selling the product using that brand, would be an act that would expand your market beyond your now-limited established geographic area, which is not allowed. I would expect them to send you a cease and desist letter demanding that you take down the website.

Getting the Domain is Not Proof to Trademark Availability

A lot of people make the mistake of thinking that if they can get the dot com domain they want that there aren’t any trademark issues that they need to worry about. There are many reasons why a company might not get the dot com of the trademark, even if it was available:

  • They are using another type of domain, like .org.
  • They are only use companyname.com for their website and not get separate domains for each of their brands or other trademarks used by the company.
  • You and they have trademarks that sound the same but spelled slightly different.
  • You and they have slightly different domains, such as XYZ.com and TheXYZ.com.

When I’m working with a client on selecting a company name, product name, or other trademark, I encourage them to search for their prospective trademark on the internet as well as on the USPTO database. What’s tricky about this is that even if you don’t find an exact match to the trademark you want to use, there could be one out there that is confusingly similar to the one you want to use. It’s best to do as thorough of a search as possible before investing your time and money into your brand.

Can the Trademark Owner Force You to Give Them the Domain?

There are lots of reasons why a person or company would have a domain that matches your registered trademark that don’t violate your intellectual property rights. If it’s a situation where your website infringes on their rights, they can demand that you remove the website. It doesn’t mean they can force you to give them the domain, though that is something you can try to leverage. They can always offer to buy it off you. (I often advise my clients wait for them to offer to buy it first so as to avoid looking like a cybersquatter.)

If they are willing to fight you for the domain, there is a risk that they may file a claim against you in court or under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). If you find yourself in a trademark dispute where you have the coveted domain, it’s best to consult a trademark attorney who can examine your specific situation, explain your options, and advocate on your behalf.

Question of the Day: Two Companies Using the Same Trademark 

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How to Write a Decent Trademark Cease and Desist Letter

February 7, 2019 by Leave a Comment
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.

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No Protection for Short Phrase T-Shirts

February 14, 2017 by Leave a Comment

FUNNY ASS SHIRT by Douglas Muth from Flickr (Creative Commons License)

I regularly get questions from people who sell shirts on Etsy, Café Press, or a similar website and they claim that another user is stealing their design. When I look more closely at the situation, I see all the person is selling is shirts with a short phrase, in a common font, and no other artwork or design elements. Many times, I have the unfortunate responsibility of telling them that there’s no intellectual property in their design, so there’s no infringement (that’s legalese for “stealing”).

No Copyright in Short Phrases
Copyright applies to original works of authorships when they are fixed in a tangible medium. A t-shirt is a tangible medium, and it’s possible to have an original work on a garment. However, short phrases aren’t original works, so the act of merely printing one on a shirt does not create a copyright-protected article.

If that’s all you’re selling – word or a phrase on a shirt – there’s likely nothing you can do (from a copyright perspective) to stop your competition from selling a shirt with the same phrase on it. If you look on any of these DIY shirt and craft sites, you’ll see the same phrases on shirts from different sellers. There’s no copyright protection for words, images, or phrases like “geek,” “reasonable person,” “Introverts Unite! Separately in your own homes,” and even more creative phrases like “terminally soulless douche canoe.”

The Anti-Titanic Shirt

This used to be less of a problem before we had Teespring, Zazzle, and sites that make it easy to create and sell shirts and whatnot. In the past, if you wanted to sell a shirt, you had design it, have it printed, and then sell them in shop or on the street, or if you had html skills, you could create a website and people could mail you a check for a shirt. That’s what my friend, Peter Shankman, did when he sold anti-Titanic shirts in 1998. He started selling them in Times Square and then sold them online. He was a success, in part, because he had no competition.

What Could be Infringement
Every t-shirt design on Etsy is not up for grabs. Copyright does not protect short phrases, but it does protect designs with original artwork on them. Additionally, copyright protects the images you post of your shirts on your site. If you see another seller using your photos, that would likely be infringement (assuming it’s your photo). Sending a DMCA takedown may be sufficient to get them removed from their online store.

