Pennsylvania Intellectual Property Legal Questions

The answer to your question is yes you can license your trademark, but in doing so, you must exercise control over the use of the mark and can become liable for the acts of your licensee. For example, if the comic book contains a contest or endorsement, or libelous statement which results in a lawsuit, you could be named as a party in the lawsuit have to account for damages if you did not exercise sufficient control. However, assuming you do license the trademark, the license agreement should state that use of the mark enures to your benefit, and then, you could register your mark for comic books even though you don't sell comic books yourself.... Read More

Not enough information is provided about the case, but you really should not attempt to defend the law suit on your own without the assistance of a lawyer. However, to answer your question, it is too soon to file a motion to dismiss. In the Answer to the Complaint, for those allegations that you believe are in correctyou simply state that they are denied, for the allegations that you believe are correct you simply state that they are correction and for the allegations that you believe do not have sufficient information to either deny or accept, you simply so state.  In your answer, you also have to set forth your counterclaims if you have any and in some types of cases, some counterclaim must be included in the Answer or your right to assert them is lost. Again, you really should not proceed on your own.... Read More

In the US, trademark rights flow to those who use the trademark first, but with some important limitations. If you begin using a trademark in the greater Philly area in 2008 and someone files a trademark application to register the same mark for the same goods in 2012, you have superior rights to the mark for the goods with which you were using the mark and in the geographic market you were using as of the day that application was filed.  The 2012 applicant (assuming the trademark registered) has superior rights to the rest of the country. If you branch into new, related products or beyond the greater Philly area, the trademark registrant can sue you for infringement even though you were using it before they trademarked it. They cannot sue you for infringement for selling the goods you've been selling within the greater Philly area. Terms of art used in this type of dispute are "senior user" and "junior user". You would be the senior user with common law trademark rights. You should be able to find online articles using these terms. Good luck, Todd... Read More

In most cases, the person who took the pictures is the owner of the copyright. For example, a wedding photographer owns the copyrights to the pictures they take even though the bride and groom are in most of the pictures and paid the photographer to take the pictures. The church doesn't own the pictures taken there. The reception hall does not own the pictures taken there. Transfer of the ownership of the copyrights require a signed writing. If the ex employee did not take the pictures, you can get ownership of the pictures from the person who did and file suit. If copyright infringement is not an option, you can also try unfair competition. Most states have broadly written unfair competition laws to protect businesses from competitors misleading customers for the purposes of gaining an unfair business advantage. Keep in mind, even if you successfully get the ex employee to stop the using those pictures to advertise, you may find the court awards you less in damages than your legal counsel will cost. Good luck, Todd... Read More

The Copyright Office does not check on the validity of names.  Further, not using your legal name does not invalidate the copyright registration. You can use your maiden name. You can use a nickname. You can use a pseudonym. The Copyright Office does warn that if you do not provide your legal name in the registration, you may have trouble proving ownership in the copyright for other legal/business dealings in the future. Here is their exact language: http://www.copyright.gov/fls/fl101.html Good luck, Todd... Read More

If you design a copyrightable logo and the agreement is silent as to transfer of copyright ownership, you have the right to register the copyright and control its reproduction. Absent a written agreement to the contrary, the author (source of the creativity) is the owner of the copyright. Without looking at the logo, it is hard to answer whether the logo has the modicum of creativity necessary to obtain copyright protection. If the copyright office does not believe it is creative enough to be protectable, then you will not have any rights to prevent their reproduction of a logo. In practice, it is always better to put the terms of use in a written agreement before the logo is prepared. Without a written agreement, you are creating a situation that could result in litigation, hurt feelings, unrest, and frustration. ... Read More

You could be sued for trademark infringement. GE (in your hypothetical example) could allege that the title of the book is going to lead consumers to believe that the book comes from GE and you are generating sales from that confusion. Even if it is a case that GE loses at trial (and I'm not saying they would lose based on the limited facts offered), the cost to have that fight likely exceeds the profit you would generate from the book. If even a legal victory is a financial loss, I would discourage the activity. You have not identified the manufacturer in question, which is fine. I would suggest looking around and seeing if others have been able to publish comparable books unlicensed. If you see they have, perhaps the company is not as aggressive as some, in which case you could give the book a shot, with the plan to quit if you receive a cease and desist letter.... Read More

