Create, Consult, Control
News & commentary on intellectual property issues.
Jul232009 | Steve O'Donnell
Robbing the logo graveyard
What happens when a company goes out of business or rebrands itself? Can someone else step in and start using the abandoned trademarks? Sure, but make sure it's dead before you dig it up.
The strength of a trademark comes from its use. A trademark that isn't used, doesn't identify the business that owns it and doesn't have much, if any, power to go after someone using a similar mark. If an established mark is abandoned, it will take a while before any of it's brand-recognition muscle will deteriorate to where someone else could appropriate it.
For example, Lancaster General Hospital recently underwent a brand overhaul and they now have a spiffy new logo and a new name.
This is the old logo. I like their old logo, the hands holding a person seems like the perfect image for a hospital to convey.
The new logo is more colorful and abstract. For some reason it reminds me of the Tron video game. Generally, abstract is good for trademarks and over time, this logo will become associated with the hospi. . . excuse me, health system.
Could someone use the old logo to mark their new business? It is a good logo, I could see it being used by a chiropractor, massage therapist, or any one of a number of health care businesses. What, if anything is stopping people from dusting off and repurposing old trademarks?
There are at least two things to think about if you want to use an abandoned mark: the first is whether the mark still has any breath left in it; the second is whether there is any copyright issues to worry about.
If the mark still has some identity to it, then a new use is an infringement. It is going to take time for people to forget that an old logo used to be associated with a certain business. For example, if people see a massage therapist using the old LGH logo, they will probably think that the therapist is associated with the hospi. . . health system. It may be years before people in Lancaster, PA forget about the old LGH logo to the point where someone else could use it in Lancaster. That might not be such a concern if the new user wanted to use the logo in another state where people don't recognize it.
Another possible problem would occur if the logo was copyrighted. Copyright duration in this context has nothing to do with whether something is used or displayed, so even if there wasn't a trademark issue a new user might not be able to make the logo its own.
The possible problems are usually much smaller if a business has gone out of business than if they've rebranded, but not always. Often a business will sell its IP when dying so it can be an issue to figure out if someone else owns the rights to the mark and is planning on resurrecting the brand.
In short, if you want to revive someone else's abandoned logo as your own you should speak with an attorney before you start printing your business cards.
Jul202009 | Steve O'Donnell
Monitoring your brand using a Yahoo Pipe
This is a slight diversion from my usual series of patent, copyright and trademark posts, but it's been said that variety is the spice of blogs. . . or something like that.
I'm a huge fan of RSS feeds. I use them to get a constant stream of information from my favorite blogs as well as keep me up to date on a number of sites that are updated often. Using them removes, or at least lessens, the possibility of me forgetting to check a site or missing a story that I would want to read.
Over the last year I've been spending time on Twitter. Apart from the social aspect of Twitter it is a constant, immediate news source. Granted, no great journalistic pieces are being tweeted in 140 characters, but for short breaking news, nothing beats it. . . yet. An aspect of this that relates back to my RSS affinity is that all the blogs or new sites that I follow either have their own Twitter presence or have fans that tweet links to their posts. Twitter also lets users grab an RSS feed for whatever searches they've run. For example, if I search Twitter for “patent” I can grab an RSS feed for those results and plug it into my RSS reader.
Yahoo pipes is a way of building custom RSS feeds from existing feeds, and tweaking the output. One of the things I use it to do is to monitor multiple Twitter searches, consolidate them, remove some irrelevant information and output a single RSS feed I monitor from my reader. There is quite a bit more than they can do and browsing those pipes listed on the site will demonstrate that. Here I'm going to demonstrate how to make my simple IP aggregator pipe which can be easily modified to monitor a brand name. A pipe customized to monitor a brand name will allow the user to search for mentions of the brand, or for mentions of competing brands, and identify potential customers as well as keep on top the chatter surrounding the brand name. Similarly, a Twitter search could also identify others using the same.
First, go to http://pipes.yahoo.com/pipes/ You'll have to log in with your yahoo id and password, so I guess if you don't have those, this is really step 2, so go to yahoo, start an account and come back. Once you're logged in, click “create a pipe.”
Open a new browser tab and go to http://twitter.com and locate the search box on the right side of your home page. Type in your search and hit return. Now, go the bottom of the column containing the search field and click on “RSS feed for this query.” Copy the resulting URL. It should be something like “feed://search.twitter.com/search.atom?q=[term]” where [term] is what you typed in the search field.
