Trademark, Patent and Copyright Attorney, Lawyer – New York, New Jersey, Philadelphia

GREAT TITLE, BUT CAN YOU PROTECT IT?

admin — Thu, 07 Feb 2008 19:05:12 +0000

Many people believe that titles to publications or other works cannot be protected. This misconception stems from the fact that although copyright law protects the content of a particular publication, the Copyright Act provides that words, slogans and short phrases are not protectable under copyright law. Copyright Office regulations and numerous court decisions have determined that titles are equivalent to short phrases and, as such, are not protectable.

But is another type of intellectual property protection available? Trademark law protects words, logos and other devices that identify the source of goods or services the trademark owner sells, and distinguishes them from goods or services offered by another. Titles seem to fall within this definition. Unfortunately, relevant court decisions have made clear that titles, at least for single publications, will not be given trademark protection absent proof that they have acquired “secondary meaning.”

Under trademark law, marks that describe an element of the product or service they are used with are not entitled to trademark protection unless the mark owner can establish that when consumer see the mark, they do not think of its as a descriptive term but rather think of it as the trademark of the owner. This is called “secondary meaning”. An example is the trademark “Sharp” for televisions. Sharp is descriptive because the televisions sold under the mark contain a “sharp” picture. However, because the mark and products sold under it have been extensively marketed, and have been used for a long period of time, consumers, when they see the mark, generally think of the company that manufactures the televisions rather than that the mark is describing a characteristic of those televisions. “Sharp” has, therefore, acquired secondary meaning, and become a very valuable brand.

Interestingly, applicable Patent and Trademark Office regulations and related court decisions allow trademark protection for series of books, periodicals or newspapers in certain circumstances without proof of secondary meaning. The rationale for this is that a series title functions as a trademark because it indicates that each individual work in the series originates from the same source as the other works in the series. In this way, a series title is not necessarily descriptive of any one work in the series. That said, some courts hold that if a series title is very descriptive, proof of secondary meaning may still be required to establish trademark rights.

In short, authors and publishers should not look to the law of copyrights to protect the titles to their works. Instead, it is trademark law that potentially provides the protection they seek, although evidence of secondary meaning will typically be required.

TRADEMARK ENFORCEMENT IN THE VIRTUAL WORLD

Mark J. Sever, Jr. — Thu, 07 Feb 2008 18:59:23 +0000

With the ever increasing popularity of virtual worlds such as Second Life, trademark owners need to be aware of both the opportunities and challenges that their brands may face in these newly emerging markets. As a trademark owner, if you choose to conduct business in the virtual world, be aware that all of the attendant concerns of brand reputation and disparagement you face in the real world, such as counterfeiting, copyright infringement and misappropriation of property, translate into the virtual space.

Those companies which operate and police these virtual worlds are just beginning to acknowledge the challenges of protecting IP rights within this paradigm. While case law does not yet exist regarding whether property held in a virtual world has the same value as property held in the real world, the fact that some virtual worlds have a unique currency system in place that can be exchanged for U.S. dollars seems to present a strong argument in favor of the existence of property rights.

Second Life has acknowledged the challenges of IP rights in the virtual world by adopting the policy that the creator retains copyright and other intellectual property rights with respect to the content created in Second Life to the extent that the creator would have such rights under applicable law. Be advised, however, that this policy has not yet been tested in a court of law, nor have all virtual world providers adopted the same or similar policies.

While the virtual world has the potential to be a powerful marketing tool, businesses should carefully consider the pros, cons and subsequent legal issues that may arise before choosing to conduct business in this emerging market.

Open Source Software

John F. Letchford — Mon, 21 Jan 2008 22:35:17 +0000

Open source software code is publicly available and enables users to modify and disseminate new code including their modifications. Those who incorporate modifications into commercial software should consider both the patentability and infringement aspects of their efforts.

Much open source software is subject to the General Public License (“GPL”). Under the GPL, a programmer is required to grant IP licenses to downstream users of the code. Yet, it is also recognized that modifications to open source code may be commercially and possibly patentably protected.

Law firms, doctors’ offices, accounting firms and other services-related entities that use open source software but do not “sell” their modified code as a commodity are not likely to be subject to the GPL’s required licensing provisions.

