Create, Consult, Control
News & commentary on intellectual property issues.
Feb182010 | Steve O'Donnell
Avoiding Trademark issues when naming your band
Most people don’t realize that all of the issues one can run into when choosing a brand name for a product also come up in the context of band names. In fact, these problems can cause an even greater headache for bands than for other businesses.
David: So we became The Originals.
Nigel: Right.
David: And we had to change our name actually....
Nigel: Well there was, there was another group in the east end called The
Originals and we had to rename ourselves.
David: The New Originals.
Bands often change their names to differentiate themselves from other bands. Black Sabbath was Earth before they found another band named Earth was on the same bill as them. The trouble finding a great band name is the same as the problem with finding a great domain name, or a great product name. . . all the best ones seem to be taken. The problem might even be worse for bands because of the nature of a business where bands form and break up all the time, musicians are often in more than one band at any given time, and bands often perform under a different name for different audiences. In other words, the music business rips through band names at an insane rate.
The most common solution to a trademark issue involving a band is that whoever had it first gets to keep it and the second user has to change their name. Specific facts can change that general observation, or at least open up other possibilities, but usually the first to use it has greater rights to the name. Certainly, if your band is gaining steam, the last thing you want to do is change your name because a skiffle band half-way across the country started using the same name a week before you did.
It’s difficult for me to say when a band should trademark its name. Ideally, it’s done as early as possible, but for many bands that just doesn’t make sense. It takes a while to get a stable lineup and have some reliable income before a band really starts to think of themselves as a business and realize that they need to form a legal entity or at least have an operating agreement between members, decide how to handle copyrights, trademark their name, etc. Most bands never get to the point where any of this matters, the trick is knowing when to start thinking about these issues, and hopefully that point is before there is a problem.
If you’re looking for a name for your band I do have a couple suggestions: 1) make up a word, chances are that if you make up a word that you won’t find that someone else is already using it; 2) use a two or three word name; 3) search Google to see if someone is using the name; 4) search a band name registry like bandname.com, and bandnameprotection.com; and 5) have a trademark attorney search for similar names. Admittedly, few bands are going to take my advice of speaking with a trademark attorney, at least early in the game, but doing so is the best way of finding out about possible issues before they become a real problem.
Feb172010 | Steve O'Donnell
Two trademark cautionary tales
Over the past month I’ve had two people come to me with serious trademark issues that could have been easily avoided by speaking with a trademark attorney early in their branding process.
In the first instance, my client, a business that is primarily intrastate, but does a small amount of interstate commerce, received a letter from an attorney warning them that another business has filed a registration for the trademark and plans to enforce it if my client attempts to expand beyond their current geographic market. My client was using the name first in certain markets, so they can continue to use the name as they have been, but will run into trouble if they try to expand. My client doesn’t want to give up the name, but does have plans to expand, which is where their problem lies.
Since my client was engaged in a small amount of interstate commerce, they could have registered the trademark years before the other registrant came around. Unfortunately, they didn’t think about trademarking until they ran into this trouble. We’re still considering possible courses of action.
In the second instance, my client started using a trademark that is very similar to a mark that had already been registered. It was a completely innocent mistake and my client didn’t try to leech off the reputation of the other company, but that doesn’t matter. Trademark law attempts to eliminate consumer confusion and in this case, the marks were close enough to each other, and in the exact same market, that a determination of anything but trademark infringement is unlikely. That client has two options: fight it, or stop using the name. Fighting it is expensive and the likely outcome is not good, rolling over means that my client loses a large amount of their name recognition and google-juice.
If that client had engaged a trademark attorney to vet their proposed name or to try to register that trademark, the other user would likely have been identified and the problem avoided.
Compared to the time and money involved in creating and building a brand, having an attorney protect it is a small expense. Yet, without that relatively minor investment, all of the rest can be a waste.
Feb082010 | Steve O'Donnell
Some things you can't copyright
Copyright is a strange thing, it comes into being (at least in some form) as soon as something copyrightable is created, almost like some ancient Greek god myth. Also, much like a Greek god, copyright can be capricious, nonsensical, and sometimes takes the form of a swan to seduce mortals. Ok, maybe not the swan thing, but it’s still pretty strange.