The other thing to watch for is trademark infringement. A seller can use a short phrase as a trademark to brand their wares. They can also create a logo that they put on their products. If you see someone using your trademark or a mark that is similarly close to yours, that could be infringement and worth investigating.

Beat the Competition in the Marketplace
For anyone who is selling these types of shirts, the best way to deal with your competition is be better than they are. Give your customers a reason to buy from you than from another seller, or having it made at a t-shirt shop. It could be your prices, the quality of the garments, or something about your company that makes you more desirable than the others.

Beyond that, you may want to consider upping your t-shirt game by creating or purchasing designs that will be protected by the Copyright Act.

Copyright is an area of the law with many gray areas, so if you’re having legal issues regarding your copyright rights, you can contact me directly or an intellectual property lawyer in your community. I regularly post about copyright and other IP issues on Twitter, Facebook, YouTube, and LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

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What Went Wrong with Fate Brewing Company

June 20, 2016 by Leave a Comment

Photo Courtesy of Fate Brewing Company (Scottsdale, AZ)

Photo Courtesy of Fate Brewing Company (Scottsdale, AZ)

Earlier this month, Fate Brewing Company announced that they were changing their name to McFate Brewing Company.
Wait…what?! Is this awesome local brewery turning itself into some type of fast food brewery?
No, but they ran into a legal snag that forced the name change.

In 2012, Fate Brewing Company opened in Arizona. In 2013, someone else opened Fate Brewing Company in Boulder, Colorado. In legalese, the Fate Arizona is called the “senior user” of the name since they opened first and the Fate Colorado is the “junior user.” Despite being the junior user, Fate Colorado sued Fate Arizona for trademark infringement.

How Is This Allowed?
Easy: Fate Colorado registered the trademark “Fate Brewing Company” with the U.S. Patent and Trademark Office (USPTO). It’s the Burger King situation all over again.

By doing business first, Fate Arizona had rights to use “Fate Brewing Company” for beer and restaurant services, but since they didn’t register their trademark with the USPTO, their rights only extended to the geographic area where they did business. When Fate Colorado got their registered trademark, they obtained the exclusive right to use “Fate Brewing Company” for beer and restaurant services everywhere in the U.S. except where Fate Arizona had an established market. Likewise, Fate Arizona couldn’t expand its market beyond its established boundaries without infringing Fate Colorado’s rights.

I suspect Fate Colorado sued Fate Arizona for trademark infringement in part because their trademark was granted in 2013 and Fate Arizona South opened in 2015. Fate Colorado could have interpreted the new location as a market expansion that violated their trademark rights.

New Logo for McFate Brewing Company - opening June 25, 2016

New Logo for McFate Brewing Company, Photo courtesy of Fate Brewing Company

What’s Next for Fate Arizona?
Even though Fate Arizona could have made a legal argument that they had the right to use the name as the “senior user,” they have opted to take the high road to rebrand rather than spend hundreds of hours and thousands of dollars on this legal fight. The re-branding party for McFate Brewing Company (named after the owner, Steve McFate) is scheduled for June 25, 2016 according to Fate Arizona’s Facebook page.

I hope Fate Colorado wasn’t a jerk about this process. A company has an obligation to protect its intellectual property or risk losing it, but there is more than one way to pen a cease and desist letter.

How Could Fate Arizona have Avoided This Problem?
Yes. Fate Arizona could have beaten Fate Colorado to the USPTO and filed a trademark application before they did. They could have staked their claim to the name and gained exclusive right to use the name nationwide, shutting down Fate Colorado or forcing them to rebrand from their start.

Many new businesses are more concerned about getting off the ground than federal trademark filings, especially when the business only has aspirations of being a local brand. Unfortunately, this leaves them vulnerable to being boxed in geographically, called into court, or forced to rebrand like it did here.

