Tag Archives: intellectual property

Trademarks

Trademarks are generally speaking a word, name, symbol, device, or any combination of the above used or intended for use in commerce. In limited circumstances, trademarks can be extended to cover product packaging or other aspects of a product. For instance, the box used from Tiffany's Jewelry, or the bottle used by Coca-Cola may qualify as trademarks. Generally speaking, Trademarks serve two primary purposes. 1. Trademarks are used to identify or distinguish the goods or services between one manufacturer or provider and another. 2. Trademarks are used to easily convey or identify the source or provider of goods and services.

It is important to emphasize, that trademark law is mainly to help with the identification of goods or services with its provider by consumers. Although helpful for businesses, if it causes confusion in consumers, trademark protection will most likely be denied. The “swoosh” used by NIKE is to identify the goods are manufactured and produced by NIKE. If everyone had a swoosh, consumers would be confused as to who the producer or supplier of the shoes or athletic gear is.

Governing Law

In the United States, Trademarks are governed Federally by the Patent and Trademark Office (“USPTO”). The controlling federal law is the Lanham Act 15 U.S.C. §§ 1051 – 1127 (passed in 1946, amended in 1996). There are also state statutory and/or common laws which may be applicable to trademark registration, use, and protection within that state's borders.

When a Trademark is registered under the Lanham Act, it is protected nationwide by federal law. Registration does not guarantee the preservation or protection of a mark, but is often a key step in signifying and preserving rights. A mark can be registered by an individual or company that is already using a mark, or that is planning on using the mark in federally regulated commerce. (When a mark is used to sell goods across state borders.)

The USPTO has published regulations regarding trademarks, their use, and rights afforded. They are found in Parts 1 – 7 of Title 37 in the Code of Federal Regulations. Upon application, the trademark is reviewed by an examiner, and if approved, is published in the Official Gazette of the Trademark Office to notify any and all interested parties of the pending trademark approval. Once notified, Interested parties may file a complaint with the USPTO to contest the Trademark application for cause, if the mark is already in use, or if the mark is likely to cause confusion about the source of goods or services.

If rejected, there is an established appeals process for applicants to ask for reexamination of rejected applications.

Qualifying as a Trademark

In order to qualify as a trademark, and to be regulated by the Lanham Act, two purposes or conditions must be met.

1. The mark must be used in federally regulated commerce. This means that the mark must be advertised and used to sell goods across state borders. If it is only advertised or used within the confines of a city, county, or state, then the mark cannot be protected by the Lanham Act, and falls under protection of your local statutory and common laws.

2. The mark must be distinctive. Distinctive is a term used to describe marks that under normal circumstances do not describe the underlying product, and if the mark does describe the underlying product, then it will require a secondary meaning. Moreover, the mark cannot fall within the category of a “forbidden mark.”

Forbidden marks are marks, signs, slogans, or instances used to designate a product which are not allowed to receive protection either through the U.S. Court system nor through registration with the USPTO. They include the following categories: 1. Generic Marks; 2. immoral, disparaging or scandalous marks; 3. marks which are primarily functional; 4. marks consisting of a living person's name, signature, or portrait, unless written permission has been given; 5. deceptive marks and 6. marks consisting of a deceased President's name, unless the President's spouse has granted written permission or is no longer alive.

Trademark Classification

Trademarks are required to be distinctive or capable of allowing consumers to identify goods or services based on the marks use. The courts use four different categories to determine the degree of protection offered to a mark. The four categories are 1. arbitrary or fanciful; 2. suggestive; 3; descriptive; and 4. generic. They are listed in descending order based on what is considered the “strength of the mark.” The stronger the mark, the easier and more protection a mark is granted.

The strongest marks are “arbitrary or fanciful.” These marks bear no logical relationship to the product or service being offered except for the advertising, marketing, or use of the mark by the producer or supplier of the goods and services being offered. Words such as “Apple,” “NIKE,” or “Ferrari” are examples of arbitrary marks, bearing no logical relationship to computers, athletic gear, or cars respectively. Because there is no logical relationship to the product or service being offered except by the one created by the users of the mark, the mark is given the highest degree of protection.