The "is this legal" question always sets me back a step.  When I think of something being 'not legal' or illegal, I think of activity that is criminal.  I don't know criminal law well enough to give an opinion, but if that is your question, it should be sent to the criminal law topic. I think I would term your question, "is this actionable?" The difference seems semantic, but the real difference is that if it were criminal, the state would pay to protect your rights, whereas if it is actionable, you will need to pay out of your own pocket to try to make yourself whole. I see two prospective actions when I read your question.  The first is in copyrights. Any work you create is copyright protected at the moment of its creation. If they posted your presentation without your permission, they digitally copied your work and that may be actionable. If you file for copyright protection within 3 months of creation/publication of the work, you can collect statutory damages and attorney fees for a copyright violation. If you file for registration outside that 3 month window, you can still sue, but you can only collect for actual damages (their profits, your lost profits, etc.). The second prospective action is misappropriation. Misappropriation is a state tort, but wikipedia gives a fair explanation of it. If you successfully brought an action, you could sue for your lost profits or their profits (not sure either would make an action worthwhile). And here is where we differentiate actionable and action-worthy. If you need to spend $50,000 to collect $1,000 (completely hypothetical numbers), while ruffling feathers in an industry where you are still trying to break in, this alleged misappropriation may be actionable without being action-worthy. Last, keep in mind that a determination of copyright infringement or misappropriation would require a review of more facts than you were able to fit into the question. The above is not analysis of your situation, but simply an idea of where I would start the analysis.... Read More

Nickolay, Is your project going to be sold or is for a work or government presentation? If it's not going to be sold, you should be okay. Be sure to give credit to Apple. It sound like you might be making your own illustration, and simply using the Apple map as the basis. That should make your use even more acceptable. Richard Koch... Read More

It is always possible to negotiate. You have the ultimate power here -- you can just say "no" and then they are forced to decide whether to sue you over what is essentially a small claim. They are under no obligation to adhere to their original settlement offer, but if the case goes to litigation, there will inevitably be a settlement conference at which you can whip out the plaintiff's pre-litigation settlement offer.... Read More

In a word, no. Microsoft owns the intellectual property rights in its games and may lawfully preclude others from engaging in any commercial activity relating to those characters. There is nothing to prevent the prop-maker from giving you one of the characters, gratis. If, after receiving one, you wish to give him an unrelated gift, you may do so. The risk is his.... Read More

Crests would be protected under copyright law. At this point, in 2012, anything created before 1923 is no longer copyright protected so if the crest was created before then then it is in the public domain and available for everyone's use without permission. However, make sure that you are not using someone else's altered version, because they may have a copyright on their alterations. ... Read More

Rights in trademarks can be transferred in bankruptcy. While nonuse of a trademark can mean the trademark is abandoned, there are cases where trademarks have been transferred and used by a successor to the bankrupt business, or just the part of the bankrupt business that used that trademark. This is because there was no intent to abandon the trademark. Clearing rights of intellectual property of a bankrupt company can be tricky for this very reason - often it is not clear from the record how these rights were disposed and whether there is another owner.Slightly altering a trademark does not necessarily make it nonfringing. The question is whether the trademarks are confusingly similar, which depends on the similarity of the trademarks; whether the trademarks are being used on similar goods or services; whether the goods or services are offered to similar customers through similar marketing channels; and whether there is any actual confusion among consumers. Sometimes identical trademarks are not infringing, and sometimes trademarks that are not identical ARE infringing. You have to look at the whole picture.... Read More

As a general matter, the standard for copyrightability is very low. Accordingly, it is possible that the unique layout of the calendar is protected, and you will be an infringer if you copy it. "Derivative" works (note correct term) are the property of the original copyright owner, not of the person (like you) who decides to modify the original. If you would like to have formal legal advice on this subject, our office practices in this area. Almost all copyright determinations are fact-specific and you will not be able to get a categorical "yes/no" answer without engaging counsel for a review of the works in question.... Read More

If you have only changed the black and white photos belonging to someone else into colored photos, your colored photos will likely be considered a derivative work.  The copyright of a derivative work is owned by the owner of the original work.  Therefore, the original owner can limit how you use those works.  Your use of such works without their permission (a license) may constitute copyright infringement. This information should not be considered legal advice for your specific circumstances and are offered only as general information on the topic of your question.  This should not be relied upon as legal advice and Sills Cummis and Gross does not represent you until you have signed a retainer letter from us.   Philip Braginsky Sills Cummis and Gross http://www.sillscummis.com/practice/practice_group.asp?id=28... Read More