If you have questions about your company’s trademark or how to select a trademark for your new venture, you can contact me directly or connect with me on Twitter, Facebook, YouTube, or LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

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What Should You Do If Someone Steals Your Work

October 28, 2014 by Leave a Comment

Attention - Man Stealing White Stripe by Julian Mason from Flickr (Creative Commons License)

Attention – Man Stealing White Stripe by Julian Mason from Flickr (Creative Commons License)

Copyright infringement appears to be rampant on the internet. Some people don’t understand that they can’t use anything they find online. They don’t understand that the law lets the copyright holder dictate where their work is displayed and distributed. Some people get defensive when they get caught and say you should be happy that you’re giving them exposure.  Others know it’s illegal and take the gamble that you won’t notice or that you won’t object if you see what they’ve done.

Make Sure It’s Your Work They Copied
People don’t always own what they think they own. Check your contracts to verify that you are the copyright owner and not just the creator of a work. Remember – employees don’t own the copyright in anything they create within the scope of their job but independent contractors retain the copyright in anything they create unless there’s a written copyright assignment or work made for hire contract. Additionally, two artists can independently come up with similar ideas for original works and it may not be problematic so long as they’re only claiming rights in what they created.

How Do You Want This To End?
This is the question I ask all my clients who are in a suspected intellectual property infringement situation. Their goal determines my course of action. Ideally you should determine how you want to react to infringement before it occurs so you can lay the foundation in advance for your desired outcome.

If you just want the infringer to take down your work, you can respond with one of the following:

If you want the alleged infringer to pay you for using your work you can send a bill or sue them for infringement. If you want to pursue one of these options, you definitely want to use a lawyer to contact the alleged infringer on your behalf or through the court.

If you’re OK with the person using your work, you should send them a notice that gives them permission and requests they ask permission before using your work in the future. You always want to respond when you suspect someone is using your work without consent. Otherwise you could create the impression that you’ve attached a blanket license for anyone to use your work which could hurt your chances of going after other suspected infringers in the future.

Please note – you can send a notice without being a jerk about it. Jack Daniel’s sent what’s been referred to as the nicest cease and desist letter when an author copied Jack Daniel’s label on his book cover.  You could write or ask your attorney to do something similar

If you need a legal resource about how to avoid problems related to copyright and trademark infringement online, I recommend my book, The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed. It covers a lot of the major issues that apply to intellectual property and the internet. If you want to chat more about this topic, feel free to connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me.

Please visit my homepage for more information about Carter Law Firm.

Filed Under: Business Law, Intellectual Property, Internet law, Photography & the Law Tagged With: , , , , , , , , , , , , , ,

Check the USPTO Database Before You Brand

September 23, 2014 by 2 Comments

Fake Brands (Weird News No. 4) by "Caveman Chuck" Coker from Flickr (Creative Commons License)

Fake Brands (Weird News No. 4) by “Caveman Chuck” Coker from Flickr (Creative Commons License)

I asked my friends who work in marketing, who create campaigns and brands for a living, whether they check the U.S. Patent and Trademark Office (USPTO) database before finalizing a project for a client. I was surprised when all of them said, “No.”  To me, this would be an obvious step in the brainstorming or idea development process.

Let’s go over a little bit about trademarks. A trademark is the name, slogan, logo, etc. you put on your company or products to differentiate them from your competition. A trademark has two components – the mark itself and your product or service. That’s why it’s permissible for two unrelated companies to have similar names – like Delta Faucets and Delta Airlines. You can’t put a trademark on your company or product that is so similar to your competition that consumers are going to be confused about what they’re buying.

If you create a brand but don’t register it with the USPTO, you only get common law protection for it which extends only as far as your geographic market. You also risk being in the Burger King situation where you could be limited in your ability to expand if someone registers your trademark after you’ve started using it.