Next are suggestive marks. These marks, although they do not describe the mark represent a characteristic of the product or service. Some more famous suggestive marks include “Orange Crush” (the soft drink), “Coppertone” (the sun-tan lotion), and “Playboy” (adult entertainment). The mark is related to the product in that it identifies a characteristic of the product, but does not necessarily describe the product. It is a fine line between suggestive and descriptive, and it is advisable to choose marks that are arbitrary or fanciful as often as possible.

Descriptive marks are marks that describe the actual product or service. Although much harder to protect than the previous marks, there are very prominent examples of descriptive marks that are afforded protection such as “Holiday Inn” and “Windows.” Unlike the previous examples, descriptive marks are required to demonstrate a “secondary meaning” in order to receive protection.

A mark acquires or demonstrates a secondary meaning when the general consumer public primarily associates that mark with a particular supplier or producer, and not the underlying product. For example, “Holiday Inn” is not associated with hotel services in general, much like Bed and Breakfast, but as a brand or provider of services. Similarly with Windows, although initially descriptive of the computer operating system and how it operates, it has acquired a secondary meaning associating it with a particular service provider. In order to determine the strength of a secondary meaning, courts will often look to the following factors: 1. the amount and manner of advertising; 2. the volume of sales; 3. the length and manner of the term's use; and 4. consumer or general public opinion. Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).

Lastly, generic marks are very general terms. Marks which fall into this category do not receive protection under trademark law. Words such as “car,” “computer,” or “light” are unprotectable because of the harm it would cause the general public in making general terms protectable and the unfair market advantage. Moreover, terms can become generic over time because of use or acquisition by the public. This is currently an issue being addressed by Google, and examples of loss include “Thermos,” and “Cellophane.” “Kleenex” has also bordered on becoming a generic mark because the public has adopted the term to describe not the particular brand, product, or producer of goods and services, but a product in general.

If you have questions or comments, please contact us .

 

Ten Tips to Technology Contract Drafting

Whether you are an attorney or are thinking of meeting with an attorney, or just going to draft a contract on your own, look out for these areas. The following tips are meant to help people cover over key concepts in drafting, so you don't miss the big issues.

(i) Offer/ Acceptance

Technology or not technology, basic contract principles apply. There needs to be a clear offer, and a clear acceptance. While the courts today are allowing more and more for emails to constitute acceptance, it is still best practice to get together in a room and sign the piece of paper.

Be clear in your terms, and clear in your contract. If there are things that you both expect which you "spoke" about, often referred to as an "oral agreement," both parties will be better served when you write it down on paper.

Ensure that everything is written down as specifically as possible. This includes accepted levels of performance, payment terms, and price.

(ii) Modification

It is important to ensure that there is a plan to modify and adapt the contract in foreseeable ways. It is very common for their to be fluctuation in the market, in the product, or in the supply chain, whether that be data feeds, inconsistent "up-time", delays in development, or increases in costs.

Although it is very common for technology contracts to be a fixed price, or on the traditional "time and expenses" model, it is important to build in the ability to be flexible. This will allow your contract to adapt and change the same way that your business relationship changes with vendors, suppliers, and customers.

(iii) Technology Specification

Ensure that the specifications are part of the contract. It is all too common for the specifications to be outside agreements, or addendum that can easily be changed or considered to not be part of the contract.

Furthemore, ensure that the specification is as specific as possible. Whether it is a guarantee in regards to latency, packet loss, "up-time", a delivery date, data integrity, or parity, it is important to place them in the contract as specific as possible. It is important to realize that leaving specification language out on purpose is not for anyone's benefit. It won't keep a client bound to the contract for longer because the terms of the contract are not as tight, nor will it protect the vendor or supplier from breach of contract.

iv) Intellectual property

Intellectual property goes beyond the standard copyright, trademark, and patent law that is commonly associated. Business practices, just general ideas, discussions should be discussed. Applying language similar to what one would use in a non-disclosure agreement.