Although it is often hard to understand, there are rules covering what can, or can’t, be copyrighted. Of course the rules might not be self-evident, so here’s a selection of things that can’t be covered by copyright:
1) Short phrases: You can’t copyright your name. Sorry. You also can’t copyright something like a title to a movie or book. I still don’t suggest you name your memoirs “Harry Potter and the Chamber of Secrets,” even if your name is Harry Potter and your book largely discusses your Chamber of Secrets, but that would be because of a trademark problem, not a copyright one. Also, don’t be upset next time you hear some celebrity copyrighted some stupid slogan. The reporter got his facts wrong, what he meant to write was “trademarked [some stupid slogan].” Go ahead, say “that’s hot” all you want without Paris Hilton’s permission (just don’t put it on a product you’re selling without checking with someone first).
2) Bare ideas: You can’t copyright your idea for a reality show. I’ve gotten that question a few times. You could write it down in detail and claim copyright to that manuscript, but you can’t stop someone from using the same core idea for their own work because of your copyright.
3) Facts & non-creative works: You can’t copyright cold hard facts. There is a great case on this, Feist, that comes up in just about all conversations about copyright. In that case, a phonebook listing was not covered by copyright because it wasn’t creative. The level of creativity needed for a work to be covered is very small, but greater than zero. Often, Feist is referenced if a person tries to register something that is no more than a collection of other works or if their creation isn’t particularly creative.
4) Works of the Federal Governmental: Generally, things produced by a federal employee as part of their job is not copyrighted, at least they’re not eligible for a US copyright. Feel free to use NASA images as your wallpaper good citizen. That doesn’t necessarily mean that everything owned by the government is fair game, there may still be copyrights in things produced by contractors or transferred to the government. Further, works by some agencies like the US Postal Service aren’t considered works of the US Government. Lastly, state and local governments often copyright their own works. There, clear as mud.
5) Useful Items: This is one tricky to understand, but if something has artistic and utilitarian aspects, but the artistic aspect can’t be tweezed out of the whole to be copyrighted, then the whole thing loses copyright protection. A good discussion is in the Pivot Point case.
6) Clothing Designs: Clothing really falls under the Useful Items heading, but it usually slips out of the category because the designs at issue tend to be those that don’t seem particularly utilitarian. It is possible to have some aspects of a piece of clothing be protected by copyright, such as a particular pattern, but the actual article itself is not. That is the reason why right after the Oscars you can buy red carpet fashion-knockoffs in any dress store. There is always some discussion floating around this last category because there is a decent argument that haute couture is not utilitarian. I wouldn’t be surprised if Congress eventually got around to amending copyright law to address this.
Feb052010 | Steve O'Donnell
Infringe? It’s a business decision.
A common question all attorneys get is “am I gonna get in trouble for this?” For some things your attorney will be able to give you a decent answer. . . “yes, that’s a really dumb idea” or “no, that’s fine,” but much more common is a more stereotypical lawyer answer of “it depends.” For intellectual property questions, I usually dredge up middle school algebra.
Every decision can be made with the help of an equation. Let’s say your burning question is "should I hit this guy at the bar that keeps looking at me?" The left side of the equation might be:
“(chance of me losing the fight)*(chance of me landing in jail)”
The right side of the equation might be “(how much would I love to pop this guy?)*(chance that the girl at the end likes macho jerks)”
If the left side of the equation is greater than the right side, not hitting the other guy is favored. Now, of course, you can’t know the real values of any of the variables, but you can estimate. If there is a chance that they guy is really looking at someone else or just has a facial tick, and he’s a 300-lb monster sitting next to his buddy the cop, well, stay seated and order another drink. If he’s obviously being a jerk, you’ve got 40lbs on him, there are no cops around, and you know the girl likes macho jerks, the equation favors popping him. Unknown variables are also in play: maybe he’s a ninja, or an android, or a ninja android. You can’t know everything, but the more information you have, the better your decision making process will be.
It’s similar to questions I get all the time concerning intellectual property. Only a fool would make an uninformed decision. Even a gambler willing to risk big is only going to do so after evaluating the chance of losing with the possible payoff.
