Intellectual Property Legal Questions

There are overlapping considerations. First, using a name that is confusingly similar to a senior (i.e., first in time) mark is considered trademark infringement. If it causes a reasonable consumer to believe that it is connected to or sponsored by the owner of the senior mark, a court would like strike it down. The two examples that you cite, by themselves, would probably earn a very quick cease-and-desist letter, and if action isn't taken, a lawsuit. However, if you were to use a mark in a way that makes it plain that the senior user does not support you (e.g., stanfordsucks.com), that would be considered "nominative" fair use, and would be allowed. There are also unfair competition laws that would prevent the usages you propose. I advise my clients to stay away from using other marks, because it inevitably weakens your own mark. Choose something that sticks in the mind of a consumer, without referring to others.... Read More

You can always continue to prosecute your application with a different attorney. You should search the U.S. Patent Office (USPTO) web site for your attorney current contact information before deciding to contact a different attorney. However, if it's been five (5) years since your last action, your application may be abandoned even if it was issued. Your new attorney will have to deal with it. Good luck.... Read More

Assuming that you have a valid trademark, you may be able proceed against the infringing party or parties. How this is done depends on the nature of the mark and on the nature of the infringement. You first have to decide if you want to try to resolve the matter through a cease and desist letter, negotiation or litigation (and if litigation, are you prepared for the potential costs in terms of time, energy and expense). Damages can include actual damages, statutory damages (damages that are awarded as a penalty and which are not tied to amounts lost by the owner or taken by the infringer) or the profits earned by the infringer. 15 U.S.C. §1117. There isn't much caselaw on hashtags yet, but it would be difficult to see how a hashtag could infringe on the deisgn elements of a mark, but certainly could infringe on the words that were registered. The important issue in any trademark case is whether the infringing use is likely to cause confusion as to the source of the goods. I can't express an opinion about that without knowing your mark or the infringing use, but suggest that you look at your mark and at the infringing mark and ask if a consumer would lliekly think that they were made by the same company. If yes, then you may want to look into legal action. Best wishes, Michael R. Morris... Read More

There are a number of questions bundled into this one, so let me take them one at a time. I am assuming that when you say registered mark, you are refering to one that has been registered with the USPTO. As to the one word, the answer to your question depends on what the word is. Generally, a mark is more defensible and restrictive the more arbitrary and less generic it is. Let me give you an example: "Benthos" (which is a real word meaning flora and fauna on the sea or lake bed) would be deemed arbitraty if used in the commercial banking industry and would stand an excellent chance of gaining protection. On the other hand, if "Benthos" was used in reference to aquariums, it would likely only be deemed suggestive or descriptive. Even if Benthos was protected with regard to banking, you could still open a business names Benthos that offered plumbing services and register the name, although you probably would not be able to copy design elements of Benthos bank's mark. In your case, factors to consider would be how similar the industries are to each other. The categories of business operations for which trademarks can be sought is quite vast. Some very large businesses may hold many trademarks because they produce movies, sell clothes, and even license their characters for food products - think Disney. You are not going to be able to trademark the name Disney for almost any business purpose without running afoul of their mark. Returning to the Benthos Bank example, if your business name is Benthos Wealth, and your intended are of operation is financial planning, then they might well argue that you are interferring with their mark, even though you have added another word. In terms of "admitting guit and making me liable" - more information would be needed as to how long this has been going on, what are the services or goods coverted by the mark. and the language of the letter. When my clients receive such a letter, and if it is determined that this is a likely case of infringement, then  one of the first things I do is to contact the party sending the letter and see if we can work out a release that if my client changes the name to a mutually agreeable one, that the party owning the mark agrees to release all of its rights to seek damages, injunctions, or any other relief. I have very rarely had difficulty reaching such an agreement.   For the USPTO guide on the spectrum from arbitrary to generic: https://tmep.uspto.gov/RDMS/TMEP/Oct2012#/Oct2012/TMEP-1200d1e6993.html Best of luck, Michael R. Morris  ... Read More

You need to retain an anti-counterfeiting lawyer to prepare a reply letter for you.  The letter would say that you have immediately stop selling the counterfeiting goods,  that you did not know they were counterfeit and that you will not sell these same goods again.  This type of letter will usually resolve the dispute.... Read More