However, modified open source software may be considered copyrightable and/or patentable subject matter that can be sold to the public. To the extent the modified software is considered “proprietary” and sold publicly, the end user may have to share revenue from sales of the software with the underlying software writer(s). Similarly, the modified software may be both patentable and subject to infringement of others’ patent and/or copyright rights. Therefore, careful consideration should be taken before one seeks to commercialize software based upon open source software

PROTECTING YOUR BRANDS FROM PARALLEL IMPORTS

Mark J. Sever, Jr. — Wed, 16 Jan 2008 21:19:13 +0000

As our economy becomes increasingly globalized, prudent trademark owners will remember that it is their responsibility to maintain control over the distribution channels, as well as the ultimate geographic sale location, of their branded products. Markets around the world are being flooded with “parallel imports” and “gray market” goods - branded goods that are imported into a market and sold there without the consent of the owner of the trademark in the markets. These goods are not counterfeit (i.e., manufactured by someone other than the brand owner). Rather, they are manufactured by, for, or under license by the brand owner, but are imported into a jurisdiction different from that intended by the trademark owner. The question for trademark owners is, what rights do they have to stop the sale of gray market goods?

In the United States, trademark owners have several options including: (i) seeking assistance through the United States Customs and Border Protection Division of the Department of Homeland Security (CBP), (ii) filing a lawsuit in federal court, or (iii) filing a complaint with the United States International Trade Commission. Each avenue has its own distinct set of advantages and disadvantages, but each is a valuable resource to trademark owners.

The CBP has developed an initiative to stop the import of merchandise that infringes on United States intellectual property rights. To utilize the services of the CBP, trademark owners must first record their trademark rights with the CBP. Information requested in the CBP application includes the trademark owner’s name, address and citizenship, the trademark registrations to be recorded, information about the entities licensed to use the trademarks, and a description of the merchandise associated with the trademarks. Once the trademarks or products are registered, the CBP will enforce the trademark owner’s rights against all parallel import products that are materially different from products authorized for sale in the United States, even if the products originated from an affiliate of the U.S. trademark owner. “Material differences” include differences such as:

• Specific compositions of the products
• Product construction or structure
• Performance or operational characteristics
• Differences resulting from legal or regulatory requirements or certificates
• Other distinguishing factors that may cause consumer confusion with products authorized for sale in the United States.

It is important to note that the CBP will allow the importation of parallel import goods if labels are affixed to the goods indicating that the goods are not authorized for importation and sale in the United States by the rightful trademark owner.

If the CBP does not prove to be a viable option for a trademark owner, the trademark owner may file a lawsuit against the importer for trademark infringement, and in connection with that lawsuit seek both monetary damages and a court order enjoining future imports. In order to successfully prosecute such a case, trademark owners must establish that material differences exist between their products and the alleged parallel imports and that those differences are likely to cause consumer confusion or deception concerning the goods. These differences can exist in quality control, packaging, configuration, price, language labeling, warranty coverage and post sales service. Unfortunately, a lawsuit is typically the most expensive option available to trademark owners.

Lastly, trademark owners can seek the aide of the United States International Trade Commission (ITC). The ITC can be advantageous to trademark owners because it does not have all of the procedural prerequisites the other options do, but it does require that complaints filed by trademarks owners be far more detailed. Because of this, trademark owners can expect to incur more time and expense investigating potential claims prior to filing an action, than they might if they pursued claims in the CBP or court.

In light of the current state of imports in our country where, for example, products are routinely recalled for safety hazards, it is more important than ever for trademark owners to ensure that their products in the U.S. are in fact genuine or authentically licensed. Depending on the circumstances, this can be accomplished through one or more of the methods described above. Choosing which method is important, but not as important as choosing to take action. The failure to do so can destroy the good name the trademark owner has invested so much in acquiring.

Beware of Domain Name Traffickers

John F. Letchford — Mon, 10 Dec 2007 01:44:54 +0000

Internet domain name registration is a first-come, first-served process. Because of the simplicity and relative low cost of registering a domain, trafficking in domain names has been commonplace since the inception of the Internet. It began with domain name hijacking. In its simplest form, hijacking is the registration of a domain name or names which incorporate the company name or personal name of a famous company or person and then offering to sell or, in fact, selling the domain to the rightful owner. This behavior, known as “cybersquatting,” was effectively outlawed by enactment of the Anticybersquatting Consumer Protection Act of 1999 (ACPA).