It’s part of my job to identify and flesh out what variables are in play. If the question involves using an image for a blog post from and there is a plausible fair use argument, that’s one thing; if the question involves making and selling t-shirts with Mickey Mouse on them, that’s a much different equation.
Jan192010 | Steve O'Donnell
What should your copyright notice say?
As I mentioned before, copyright has a lot of urban legends attached to it. Another one of these is the attachment most people have to the little copyright notice on the bottom of their websites.
You don’t need it.
Copyright is automatic as soon as something is “fixed in any tangible medium of expression.” Under US law, a copyright notice is not required for anything first published after March 1, 1989.
There may be reasons why you’d want to use a copyright notice. There is a chance of the notice scaring away a potential infringer that doesn’t know much about copyrights. I don’t think it’s much of a watchdog, maybe a small chihuahua--one of those shaky, teacup, apple-headed chihuahuas.
Another reason is that a notice will defeat a challenge that an infringement was not willful. If an infringement is willful, the infringer could be liable for enhanced statutory damages as high as $150,000 plus costs and legal fees. I know, sounds good doesn’t it? However statutory damages are only available to registered works and precious few people register the work on their websites with the copyright office. Notice may also have benefits under the laws of other countries.
On the other hand, having a copyright notice doesn’t hurt anything. Whether you want to use one or not is your call, but don’t feel like you’re putting your work in danger if you don’t have one.
Image published in 1906 found on cyberlawcentre.org and is from the Library of Congress' Bob Hope Vaudeville and American Variety Archive.
Jan042010 | Steve O'Donnell
How many copyrights does your blog infringe?
If you are a blogger you’re probably familiar with blog scrapers (sites that take other people’s content and republish somewhere else). Bloggers have a good reason to be upset about scrapers; after all, it is someone else taking your work. However, most bloggers don’t give a second thought about snatching a picture online and using it for a post.
If you find a picture on Flickr, another blog, or somewhere else online and upload it to your own blog (or worse yet, inline link to it from your blog) without permission, you’re committing a copyright violation.
By grabbing whatever picture you find that fits with your post you’re risking damages up to $150,000 for a registered work. Admittedly, that number is an extreme possibility, and probably one that would never be levied against a blogger, but it is technically possible. A more likely damages award would be $750 for a registered work, plus lots more in attorney fees.
Most graphic files you encounter online are not going to be registered with the copyright office, in that case damages would likely be limited to actual damages and an injunction to take down the picture, plus whatever you have to pay your attorney.
More likely than someone suing you for scraping their .jpg is them sending your ISP a takedown notice, which is probably going to result in them taking your site down until you remove the picture. It’s less onerous that taking a $150k hit, but still not good.
If you want to be a good internet citizen, and have the moral authority to complain if your blog gets scrapped, don’t take from others. There are plenty of sources for Creative Commons images, Google Image Search’s Advanced tab will pull such images, as will the Creative Commons' own home. Just make sure you comply with the license.
Image published in 1906 found on cyberlawcentre.org and is from the Library of Congress' Bob Hope Vaudeville and American Variety Archive.
Dec312009 | Steve O'Donnell
Poor Man’s Copyright
Copyright, perhaps more than other legal fields, has a lot of urban legends attached to it. The most pervasive is probably the Poor Man’s Copyright where one mails themselves a copy of their work to prove copyright. Copyright attorneys have another name for this: crap.
The setting is this: an author mails a copy of their manuscript to themselves, but doesn’t open it. The author then submits copies to publishing houses and is rejected, but later sees someone steal take their idea and make a fortune off of it. The author sues and there is a dramatic scene where the judge opens the sealed envelope, sees that the other person stole the work and decides in favor of the author. For dramatic effect, we see the defense attorney slam his briefcase shut while the author’s side erupts into a perfectly choreographed, but seemingly improvised, dance routine. Next there is a fade-in of the defendant counting out a huge stack of bills to the author before tossing the money into the air and storming out of the room.
Ahh, Hollywood.
Alas, that never happens.
A Poor Man’s Copyright is, well, crap. Consider this: I mail myself an unsealed envelope and let it sit for a few years. Eventually there a novel that gets turned into a smash movie (maybe one involving friendly vampires with comically large heads) so I quick write up a version of the book and seal it in the envelope. Ta-Da! Now I sue, settle for millions and retire to an island with my supermodel wife.