When a company registers their trademark, they get the exclusive right to use their mark on their category of goods and services everywhere in the United States. No one can enter the marketplace with a confusingly similar name on similar products or services, even if they do it in a geographic area where the trademark owner isn’t doing business. They can send you a letter demanding that you rebrand or sue you for infringement. This happened to a friend of mine who had a dog training business that had a similar name to a dog trainer who lived across the country. Since the other guy registered his trademark for dog training, he had the authority to make my friend change her business’ name.

The USPTO trademark database isn’t that hard to use if you’re only looking up words. When you are researching potential names and slogans, make sure you look up various spellings of the word(s) and watch out for the word you want in other languages. It’s a good idea to verify with a trademark that the name or slogan you want as your trademark is available. You don’t want to invest a lot of time, money, and energy in creating a brand that you can’t have. I’ve worked with too many companies who have had to rebrand their company or a product because they got a cease and desist letter from someone who had registered the name.

I also made a video about the importance of checking the USPTO database when selecting a brand.

I’m also a huge advocate of registering the trademark in your blog because if someone else takes your name, it can essentially shut down your site. If you want to chat more about trademarks, feel free to connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
Please visit my homepage for more information about Carter Law Firm.

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The Real Cost of a Social Media Misstep

September 9, 2014 by 5 Comments

Money by Andrew Magill from Flickr (Creative Commons License)

Money by Andrew Magill from Flickr (Creative Commons License)

I was talking with some non-lawyer entrepreneurs lately, and I asked them what they thought would be the worst case scenario if their company broke the law via their social media, and they both responded that they would have to take responsibility for their mistake, apologize, and do some damage control. While I appreciate that these business owners appeared to have integrity and good intentions, I internally cringed that they both assumed that saying, “I’m sorry,” should be enough to fix a problem.

I want to share some numbers for the costs a business could easily face if they violate a law with their online posts.

Trademark Infringement – Cost of Rebranding
Think about how much time and money you’ve spent selecting the name for your business or product, your logos, your slogans, your domain, and your website. Now, how would you feel if you had to do it all again? That’s what could happen if you select a name for your business or product that’s already been registered by someone else in your industry. In the best case scenario, they’ll send a cease and desist letter and demand that you rebrand. In the worst case scenario, they’ll sue you for infringement, and you could be spending tens of thousands of dollars in legal fees and fines.

This is why I suggest companies check the U.S. Patent and Trademark Database for registered trademarks to verify the name or slogan they want to use hasn’t been claimed by someone else.   I’m also an advocate of registering your trademark as soon as you can afford it, so no one can restrict your use of your own name or steal it from you.

Illegal Social Media Policy – at least $10,000
Every company needs a social media policy, but employers need to understand that a federal law called the National Labor Relations Act (NLRA) that protect union activities also apply to employees talking about their work – even in public online forums. If you fire an employee for violating the company social media policy and it turns out your policy violates the NLRA, you could be ordered by the National Labor Relations Board (NLRB) to pay the ex-employee back wages, damages, and offer them their job back. My friend who works on these cases says if you have to pay the ex-employee $10,000, you got off easy.

Copyright Infringement – $150,000 per Work Copied
Many business owners don’t understand that they can’t use any image they find via a Google Image search. There are even marketing “professionals” who will tell you that you can use any image you find online as long as you give an attribution and a link to the original. Both of these are excellent ways to commit copyright infringement. And photographers are becoming more savvy about protecting their rights so if you use their work they may send you a bill or a lawsuit instead of a cease and desist letter or a takedown notice. In the worst case scenario, you may face a lawsuit for $150,000 per image you used without permission.

Be careful if you outsource your content creation that your contracts clear state that the writer or artist who creates your content also indemnifies you if you are ever accused of copyright infringement because of something they created for your site or posted to your social media.