Perhaps cognizant of the ACPA, and surely aware that web surfers frequently make typographical errors when entering domain names in Internet browsers, traffickers soon realized the potential in registering names that, but for one or a few characters, are identical to a proper owner’s domain name. This practice, known a “typosquatting,” is discussed in greater detail in my article on this page entitled “Typosquatting and Domain Name Dispute Arbitration.” Typosquatting disputes are commonplace. As a general rule, unless the typosquatter (like the cybersquatter) can show a legitimate business reason (e.g., the disputed domain incorporates the registrant’s pre-existing business name) or a First Amendment “free speech” reason for registering a certain domain, domain name dispute resolution arbitrations and court proceedings routinely transfer the disputed domain to the complainant.

Undaunted by the futility of cybersquatting and typosquatting, domain name traffickers have invented new ways of commercializing domain names. Among these are domain name “spying”, “tasting”, “kiting” and “parking.”

Domain name spying concerns the practice of securing “potential” domain names. It involves a covert recording of an individual’s attempt to determine if a particular domain name is registered. This information is used by an interested trafficking party to register the domain name before the potential registrant has the opportunity to do the same. It is not presently known how spies discover the existence of an inquirer’s domain name searches.

Domain name tasting refers to the simultaneous registration of several domain names (often hundreds or even thousands). During a five-day grace or trial period common to most domain registrars, the taster can evaluate the short-term advertisement income from a given name, thus transforming the domain name system into a speculative market. The taster can then retain potentially profitable domain names in a manner that can harm the trademark protection of others while returning unprofitable names during the grace period at no risk (i.e., the taster receives a full refund for the cost of an unwanted domain registration).

The related practice of domain name kiting involves returning and then quickly reacquiring domain names within the 5-day trial period, thereby effectively maintaining perpetual ownership of the domains without having to pay registration fees for the repeatedly released and reacquired domains.

Domain parking sites collect and index additional links where domain name registrants share revenue generated by web traffic but do not directly compete with the holders of similar legitimate trademarks or brand names. Registrants of parking sites typically use computer software to automatically register expired domain names and then ‘park’ those domains on pay-per-click portal sites. Fortunately, in recognition of the harm inherent in automated registration, a World Intellectual Property Organization-recognized arbitration panel has determined that a failure to conduct a prior check for third-party rights, in circumstances such as bulk acquisition of domain names using a automated registration processes, constitutes “willful blindness” and thus bad faith registration.

There is no easy answer to the evolving problem of domain name trafficking. However, a few simple rules manifest themselves: (1) register desired domains as soon as possible, (2) be aware of the expiration dates of those registrations, and (3) vigilantly monitor the Internet for potentially conflicting registrations and uses.

Protecting Your Company’s Trade Secrets

Mark J. Sever, Jr. — Fri, 02 Nov 2007 15:24:24 +0000

Trade secrets — information that has value because it is not generally known — are perhaps the most difficult form of intellectual property to protect. This is due in no small part to the fact that the information must actually be kept secret, or at least its confidentiality maintained, for as long as trade secret protection is sought. Owners of trade secrets should be aware, however, that if they maintain the confidentiality of their trade secrets, the law provides for injunctive relief halting unauthorized use and dissemination of those trade secrets, and recovery of damages, in the event those trade secrets are misappropriated by third parties. Moreover, individuals who leak trade secrets can face criminal charges provided the owner of the trade secrets makes reasonable efforts to protect their confidentiality.

Some steps that can be taken to protect (i.e. maintain the confidentiality of) trade secrets include:

Allowing disclosure within the organization only when there is an actual need to know the information being disclosed.

Ensuring that all information disclosed is subject to a non-disclosure agreement which restricts the use of that information as a trade secret.

Including a section in the company’s employee manual prohibiting the disclosure of proprietary information.

Labeling all proprietary information as confidential.

Restricting access to research facilities to essential personnel.

When developing internal security programs, which can be invaluable in maintaining the confidentiality of trade secrets, business owners should work closely with auditing and information technology groups, research and development and marketing departments and business partners to create an infrastructure committed to protecting trade secrets. In all circumstances, appropriate forms of non-disclosure agreements should be used. Conversely, if approached by a third party with information suspected to be confidential and proprietary, businesses should take care to confirm that its disclosure is authorized and the information is treated in accordance with agreed upon terms and protocols.