Sorry, that isn’t going to happen. The sealed envelope will have little or no evidentiary value that I wrote the happy vampire book. If anything, it will show that I have something in an envelope stamped with a certain date--not that the contents of the envelope was there by the stamped date. In other words, it’s worthless to me.
The best way to prove that you created something is to register the copyright. Registration isn’t difficult or expensive and usually doesn’t require a lawyer. I’ve set up some of my creative clients with a scheme to recognize and register copyrights as soon as they’re ready to make sure that they have the best protection available. Contact me if you’d like to learn more.
Image from cyberlawcentre.org and appears to be in the public domain.
Dec152009 | Steve O'Donnell
The Zappa Family Trust vs Assorted Zappa Tribute Bands
Frank’s widow, Gail Zappa, head of the Zappa Family Trust has taken issue with a number of Frank Zappa tribute bands and has successfully shut down shows by threatening legal action. Is this an example of abuse or does she have a viable legal theory?
First, Happy Zappadan everyone! Zappadan is, of course, the annual celebration of Frank Zappa’s work that runs from December 4 (the date of his death, a/k/a/ BummerNacht) until December 21 (his birthday, a/k/a Day Zero of Zappadan).
As I was saying, the Zappa Family Trust has targeted Zappa tribute bands and has shut down some shows by those acts that don’t have the Trust’s blessing to perform. Not so surprisingly, one act that does have the Trust’s permission, Zappa Plays Zappa, is headed by Dweezil Zappa.
To be fair, it has been at least a year since I heard rumblings about the Trust, so maybe Gail has softened a bit. Regardless, Whether these threats are primarily motivated by the desire to make sure that Frank’s music is presented only by those gifted enough to pull off his challenging pieces, or simple greed is a question I will leave to others to debate. I’m more interested in whether the Trust has legal support for their stance.
The obvious legal theory, copyright, probably won’t help the Trust. A quick search of ASCAP’s site shows that a number of Frank’s works are licensed through them. What that means, is that any venue that takes out a license from ASCAP can host bands that cover those songs. Still more works may be licensed by BMI or SESAC.
The other legal theory I can think of is a little more subtle. Trademark law allows a business to keep others from using their trademark in a way that is likely to confuse the public. A quick search turned up 34 trademarks owned by the Trust covering, among other things, the name “Frank Zappa” as used in musical performances and recordings.
Certainly, anyone that would think of going to a Zappa tribute will know that Frank is not going to be there, so can there be any real public confusion? Maybe. One might see the “Frank Zappa” mark, or a similar mark advertised and and think that the Zappa family is behind the show.
Another possibility is that these non-sanctioned shows might tend to reduce the distinctiveness of the Frank Zappa brand. If so, the tribute band could be diluting the trademark, even though there is no likelihood of confusion.
Lastly, trademarks that aren’t defended by their owners can be lost, so the Trust might just be overly cautious about preventing that from happening.
For the trademark theory to work, a tribute band has to be using a Trademark owned by the Trust. A group in KISS makeup called Love Gun that played Frank Zappa’s music probably wouldn’t run into trouble with the Trust, at least not under a Trademark theory.
Bottom line, it may seem heavy handed, but Gail Zappa has a plausible legal theory to back her up when she tries to shut down Frank Zappa tributes.
Check here, here and here for posts by others on the subject.
Image: http://www.flickr.com/photos/swanksalot/ / CC BY-SA 2.0
Dec082009 | Steve O'Donnell
Using a non-disclosure agreement to protect your ideas
Non-disclosure agreements are contracts between parties that need to share certain secret information in order to do business together. An NDA solemnizes a confidential relationship and protects the party sharing their secrets.
The content of an NDA is fairly standard; it defines what information is to be kept secret, what exclusions might exist and what the receiving party needs to do to keep the secrets. Exclusions allow the receiving party to forgo the NDA in cases when the information becomes publicly known or if it was already known. For example, if I get a company to sign an NDA and the secret I share is something they’ve already been working on, the NDA won’t prevent them from cutting me out when they take the item to market.