Defamation – $2,500,000
Defamation generally requires making a false statement about a person to a third party that hurts the person’s reputation. When I do talks about social media horror stories, I talk about a case where a blogger was sued for defamation because of one blog post and was ordered to pay him $2.5 million. 1 blog post. $2.5 million. (The case is currently up on appeal but I don’t think it looks good for her.) This is when little words matter because it’s easy to think you’re stating an opinion but your phrasing creates a statement of a fact – and if it’s a lie, it could be defamatory. Think before you post and check your sources.

ruthcover smallerPlease note, these numbers do not include legal fees you could face in addition to damages if you’re sued because of your social media posts. The legal issues listed above only scratches the surface of what wrongs a person or company can commit online. The good news is most of these problems are preventable with education and diligence. I strongly recommend you stay abreast of what laws apply to your social media postings and developments in this area of law.

If you need a legal resource for laymen on this topic, I recommend my book, The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed. It covers a lot of the major issues that apply to blogging and social media. If you want to chat more about this topic, feel free to connect with me on Twitter, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
Please visit my homepage for more information about Carter Law Firm.

Filed Under: Featured Post, Intellectual Property, Internet law, Legalities of Blogging Tagged With: , , , , , , , , , , , , , , ,

Why You Have to Respond to Suspected IP Infringement

January 16, 2014 by 4 Comments

Cease and Desist by H.L.I.T. from Flickr (Creative Commons License)

Cease and Desist by H.L.I.T. from Flickr (Creative Commons License)

A few weeks ago we all had a good laugh when Jeff Briton, owner of Exit 6 Pub and Brewery in Cottleville, Missouri got a cease and desist letter from Starbucks when he named one of his craft beers “Frappicino.” Starbucks said this was too similar to their Frappuccino and even took the liberty of contacting the beer review website Untappd to get the Frappicino beer listing removed.

Briton responded with a letter and a check for $6 – the profit he made from selling the beer to the three people who reviewed it on Untappd. If you haven’t read this letter yet, go do it. It’s hilarious.

My hat’s off to Briton for writing such a brilliant response and turning this situation into an awesome opportunity to promote Exit 6. Some people might say that Starbucks’ lawyers were being jerks for sending a cease and desist letter to the little guy who wasn’t their competition anyway. But it was what Starbucks had to do to protect its intellectual property.

When you have a copyright or a trademark and you know that someone is using your intellectual property without your permission and you do nothing, you send a message that you don’t care about protecting your intellectual property rights. If you let the little guys get away with things like Frappicino beer and then one of your big competitors does something similar and you try to lay the smack down on them, your competitor will have an argument that your track record shows that you let others use your property without permission or penalty. By not protecting your intellectual property, you put yourself at risk of losing your intellectual property rights.

It’s because of this risk that Starbucks has to send cease and desist letters to Exit 6 Pub. This is why I tell clients to keep an eye out for other people using their intellectual property. In trademark situations, a cease and desist letter is usually the proper response, even in situations like Frappicino beer.

This is also why I tell bloggers and photographers to be diligent about who is using their work. If they find that someone’s using their copyrights without permission, even if they’re ok with it, I often recommend they contact the alleged infringer and grant them a license after the fact and request an attribution if the infringer didn’t give them one. If they’re not ok with what the alleged infringer did, we discuss whether the artist wants to send a cease and desist, a DMCA takedown notice, a licensing agreement with a bill, or sue for infringement. There should always be a response.

If you have questions about your intellectual property rights or your strategy to protect them, please contact an intellectual property attorney in your community. If you have questions related to copyright or trademark and blogging, please check out my book The Legal Side of Blogging: How Not to get Sued, Fired, Arrested, or Killed.

If you want to chat with me more about this topic, you can connected with me on Twitter, Google+, Facebook, YouTube, LinkedIn, or you can email me. You can also subscribe to the Carter Law Firm newsletter.
Please visit my homepage for more information about Carter Law Firm.