Furthermore, anything that is core or key to a business model should be protected either through specific language, licensing language or agreement, and realize that there may be exposure of intellectual property from third parties, whether that be material a business has licensed, acquired, or information that is exchanged in other agreements.

(v) Licensing

It is important to clearly spell out the license and to inform the other party of the license and the rights associated with that license. There is a common misunderstanding that a piece of software, idea, patent, hardware, or section of code is licensed perpetually and for any use.

Not only is this type of licensing model very uncommon, it is rare that an intellectual property owner will "license" their intellectual property for any use at any time in any way. Remember to limit the license not just in regards to time, but also to as to scope. Clearly define how the product is to be used, and for what functions. Discuss with the other party in particularity the application of the intellectual property.

Lastly, do not forget to discuss and define the elements and ways in which the license can be terminated.

(vi) Limitation of liability

Limitation of Liability is the key issue in any supplier or vendor's mind. Review your insurance coverage, ways that the product could be utilized, and how the product could malfunction, including loss of business losses, destruction of hardware or dependent machinery.

There are ways to limit liability, and one key is, even if you feel it may be an egregious or possibly unenforceable limit of liability, if there is a bargain for and exchange for that limitation, whether the customer secures a lower price, longer license, or other feature in exchange for the limitation of liability, then it is a higher likelihood of being enforced, and therefore protecting the licensor.

(vii) Ownership

Label and identify all ideas or intellectual property involved in the exchange and who owns the intellectual property. If you are contracting with another party to develop a product, identify which party shall own the license, copyright or any other right to the deliverables. This includes whether the product can be used in portfolios or any other advertising.

(viii) Product Delivery, Testing, Acceptance, Denial

The optimism and confidence that you have when entering an agreement can quickly disappear as deadlines are missed and promises are not kept. How do you know the work is done? How do you get out of the deal if things don't work out? When should you have termination rights or get refunds? Should the vendor be obligated to help you transition to a new provider?

In most cases, you should be able to get a warranty that deliverables will perform in accordance with specifications. Have you adequately set out your specifications?

(ix) Termination

One of the most important things in any contract is clearly and easily defining how the contract can be terminated, and when it will end. It is rare that contracts are everlasting, although some automatic renewal contracts do seem to continue in existence well past their utility.

Clearly define ways of resolving dispute, how to give notice, and terms and situations which the contract will end. The smoother the exit strategy, the more likely companies will do business with each other in the future, and the less likely a lawyer will have to be involved.

(x) First Draft

It is one of the most strategic points for a lawyer to be the first to pen the agreement. In starting the contract and drafting the first round, a person gains the upper hand in shaping the negotiations, what is up for negotiation, and shaping the entire agreement.

With this upper hand, try and avoid as much as possible, one-sidedness. Obviously, the less debating and the quicker a deal is signed, the sooner business can move forward, generate more revenue, and apply the principles and ideas to running a successful company.

Graphic Designers and Fonts

In discussions both on and offline, Graphic Designer's often have the question of what to do with and how to use fonts that they have been given.

The answer to all questions is: check the EULA for the typeface(s)/fonts in question. Foundries’ EULAs are not very standardized, and each foundry dis/allows different things.

A few questions that have come up regularly are:

1) Is it legal and within a graphic designer's rights to send fonts to the printer when the job goes to press?

Answer: Check the EULA. Some foundries allow Graphic Designer's to send fonts to teh printer exclusively for the printing of a finished product, other foundries do not. There are also some foundries which allow the outlining of fonts to vector art, while others do not. Some will allow embedding in PDF artwork, some will not, etc. In the end, you need to read the EULA, and keep a database of the EULA and what is allowed with that particularl font from the foundry. Often times Foundries will be consistent in the EULA's of their fonts and what applies to one font will apply to all fonts from that Foundry. Lastly, in regards to this specific question, very few foundries allow Graphic Designers to send base font files to the printer.