Go back to your yahoo pipes page, under the “Sources” menu on the left, click “Fetch Feed” and drag that to the grid [below, 1]. Now, we'll add the Twitter feed already in your clipboard by pasting it into the open field in the “Fetch Feed” module [below, 2]. You'll notice that the module “Pipe Output” was created automatically. We need to connect those two to see the output, so click on the circle at the bottom of the “Fetch Feed” module and drag to the circle on the top of the “Pipe Output” module [below, 3]. Down at the bottom of the screen is the debugging window where you can see the results of your pipe [below, 4]. Right now, it''s essentially just an RSS feed that's been renamed. Go back to your Twitter page and enter some more searches and copy/paste each one's RSS feed into another line in the “Fetch Feed” module.
At this point, I have three feeds coming into the pipe, all Twitter searches for the terms “patent,” “copyright,” and “trademark” which are being aggregated into a single feed. [below, 1] You might need to click “Refresh” in the debugging window to see changes. Save your pipe by clicking the “Save” button. [below, 2]
Now, you could stop right there and have a useful RSS feed that contains the results of multiple Twitter searches. If you click on “Back to My Pipes” [below. 3], then on the name of your newly created pipe, you'll be presented with a number of options on what to do with your pipe, such as posting to Google Reader, MyYahoo, or grabbing an RSS feed that you can use in other readers. There are also other options that should satisfy nearly any of your content needs.
Simply aggregating multiple feeds is useful, but there is still quite a bit of chatter on Twitter that we can filter out without losing relevant posts. To do that, I use “Filter” module under the “Operators” menu on the left of the pipe grid. [below, 1]In this filter I'm blocking posts that are ReTweets or responses, so I only see original posts. Also, shortly after first making this pipe I noticed a number of posts about “patent leather” that I didn't need, so I filtered out those. Then, when Michael Jackson died there was a huge spike in people tweeting about his patented dancing illusion so I added to my filter to block items mentioning him. To attach the “Filter” module to the pipe, move your mouse over one of the circles with a thread leading to another module and when the scissors icon appears, click it and then trade the new links. In my example, “Fetch Feed” gets linked to “Filter” which is linked to “Pipe Output.” [below, 2]
Now, I have a functional Twitter search aggregator that contains mostly relevant material. One very nice thing about the way this works is that once established, the output RSS feed stays the same, so I can go into this pipe and add searches or filter items without having to change any settings in my RSS reader. A similar pipe for a business monitoring it's brand might aggregate mentions of the brand itself along with common misspellings and the names of competitors. Keywords related to the business might also yield usable data, but maybe too much noise. If Twitter eventually adds geocoding data to tweets, a pipe can extract that data and limit results to a certain area, which would make keyword searches much more valuable to small to mid sized businesses.
This is really just a very small example of what Yahoo Pipes can do. Going back to the Yahoo Pipes home page will let explore how the modules work or let you look for public pipes that others have built. From there, you can save the pipes you like them under your profile and tinker with them.
Update: August 21, 2009, Twitter will soon be embedding location data in messages. Imagine the targeted campaigns this will make available to the small business person. If someone in your area mentions "restaurant," a savvy restauranteur will be able to reply to their message and optionally provide a link to a coupon. Someone in town mentions "wedding" and techie wedding photographers can reply with information about themselves; someone grumbles about their grass. . . well, you get the idea. Twitter is about to become a much more useful advertising medium.
Jul082009 | Steve O'Donnell
Metro Bank sued after failing to clear a mark
My thanks to Metro Bank for making my last post on the importance of researching a brand before investing in it seem especially relevant.
As reported in the Central Penn Business Journal, Metro Bank has found itself on the receiving end of a trademark infringement lawsuit that could have easily been avoided.
Recently, Commerce Bank in central Pennsylvania changed its name to Metro Bank because their rights to use "Commerce" were expiring. During their time as Commerce Bank they used a bright red “C” as their logo. When the name changed to Metro, the bank decided to use a bright red “M” as their logo. At first blush, that sounds like a great idea because not only does the similarity ease consumers into the new brand, it is also different enough to distinguish the new Metro Bank from the old Commerce Bank. Unfortunately for Metro, Members First Federal Credit Union uses a very similar bright red “M” as their mark, and Members First had the foresight to trademark it.
Rebranding is never easy or cheap. I'm not sure how much Metro Bank spent to change their logo from the “C” to their “M,” but between all of the signs on their branches, their ATMs, their online presence, their stationary and business cards, as well as whatever they spent a designer to create the logo, they are probably out a substantial amount if they now have to redo all of it.