I suggest you not use in your novel the real names of any of your characters.  Also, do not use the name of Olstein's church or give its exact location or the name of the street it is on.  I suggest you take into account that the church was formerly a basketball stadium for the Houston Rockets.  Therefore, it has a large seating capacity but not many rooms suitable for hurricane refugees to sleep, live and eat.  You might also paint the minister as being compassionate but he did not think his facility was suitable for housing refugees. Also, I suggest you include a disclaimer in the beginning of the book saying that the names, dialog, and characters are fictional although the occurrences described are based in general on a factual occurrence in the aftermath of Hurricane Harvey. I suggest you have a lawyer with deep experience in copyright law and defamation law review the disclaimer, your story outline and one or two completed chapters of the manuscript before you complete the manuscript. If you give any interviews that may be broadcast or published in print, I suggest you have a carefully scripted account and that you adhere religiously to the script.   Before the interview, I also suggest you have the script reviewed by a lawyer with deep experience in copyright law and defamation law. If you are going to have a well-known publisher handle your novel, that publisher will have experienced legal counsel to review your manuscript for potential legal claims against both you and the publisher.... Read More

At a minimum, you should have a non-disclosure agreement drafted and have anyone you want to work with sign the agreement. You should also document your idea and talk with other people in your industry and try to get referrals/references for the people you are considering doing business with.... Read More

You have a contract, but it sounds like the publisher has breached the contract by failing to perform its obligations under the contract -- specifically, the publishing part. 1. Send a letter to the publisher, documenting everything you've done to get the publisher to perform. Keep a copy, of course. 2. That letter should have a deadline; the publisher will have to get back to you by a certain date, or you will consider them in breach and will get the book published elsewhere. 3. The day after the deadline (assuming, as is likely, that the publisher will not respond), send a letter saying that the lack of response confirms their intent to breach the contract, and that you will begin shopping the book elsewhere. Reserve your right to seek damages.... Read More

Yes, if you have been diligent and did not discover the infringment until now, then under the California Discovery rule, you CAN file now.  More information is required to determine if you meet that criteria.   Your best bet would be to consult with an intellectual property attorney. ... Read More

The process of registerting a trademark involves two steps.  First, you file a trademark application, then you wait until the Patnet and Trademark Office assigns an examiner to the case and the examiner typically issues an Office Action.  After that, the applicant and his/her attorney try to address the issues raised by the trademark examiner.  At ADLI law we charge a flat fee of $2,500 for the entire process, excluding responding to substantive office actions.  The substantive response may be required if the trademark examiner rejects a trademark application based on "likelihood of confusion."  Feel free to contact me if you have any furtehr questions.... Read More

Interesting question. There is a four-part test for fair use. The first two parts deal with the question of the purpose of the (1) original work (the movie),  and (2) the use -- your audio commentary. While a podcast can be strictly educational, most seek revenue through the sale of ads, and the like, so your use would probably be considered commercial -- as is the movie. Those two tend to cancel each other out, so now we go to the remaining two parts, which are usually the most important. (3) How much of the original is being used? If you just using snippets to illustrate a point (e.g., from The Empire Strikes Back, "Luke, I am your father!" "Nooooo . . . ."), that is a great example of fair use. However, if you are using the entire soundtrack, then that is likely to be found to be an infringing use. (4) What is the effect on the commercial value of the original work? Commentaries are now an important Blue-Ray feature, and the studios would argue that copying the entire soundtrack for commentary would likely diminish the value of their product -- and I believe that a court would likely agree with them. Thus, if you are using a few (2, 3, 5, etc.) minutes of soundtrack, that would have the best chance of being found to be fair use. Using the entire soundtrack, however, will most likely result in a lawsuit for copyright infringement, and a finding of liability.... Read More