2) Is it legal to use fonts which a client sends a graphic designer for a job that a previous studio created for that particular client?

Answer: Check with the client and/or the foundry. The client may have arranged a license which allows them to sub-license the fonts to their vendors for specific uses or projects. (These sub-licenses are rarely made clear to the vendors.) Moreover, it will depend often on who purchased the license to the font or typeface. The EULA should be specific about what and who owns the license and how applicable that license is.

Most of the time, clients do not license for the typeface or font to be used by daughter companies or outside contractors. Not to mention, foundries are looking for their fonts, and be prepared to have legal access to those fonts. If you ask the client and do not know 1. what you are asking, or 2. do not know the answer, check with the foundry. Nine times out of ten they have probably not licensed it accordingly.

3) If a designer buys a font to use for a particular client does that client have the right to use the font?

Answer: Check the EULA. Most licensing arrangements will be “site-specific” or “company-specific”. Most foundries will ask either that the client licenses the typeface(s) separately, or if the designer wishes to send the typeface(s) to her client, that the designer has licensed the fonts in such a way that all end users are covered. If a Graphic Designer or firm licensed a font to use on a client’s project the best thing you could do is have the client also license the font so they can use it if need be. There are some foundries which have EULAs that allow for transferring of the license. If there are no provisions for the transferring of the license, either the client will have to purchase a license for them, or you will have to Transfer the license to the client (with the Foundries permission), and delete the source file from your files.

4) If a designer buys a font to use for a particular client does the designer have the right to use the font for a different client?

Answer: Check the EULA. It is a general practice that if a designer licenses a retail typeface, the use of that typeface is not restricted to specific clients or projects, and will not expire. If the typeface is a custom or commissioned product, there will almost certainly be stipulations about use, which the designer, the foundry, and the client should already be aware of. Therefore, as a general matter, a Designer should be able to use a licensed font as often as the designer chooses, unless other situations or specifications apply.

5) How do most design studios manage their font licenses?

Answer: This is a question that has no universal answer. As a technology and IP attorney, I keep a list of EULA's for my clients in a linked file associated database. That is fancy lagnaug for a database. I make notes of specific differences in each Foundries EULA's so my clients have easy access and quick manipulation of whatever information they need. If you set it up properly, or you are using an attorney regularly, they should know, or have a running list of EULA's and the files associated with them. It is also nice to have a backup copy in case your server's crash.

Copyright: What is it?

Copyright applies to almost any and every area of work, but can not be used to replace patent or trademark. In otherwords, copyright just protects a final product, as in a painting, or a poem, but will not protect a technique or method, such as how the painting was created, a business methodology, or a working piece of machinery. These will often fall under patent law.

A few points to remember about copyright and the legal system in the United States is that it is generally speaking the first to create and not the first to file. What that means is if you create the work first, but someone else registers the "copyright" with the United States before you, that someone else's rights are not above yours. You as the creator, as long as you can demonstrate that you created your work before the other artist will be recognized as the copyright holder.

Another point is that the amount of protection given can sometimes be tied to the amount of commercial value a product has. So, although technically speaking an email someone writes would and could be copyrighted, because it has little if any commercial value, the protection given by the courts and the law would be minimal. Similarly, a poem or book written but never published, although it hasn't been published yet, it would definetly be viewed as a potential valuable work, and could be protected vigorously.

Lastly, copyright must be boiled down to an actual piece of work or creation. You cannot copyright an idea in your head of how something will look or what the poem will be, write it down, draw it, create it. Do whatever you have to do to get it out of your head and on to a tangible medium.

 

Ticketmaster v RMG – Preliminary Injunction Granted.

On October 16, 2007, the Honorable Audrey B. Collins granted Ticketmaster a preliminary injunction forbidding RMG Technologies form using automated programs or "bots" to navigate Ticketmaster's website and purchase tickets.