Company Computer System Usage Etiquette - How to Establish Guidelines for Your Employees

Mark J. Sever, Jr. — Thu, 25 Oct 2007 16:37:22 +0000

Many employers are finding their companies held liable for an employee’s misuse of a computer system, bringing the company negative publicity and in some instances, subjecting it to civil or criminal liability. Therefore, it is important that employers take a proactive approach in setting guidelines governing their employees’ Internet and e-mail usage.

At minimum, all employers should implement detailed policies regarding use of their company’s information and technology systems. Prudent employers will review their policies annually and make necessary revisions to reflect changes in technology. When drafting or reviewing such policies, companies should make sure to impress upon their employees that the employees have no reasonable expectation of privacy in their communications made through company owned devices. In this regard, the policies should include statements such as:

The company’s information and technology systems are to be used for business related purposes only.
Internet and e-mail conduct that violates the law or the company’s policies is strictly prohibited.
Equipment provided by the company, including any information stored on that equipment, is owned by the company and therefore may be reviewed or monitored at any time by management.
Violation of the company’s policies regarding information and technology systems will result in disciplinary actions including termination.
The company will report any suspected illegal activities it uncovers to the appropriate authorities. Furthermore, the company will cooperate with law enforcement officials seeking evidence.

This information should be disseminated in an employee handbook and posted in an accessible location such as on the company’s intranet site or a cafeteria bulletin board. Additionally, as with all company policies, employers should obtain written acknowledgements from their employees confirming that its employees have read and agree to the policy.

Companies may also consider implementing computer monitoring practices. Software tracking programs are available to monitor computer usage and electronic communications, and firewalls can be used to block certain types of information from being communicated by or to the company’s information and technology systems. Of course, before implementing any of these solutions, employers should take care to confirm that they do not violate applicable laws governing wiretapping, electronic communications or the like.

Security Interests in Intellectual Property

John F. Letchford — Mon, 15 Oct 2007 23:04:54 +0000

Perfecting a security interest in intellectual property involves determining the appropriate filing venue. In general, Article 9 of the Uniform Commercial Code (“Article 9”) applies to transactions intended to create a security interest. However, Article 9 can be preempted by certain federal laws authorizing other procedures for recording liens. For patents and trademarks, the United States Patent and Trademark Office (“USPTO”) governs assignments of such property. For patents, any assignment is void against a subsequent good faith purchaser (a bona fide purchaser) unless it is recorded in the USPTO within 3 months from the date of the purchase. For trademarks, a current or pending mark must be registered with the USPTO within the same time frame, with a priority date from the execution of the assignment, not the date of recordation. Copyrights can be assigned by a written document recorded pursuant to 17 U.S.C. § 205(c) with the United States Copyright Office.

Once the assignments are made, they can be perfected in patents and trademarks by filing a UCC financing statement at the appropriate state office. Presently, the law is unsettled with regard to the rights of a bona fide purchaser for value, or of a lender who has filed a mortgage with the USPTO, so it remains prudent to file with both the state and federal offices with regard to patents. A similar precaution can be taken with trademarks, but care should be used if the collateral includes “intent to use” registrations, which are prohibited from assignment except as part of the sale of an entire enterprise. Errant assignments can inadvertently lead to cancellation of a trademark registration. For copyrights, as noted above, the proper method for recording a security interest involves recording the interest with the United States Copyright Office.

New Jersey Employers Beware - Court Decision Finds Employer Liable for Employee Misconduct

Mark J. Sever, Jr. — Mon, 01 Oct 2007 21:59:15 +0000

In light of a recent New Jersey Superior Court Appellate Division decision, it is possible for an employer to be held liable to third parties harmed by its employee if the employer has reason to know that the employee is engaging in Internet conduct that is potentially harmful, yet fails to take remedial action. In Doe v. XYC Corp., an employee’s spouse sued her husband’s employer on behalf of her minor daughter after her husband was arrested taking pornographic pictures of the daughter. The employer had in the past received reports that the employee was accessing pornography, including on one occasion, child pornography, during the work-day using the employer’s computers. The employer performed only a cursory investigation and admonished the employee, but took no further action even when it later determined that the employee’s conduct continued. In light of these circumstances, the Appellate Division reversed a trial court ruling and permitted the case to continue.

In light of the Doe decision, employers in New Jersey must be vigilant in implementing precautionary guidelines and procedures to minimize the risk that their companies will be exposed to liability for the inappropriate online activities of their employees. Preferably, those guidelines and procedures will also outline a plan of action should the preventative measures fail.