1. Do not sue the court; it will waste your time and resources. An interlocutory appeal is highly unlikely to succeed, even if your appeal has merit, and I do not see any merit. 2. It is a very rare case that is sealed. It has long been a bedrock principle here in the United States that judicial cases are public. There are exceptions for some criminal cases and national security issues, but those exceptions are rare, and just for the government. 3. To the extent that you want to have a case sealed against the defendant(s), basic constitutional due process forbids that, and there are no exceptions.  4. The judge knows what she or he is doing. Antagonizing the judicial system and accusing it with collusion with pirates is counter-productive, at the very, very least. 5. I'm not sure what you mean when you say that your "USDC case charges internet copyright pirates, similar to federal cases." A USDC case IS a federal case.  You need to have a qualified lawyer review your case to make sure it has merit. If it doesn't, do yourself a favor and dismiss it as soon as you can.... Read More

Here's the good news: Congress specifically exempted photographs or artistic renditions of buildings. See 17 USC 120(a):   (a)Pictorial Representations Permitted.— The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.   That means you are free to use a photograph of a building in its environment.   The more nebulous issue is making sure that using that picture doesn't convey that the owner endorses your use. Not using the official logo or not making a claim of a connection will probably be enough -- but no one can ensure that someone else doesn't overreact.  ... Read More

Let me try to recast your facts in a manner a lawyer can understand, and then I'll have an answer for you. You and the partner wrote a few songs. He has recorded those songs onto an album, and is playing them live. I assume that (1) he is not giving you credit for the songwriting, (2) is not using any of your performance -- just the songwriting, (3) there is no written agreement for him to take over sole ownership of the songs, and (4) he is making some money from those songs. The following is based upon those assumptions; if the assumptions are incorrect, then the advice would be different. 1. You have rights to the songwriting and whatever profit that has brought. In the absence of a written agreement, both of you jointly and severally own those songs, and can use them, license them, etc. 2. You need to consult a lawyer experienced in entertainment law to disucss what your next step might be, from a cease-and-desist letter to litigation. While what you describe is not, technically, copyright infringement, you do have a right to reimbursement for your contribution to the songs.... Read More

Thank you for your quetion.  I am sorry to hear that someone has falsely accused you of infringing on their intellectual property rights. If your listing has been taken down I would recommend a "Letter of Reinstatement" to Amazon and explain how the claims by the accused  lack merit.  I would also send a Demand Letter to the accusing party for the false claims and let them know they are actionable and you will pursue legal recourse for their false accusations.  Our Firm has experience with both the Letter of Reinstatement and with dealing with people making false intellecual propety accusations.  Please feel free to call us directly at 954-727-8268.  Have a great day.   Sincerely.   Andrew Rapacke... Read More

Lawyers.com is the right place to be to find a good copyright infringement lawyer. Use the "Find A Lawyer" function, type in "copyright infringement" and your city or zip code, and you'll get a list of experienced copyright infringement lawyers. As one, I'm very happy that you have registered your works with the US Copyright Office -- that will help you a lot.... Read More

Did you commission the drawing with a written agreement, and if so, did the agreement make it clear that this was a "work for hire?"  Copyright law states that an independent contractor will own whatever he/she is commissioned to create unless there is a written agreement to the contrary. Best, Lisa Dunner... Read More

Dear NE   I am sorry to hear that you have been accused of trademark infringment and counterfeiting.  Please understand that both of those causes of action are very serious and can be expensive if a judgement is found against you.   Please do not ignore the matter as that is likely the most detrimental position.  I would consult counsel and create a plan to defend your position in a cost-effective manner.  I wish you the best of luck.    Sincerely Andrew... Read More

Viewing copyrighted material is not an act of infringement.  Consuming copyrighted media might include adapting a copyrighted work is and infringement.  For example, creating a variation or translation of the work is an infringement. Also, playing  a motion picture or a  recorded song, other than in your home, is an infringment.  A person cannot be prosecuted if he doesn't copy, save or dowload the copyrighted material unless he commits one of these other acts I just mentioned. Let me know if you have any more questions. Paul Van Slyke paul@hooverslovacek.com... Read More

1. People in public area may be photographed. There is a limitation on it, in that you cannot use it  to endorse a product or service without their permission (they have a right of publicity), but that isn't an issue here.  You cannot take a picture of them (without their permission) in a place like their home where they have a reasonable expectation of privacy. The Supreme Court has ruled that once someone puts something out in the trash, they are surrendering possession, and you can do what you wish of it, including taking it or taking pictures of it. The best solution is to simply take a picture of the trash itself, and explain where and when it was taken.... Read More