Filed Under: Business Law, Intellectual Property, Internet law, Legalities of Blogging, Photography & the Law Tagged With: , , , , , , , , , , , , , , , , , ,

Guerrilla Movie Shot at Disney Parks

September 12, 2013 by Leave a Comment

Escape from Tomorrow - Image from EscapeFromTomorrow.com

Escape from Tomorrow – Image from EscapeFromTomorrow.com

This is one of the most innovative projects I’ve heard about this year – Escape from Tomorrow – a film that was mostly shot at Disneyland and Walt Disney World without Disney’s knowledge. The cast and crew blended in with other park patrons by storing their scripts and communicating via their phones, using video cameras that were the same type that regular park-goers use, and they used natural lighting. Besides the fact that the cast wore the same outfits every day and they had to go on the same rides over and over again to get the shots, no one could tell they were up to something.

Escape from Tomorrow was written and directed by Randy Moore and it premiered at the 2013 Sundance Film Festival. The fact that the film was shot at Disney parks was kept under wraps until the premier and then it got a lot of attention from reviewers, many of which expected Disney to try to prevent the film from being shown during and after the festival. Disney has acknowledged that the film exists but hasn’t taken action against it yet. Escape from Tomorrow will be available in theaters starting October 11th.

I’m excited to see the film, not for the story itself, but to examine the legal arguments that Disney may have against the film.

What about Intellectual Property Infringement?
The general rule is “Don’t fuck with Disney” because they’re known for laying the smack down on anyone who uses their intellectual property without permission. Moore reportedly was diligent about removing excerpts from Disney movies and songs that were caught on film. Disney won’t likely try to claim copyright in everything it owns inside its parks and even if they did, Moore has a strong fair use argument.

Disney probably wouldn’t win on a trademark claim either, even though I’m sure Disney trademarks appear in the film. I bet Moore’s lawyers would make an argument that the film’s use of Disney is like Thomas Forsythe’s use of Barbie dolls in his work. Mattel lost the case against Forsythe because he couldn’t make the same artistic statement without using the iconic dolls. Tim Wu, professor at Columbia Law School also brought up the argument that no one would see this film and think that Disney was involved in it.

Shouldn’t this be a Non-Issue since Disney lets Visitors Shoot Photos and Videos in its Parks?
Of course Disney lets visitors take photos and videos inside the parks. It’s basically a form of free advertising for them. And even if they didn’t like it, they would have accepted that there’s nothing they could do to stop the hordes of people who visit every day from snapping photos or making home movies. This has become even more prolific now that everyone has a smartphone.

The issue isn’t that they were shooting video, but that they were shooting video for a commercial purpose. Disney parks are private property and they can require people to pay for a location release to use their property. I suspect their lawyers have contract templates ready and a fee structure for anyone who approaches them about shooting a movie at a park.

This gets into a gray area when people go to Disney for personal/recreational purposes, shoot videos, and then post them on YouTube. If the patron monetizes their videos and they get enough hits, they could make money off of their Disney experience. I suspect the amount in question would be too low for Disney to care, but it raises the question of how much financial success can you have via YouTube before you have to worry about legal repercussions.

What about People in the Background?
Moore and his people didn’t get releases from anyone who was caught in the background of any of his shots. He might be accused commercializing their images without their consent if he doesn’t blur them out. I wonder if there are enough pissed off people who were caught on film that they would pursue a class action against Moore.

If I heard that Moore was filming at a Disney park the same time I was there, I’d be running to the theatre to see it, hoping that I made it in the background. I suspect some people would be excited to be on it and may only ask to be listed in the credits for posterity if possible.

It’s uncharacteristic of Disney not to respond to a potential legal fight. On one hand I wonder if they’re waiting to see if the film will be a commercial success before deciding if they’re going to pursue it because there’s often no point in winning a lawsuit (besides pride) against someone who can’t pay up. Alternatively, Disney may be ignoring the film out of fear that if they respond that it will lead to more attention, and more people will see the film, and Moore will make more money.

You can connect with me on Twitter, Google+, Facebook, YouTube, LinkedIn, or you can email me.
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Filed Under: Geek Law, Intellectual Property Tagged With: , , , , , , , , , , ,
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