If they had simply called a trademark attorney first they would have discovered that Members First filed their application in 2006 and would have been struck by the similarity between what Members First was using and what Metro wanted to use. This is not a situation where reasonable minds could disagree on whether the mark was confusingly similar or not: both marks are bright red “M”s with similar breaks in the legs and both businesses are banks that serve the same areas. The article I linked to above additionally notes that the banks' advertising overlaps and, most damning, that customers have actually walked into the wrong bank.
Metro could have hired a trademark attorney to research the mark and apply for their own trademark for a fraction of what it is going to cost them to put this infringement lawsuit to rest and redo their logo. I would bet that they'll look a little more into clearing the next mark they decide to use.
Jun292009 | Steve O'Donnell
Research a brand before investing in it
A business' brand is its most valuable asset, and should be discussed with counsel early in the venture to avoid costly problems later.
I recently spoke with a small business client that got a nasty letter from a competitor in another state. Actually, the letter was fairly pleasant, but the news inside wasn't.
The client started a business a few years ago selling a certain type of goods, for discussion, lets say he was selling skateboard gear. He chose a business name and filed the requisite paperwork using a form he downloaded. He hired an accountant and hired a design firm to come up with a graphic representation of his chosen trademark that he could print on his goods, business cards, etc. He found a small store front, had signs made with his name and graphic and started manufacturing and selling his goods. He registered a domain and started selling online. After two years he was making a profit, a small profit, but enough to expand a little so he also started selling BMX gear. Around this time, his business drew the attention of an out of state competitor.
Unfortunately, this competitor had been using a very similar trademark for his business. The competitor's business exactly the same as the client's, but deals with similar goods in a similar market. The competitor started business sometime before the client and had registered the trademark. Understandably, the competitor wants client to stop using the mark.
The client is now between a rock and a hard place. He could call the competitor's bluff and hope that he doesn't get sued (which will almost certainly go very poorly), he can try to negotiate some deal with the competitor (doubtful because of the similarities between the marks and the markets), he can hope that a court will rule that the small difference between the trademarks is enough to defeat an allegation of infringement or he can rebrand everything and lose the good will and recognition that he's worked to build.
Assuming no deal can be worked out, the client will either have the expense and uncertainty of defending his position in court or the expense and problems associated with rebranding.
These problems could have been avoided for a fraction of the cost and annoyance if the client had spoken with a trademark attorney before investing in branding.
Your business if your livelihood, it's worth setting everything up properly from the beginning.
Jun252009 | Steve O'Donnell
Ring tones as public performance of songs
ASCAP thinks your ringtones are copyright infringement. Not just ringtones you've made yourself, but maybe also those that you've purchased from your carrier.
The Electronic Frontier Foundation has posted a brief from ASCAP (The American Society of Composers, Authors and Publishers) wherein their attorneys argue that a ringtone constitutes a public performance of the song and demands to be paid.
I don't think I would offend anyone if I said that copyright law is a confused and confusing creature that should be mercifully killed in order for something else to take it's place. Copyright law reaches its peak as an arcane body of law when discussing how it pertains to music.
One of the more problematic copyrights is the right of public performance. One may think it reasonable that a recording artist should be able to stop another from playing their music in public (we'll assume that the artist is the copyright holder). For example, one might not want their music to become associated with a group that they don't support (this came up a few times over the last Presidential campaign). It gets a little dicier if you change some of the facts, what if instead of a rally, the music is played at a small group meeting that the artist doesn't like, what if it's blared out of a car that the artist doesn't like, or played in a steakhouse when the artist is a vegetarian? How much control does the copyright holder have over their music once it's released? How much control is enough without being too much?
The amount of control the copyright owner retains in the absence of a license can be hard to discern. In most instances public performance licenses are used to clear music so the entity playing the music is in compliance with the law and can avoid penalties later, but I don't know of anyone that would purchase a license so they would turn their car stereo up and drive with the top down.
Turning to ringtones, ASCAP seems to think that the few second sample that your phone plays should count as a public performance and that someone should pay for it. This doesn't mean that you should worry about being sued next time your “Baby Got Back” ringtone goes off, 17 U.S.C. § 110(4) would protect your use. . . provided you don't charge others at your table to listen to your ringtone. Rather, ASCAP thinks that the ringtone providers should pay a public performance license fee.<
ASCAP's theory of infringement is a long shot and will almost certainly fail. What is troubling is that there is just enough uncertainty about what constitutes a public performance that this will escape Rule 11 sanctions.