RMG's technology allowed its customers to circumvent Ticketmaster's identification and security precautions, thereby allowing RMG's clientèle to purchase tickets faster than Ticketmaster's human clients, allowing for the mass purchase of tickets for resale value at much higher prices.

Interesting in this case, is that the Judge found that the harm done to Ticketmaster was not loss of sales (as RMG clients were purchasing all the tickets from Ticketmaster at full market value), bu the harm to goodwill and reputation, citing customer complaints about the unavailability of tickets.

Furthermore, the court also found grounds in the claim of Computer Fraud and Abuse Act(CFAA), citing that RMG "intentionally accesse[d] a computer without authorization or exceed[ed] authorized access, and thereby obtain[ed] information from any protected computer," 18 U.S.C. section 1030(a)(2)(c), or that RMG "knowingly cause[d] the transmission of a program… and … cause[d] damage without authorization to a protected computer." This portion falls into previous rulings that use of a computer to the extent that it may cause harm or slow down a computer has been deemed a violation of the CFAA. However, because Ticketmaster failed to demonstrate a minimum of $5,000 in damages (which should have been a fairly easy step.) the court avoided ruling on the CFAAA claim as to the preliminary injunction, citing that RMG was sufficiently in breach of other claims that it was not necessary.

Lastly, we see again that a company which advertises that software or an application is able to circumvent any other companies protection measures, is going to get you into trouble. We first saw this type of ruling from the courts in Metro-Goldwyin-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) where the courts ruled that because Grokster advertised that its application and file sharing techniques allowed second party individuals to violate copyright laws, Grokster was liable for "intentionally inducing or encouraging direct infringement, and infringes vicariously by profiting form direct infringement while declining to exercise a right to stop or limit it." Although this is not file sharing of media files as is the more common modern version of copyright infringement, a website is considered copyrighted material, and therefore circumventing protective measures to gain access to a copyrighted website will get you into trouble both with the DMCA and Copyright Law.

In the end, do not advertise that your application, software, or techniques circumvent protective measures, or allow for the violation of any law or right, including copyright.

Safe Harbor for Websites

The DMCA provides in section 17 U.S.C. section 512(c) several “safe harbor” provisions for service provider's connection to infringing online materials. These safe harbor provisions are usually applicable when a service provider is either unaware, unable to be aware, or unable to regulate the content that is being transmitted or shared. However, the DMCA safe harbor provisions were initially intended to protect for Web Hosts and service providers, and not necessarily the web sites themselves, but that was before the introduction of user content based websites such as YouTube, Myspace, Craigslist, and many others.

However, the DMCA does require that service providers adopts and utilizes policies to both terminate repeat infringers and apply standardized acceptable procedures in the prevention of copyright infringement.

If you are planning on developing, operating, or maintaining a website which authorizes, encourages, our utilizes user generated content, there several things which one should take into account in regards to protecting yourself from law suit.

1. Ensure that your website and its use falls under the specifications of the DMCA “safe harbor” provisions, whether that be section 512(c) or any other provision.

2. Develop a policy and procedure in which the website is able to remove content which has been flagged as infringing material and notification of both the content provider and the user who submitted the infringing material.

3. Let your site take its natural course. In other words, it would behoove the website owner to minimize the control of material submitted by users on the website. The more control the Owner and maintainers of a website exert, the more the owner/maintainer will be responsible for the content which users upload.

4. Do not target any revenue generating plans at infringing or potentially infringing content. One of the major downfalls of Grokster were the advertisements which encouraged users to infringe on copyrighted materials.

5. Do not directly infringe either by content posted by the owner or maintainer of the website, or encouraged. If you encourage infringement or post the content yourself, it is more likely that a court will deny any “safe harbor” provision protections.

6. Attempt to the largest degree possible the licensing of content from providers. The more licensing agreements a website is able to sign, the less likely someone will bring suit.

Please consult an attorney for any specific advice in regards to the DMCA, or Website Compliance.

 

*This article was written by Jeffrey C. Neu, Esq. an Internet and Technology Lawyer in New Jersey.