Obviously, if you are an inventor you will want an NDA in place before you share your invention with manufacturing partners or investors. Whether or not they will is another issue.
By asking someone to sign an NDA you are requesting them to accept a heavy obligation before finding out if your idea is any good or if it’s something they’d even be interested in. Not many investors are willing to sign your NDA without having a good idea of what you have. On the other hand, if you need to have your invention manufactured for testing, the machinist is more likely to sign an NDA to get the job.
Often, to get your foot in the door, you need to either have a track record of marketable ideas or share a trusted intermediary that can set up a meeting. More often than not, that isn’t the case. To coax investors to listen to my clients, I draft a non-confidential disclosure, discussing the invention or idea, without giving away any secrets. If there is a bite, then we know the other side is interested in the technology and likely willing to sign an NDA to learn more.
Ignoring the possibility of having your idea stolen, discussing your invention before starting the patenting process and without an NDA may likely be considered a public use by the patent office and could prevent you from ever obtaining a patent.
The safest thing that you can do to protect your idea is to talk to an intellectual property attorney before you talk to potential investors or partners.
Cartoon licensened under a Creative Commons Attribution, NoDeris 2.0 License.
Dec012009 | Steve O'Donnell
Why Archie drank generic beer
I used to be confused that some TV shows would make up their own prop brands while other shows used real-life products. I assumed it was because of trademark or copyright licensing issues. It’s actually less interesting.
First, most TV or movie uses of a real product are not going to support a claim of trademark infringement. The touchstone of trademark infringement is likelihood of confusion and that’s simply not going to happen because a character used a branded prop. If I see Frodo Baggins eat Funyuns and drink a 7up I’m not going to think that either company made the movie, although I may question the purity of the goods at the concession stand because I’d be pretty sure there was more than salt in the salt shaker.
Depending on the depiction, there might be an exception for brand tarnishment. That could occur if a brand was used in a manner that would tend to offend people, but a filmmaker would probably have to go out of their way to embarrass a brand before having to worry about a tarnishment claim.
Most routine displays of copyrighted material also won’t be actionable, more substantial displays might be actionable in certain circumstances. For example, as if the horrible abomination of a movie that was Batman Forever needed any more trouble, the studio was sued over filming an architectural work. Batman won. Batman always wins.
No, the reason that sometimes a show uses a real brand and sometimes doesn’t is ad revenue.
In a simpler time, it was thought that by keeping brands out of a show that advertising opportunities would be greater. After all, Miller Lite might not want to buy ads on “All in the Family” if Archie was drinking something better in the episode. Miller, however, probably won’t care if Archie has a couple plain-labeled “beers” during a show.
On the other hand, shows can sell product placement space during the show itself to advertisers, and for a number of years we saw both prop brands and real brands. The choice was likely dictated by whether there was a sponsor willing to pay enough for product placement to offset concerns that it would keep competitors from buying traditional commercials.
Since the debut of DVRs and other ways of avoiding commercial breaks there has been a steady shift towards using more product placement ads. Now the only time prop brands are used are probably when a sponsor couldn’t be found.
We may never again see Archie’s favorite beer outside of reruns.
Image licensed under the Creative Commons Attribution-Noncommercial 2.0 Generic license
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Comments
Trademark law is primarily concerned about avoiding customer confusion, so if someone uses a trademark in a way that is unlikely to confuse people, it's probably not an infringement. Also, there are defenses written into the statute itself that refer to uses 1) other than as a trademark, 2) fair and in good faith, and 3) to describe the defendant's goods as being fair use of a trademark.
As far as the use of TM of (R) when talking about someone else's goods go, it's not needed. The purpose of those marks (which are optional) are to alert the public that a mark is being used as trademark and that they owner intends to enforce it. I don't know of a case where a third parties' use of the (R) symbol when using someone else's trademark has tipped the scales, although I'll admit that I haven't researched that particular point.
had a small hit with Three Little Pigs and caught the attention of Kraft, which resulted in them changing their name.
genre that has the same name. I don't know if they have trademarked it yet. Let's say, they trademarked it, but there is evidence that we had the name first? Do you know what might happen in that type of situation?
expensive, it would make much more sense for your band to register the mark as soon as possible to prevent any such issue from coming up. Have your manager email me.