Jun252009 | Steve O'Donnell
WKRP in copyright licensing land
If you're old enough to remember when WKRP in Cincinnati was first broadcast you might remember the important role that current music played in the show. At times the soundtrack was almost a character. If you've since caught the show in reruns or have purchased the DVD set (I'm watching it on Hulu) you've probably noticed that the music is changed. Some fault lies in less than ideal licensing work by CBS's attorneys, some of the fault lies in greed.
One problem is that, at the time, no one foresaw the day where studios would sell shows to the public, so when the licenses to use the music were negotiated, the right to include the music in future releases didn't even come to mind. Without those licenses in place, the studio can't reproduce the music on a DVD release.
Going back and obtaining those licenses is an option, but an expensive one. The music copyright holders (who aren't necessarily the performers) are going to want more money, and if the music is integral to the show, they will use that to extract higher licensing revenue, which will drive up the price of the DVDs and likely decrease the number of box sets that will sell. Consequently, the studio will likely make less profit on the box sets since fewer will sell.
This problem is not unique to WKRP, similar licensing issues are keeping a Wonder Years box set off the shelves. Music licensing also was an issue in releasing the Freaks and Geeks box set, but in that case the rights were obtained, resulting in a set priced at $70 for the 18 episode run.
Another option is the one used to bring the first season of WKRP to market, the music was changed or edited out. In the case of a show that so heavily depended on music, the result is horrible to fans. Such backlash may be the reason why the other seasons haven't been released yet.
Still, it's a great show, and if you haven't seen it, or haven't seen it in years, you should check it out.
For the curious, one fan compiled list of the changes made to the episode's music posted at http://zvbxrpl.blogspot.com/2007/03/wkrp-dvd-not-ok.html
Jun172009 | Steve O'Donnell
Patenting illusions II
Do you have an illusion that could be patented? If so, should you patent it?
Magic inventions probably fall into one of two categories, gaffs and methods. Both may be patentable. The first thing to consider is whether your new illusion is really new. A new Topit design might be patentable, but stringing together an old card force with an old billet trick, even though no one has ever thought to do it in that way before, is probably not patentable. That doesn't mean that a patent for a card force is necessarily impossible, but it may be difficult to convince the patent examiner of that. On the other hand, since much of magic is not widely known, it might be difficult for an examiner to find prior art that would kill an application. Keep in mind that hiding information from the patent office may result in a patent that is ultimately unenforceable and expose you to civil liability if you try to enforce it.
If you do get a patent on your trick, what do you do with it? There are a few ways of making money from a patent. One would be if it was such a great trick that people would pay to see you perform that one trick. I have a hard time imagining an act that is one trick long, although shady mentalists have been bilking money out of people with little more for centuries. Another way of making money would be to either license the patent or to sell it outright. Licensing is really similar to what is done already under the Magician's Code model. A person would buy a packet trick and get a license to perform it. Unlike the Magician's Code model though, someone that learns the secret without paying for it may be liable for patent infringement damages and the person that shares the secret could be liable for indirect infringement.
Discovering that someone is infringing a patent is a different issue. A patent covering a intricate gaff is going to be much easier than discovering that someone is infringing a patent covering a method of performing an illusion. The first case likely would involve one of a fairly short list of companies, while the second could be someone performing at a birthday party.
Other than the money that could directly be made from a patent, there might also be a secondary value to a patent on an illusion if it increases the inventor's visibility and reputation in the community. An instructional DVD, seminar, or performance poster will likely get more attention if it rightly declares that the inventor is such a creative innovator that the US has granted a patent to his illusion(s).
Whether or not it makes financial sense to invest in obtaining a patent for an illusion is something that needs to be determined on a case-by-case basis. In addition to getting a patentability opinion from a patent lawyer, the inventor might also want to discuss the plan with a business manager.
I would love to work on magic patents. If you think you have something novel, please let me know and I'll see what I can do for you.
If you are a member of the Magic Cafe [http://www.themagiccafe.com] these is a great list there of magic patents in Secret Sessions, search for “Magic Patents - a list.” You'll need 50 valid posts, I think, to access that forum. . . which if you've read this far probably isn't a problem.
Jun162009 | Steve O'Donnell
Patenting illusions
Remember that “Masked Magician” that showed how a number of illusions were done during a series of specials on Fox a few years ago? He upset a lot of magicians by doing that. Could patenting illusions stop such exposure? Can illusions be patented?