Often times, co-workers are the most perceptive to one another’s computer usage habits. An anonymous complaint policy allows employees to report any serious, improper Internet conduct without the worry of facing repercussions from their fellow co-worker or the company. Once a complaint policy is in place, the company should establish an investigatory process to respond to suspected abuse of the company’s technology systems in a timely and even handed manner. This process should include interim measures to be taken during the investigation, such as prohibiting the alleged perpetrator from using the Internet. The company should also establish a process for communicating information to law enforcement officers, as appropriate, and seek legal counsel to determine the company’s obligations to potential third parties who may have been harmed by the employees illegal conduct.

Properly handling allegations of pornography is particular important in instances where children are possibly the subjects of the pornography. If an employer uncovers pornography on an employee’s computer but is unable to determine if the images are of children or adults, a report can be filed with the Cyber Tip Line, a Congressionally mandated mechanism for reporting cases of sexual exploitation of children. The information will be forwarded to law enforcement personal for investigation where it will be reviewed to determine if the images match other known images of child pornography. This will give the company a permanent record of its efforts to contact law enforcement personnel with its concerns without rushing to conclusions about the employee.

The Internet has become an integral part of the workplace, but employers must remain attentive to their employees’ Internet activity. If inappropriate company computer use is every suspected, it should be promptly investigated and appropriate remedial action, including filing reports with law enforcement authorities, should be taken when necessary.

Open Source Code: An Intersection Between Copyright Law and the General Public License

John F. Letchford — Tue, 25 Sep 2007 19:00:22 +0000

Independent computer programmers and software developers are increasingly turning to open source code in writing new computer programs. Therefore, there is a growing need for both programmers and developers as well as companies who contract for their services and distribute their software to understand both copyright law and the GNU - General Public License (“GPL”) which governs open source code.

The Copyright Act establishes exclusive rights of creators in their works, including the right to copy, distribute, display and/or create derivative works. These exclusive rights relate to the general public, but not to parties with whom the creator may have agreements limiting those exclusive rights. In other words, the creator’s exclusive rights can be altered by a contract or license with another specific party. For example, a company may hire a software developer to create a program that will enable the company to manage its operations more efficiently. The savvy company will require the developer to sign an agreement stating that the company will retain all of the creator’s copyrights in the program. In that event, the creator may relinquish his or her exclusive rights in the work to the party that commissioned the work. It is also possible for the creator and the distributor to share rights in a commissioned work, software or otherwise.

The exclusive rights of the copyright owner (whether the creator or a distributor to which the creator has transferred exclusive rights) may also be limited by the “fair use” doctrine. For example, under the fair use doctrine it is permissible for a person to reverse engineer a software program. Once again, a contract or license can limit these rights. Therefore, it is advisable for software distributors to include a clause in their software licenses requiring the end users to waive their right to reverse engineer. Such clauses are commonly found in a so-called End User License Agreement (“EULA”) associated with originally purchased/licensed software. Be advised, however, that this waiver of rights is not applicable to strangers to the agreement. That is, if an individual obtains a copy of the program on the street, that person is bound by general copyright laws in the sense that he or she cannot copy or distribute the software, but could still reverse engineer the program under the fair use doctrine.

When programmers incorporate open source code into their software, traditional copyright laws become muddled. Under the GPL, anyone may make changes or improvements to open source software or include it in whole or as part of another program, thus creating a derivative work. However, since the derivative work contains open source software it must be distributed under the terms of the GPL. While there are several variations of the GPL, most contain requirements regarding the distribution of software, namely that (1) the software give notice that it is governed by GPL, and (2) anyone redistributing GPL software must provide a copy of the source code at no additional cost.

The GPL permits commercial distribution of GPL software and its derivatives as long as the terms of the GPL are met. While consumers could download the modified source code for free, many are willing to pay for the convenience and technical support associated with purchasing or licensing the software through a distributor. But, since the GPL is applicable to all software derived from the original open source code, companies must be diligent in verifying the origin of their software before distributing it for a fee. This means that if software containing modified open source code is sold or licensed for a fee, a copy of the modified open source code must be provided to original purchasers/licensees under a no cost license.

The enforceability of the GPL has yet to be challenged, but many of its requirements GPL are in conflict with traditional copyright law. Hence, companies that rely heavily on the use of open source code should either internally or through their legal counsel carefully monitor the latest legal developments in this evolving area of the law.