When I was in grade school I had a Marshall Brodine magic kit that I studied tirelessly but eventually lost interest in. Years later, I picked up the magic habit again, and again put it down to chase all the other things that teenage boys chase. Then in graduate school I picked it up again. It was around this time that the Masked Magician made his debut. Fast forward a few years and the time constraints of the practice of law and having two kids has made me put down the hobby again although I do pull out the odd Tenkai palm or card force once in a while.
That aside, are patents a good way of protecting illusions? That depends. A few years ago I probably would have said no for most, but I think that has changed and more magicians should seriously consider patenting their original illusions.
The obvious argument against patenting illusions is that patents are public. That's the deal, you teach the public how to do something and in exchange, you get a temporary monopoly on it. Generally, magicians don't want to share their knowledge with the public at large (at least not until someone buys their instructional DVD). Patent applications are published 18 months after they are filed, so by that time, the cat would be out of the bag. In an attempt to avoid large scale exposure, many simply try to live by or enforce the “Magician's Code,” whereby one doesn't get to freely give away secrets and still be part of the fraternity. Of course, that only works if everyone agrees not to share the information they've obtained from someone else.
The Magician's Code worked fairly well for hundreds of years. Even having books at the public library that freely gave away secrets did not erode the public's general ignorance of how illusions are performed. If anything, it encouraged interested people to join the fraternity and support innovators by buying instructional materials and gaffs.
The internet has changed the game for many industries including the business of magic. Instructional books and DVDs can be found on P2P sites or by downloading a torrent file. This itself is one problem, but a bigger problem might be that it's too easy to find a secret these days. If you can describe a trick, you can probably find an explanation online. If not, one of your Facebook friends or twitter followers will probably tell you how it's done.
A patent won't change that, but the disclosure required to get a patent doesn't matter anymore since the information is going to be available online shortly after the trick is first sold if not earlier.
How would patent protection work? That's for tomorrow.
Jun112009 | Steve O'Donnell
Keeping records of your invention
Hopefully you'll never have to prove when you really invented the thing you're trying to patent, but if you do, you better hope you have good records to back you up.
The patent office assumes that the actual date of invention is the date the application was filed. Unless the inventor thought of the widget in the morning, worked through breakfast and lunch to get the invention ready for patenting and then able to get a patent application drafted and submitted by midnight, this isn't going to be the case. Many inventions take years to go from conception to the patent office.
For illustration, we'll say that Inventor A has an idea in January, has it ready for patenting in June and files the application in December. In the mean time, Inventor B has the same idea in February, has the invention ready for patenting in July, but files that application in in November. Who gets the patent?
What should happen is that Inventor A proves that he was the first to have the invention ready to go and so he gets the patent. But, if Inventor A didn't keep notes or kept sloppy notes he might be out of luck if Inventor B kept an organized notebook.
Those notes can also be needed if there is prior art that is published between the time of invention and the time the application is filed or if the invention goes on sale within the year long grace period allowed under 35 U.S.C. § 102(b).
Ideally, counsel will assist in designing and implementing a record keeping system, but that isn't realistic for many first time inventors. However, anyone can keep useful records with a notebook and a pen.
Jun102009 | Steve O'Donnell
Podcasts, music and fair use
I subscribe to a couple dozen podcasts and usually get to listen to at least some of them. One thing I've noticed is that a lot of them play music clips as their intro and outro. One would think that a short clip wouldn't create a legal problem, but that isn't necessarily the case.
That short clip is copyright infringement. Now, I'm sure everyone that is using such a clip thinks that it falls under fair use, but unfortunately, that isn't clear. Also, most people don't realize that fair use is a defense to infringement, but doesn't necessarily keep you out of court.
The defense of fair use is spelled out in 17 U.S.C. § 107. There are four factors that need to be taken into consideration:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3)the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4)the effect of the use upon the potential market for or value of the copyrighted work.
There are stacks of cases applying these factors and the only really clear rule to emerge is that each case is different and requires a fresh analysis based on the specific facts. There are a number of guidelines that people think will protect them that won't. Among these misconceptions are that all non-commercial use is fair use, that acknowledging the source makes absolves one from liability, or that de minimis (minimal, short samples) copying is fair use. These misconceptions can lead people into a false sense of security, especially the de minimis assumption, when in fact, one court essentially eliminated that defense and ruled that a two-second sample is copyright infringement.
Even if your use is fair use and you win, that comes after a potentially very long and expensive lawsuit. There are a couple ways of avoiding the issue entirely: obtaining licenses to the music, which for small niche podcasts probably doesn't make any economic sense; or using royalty free, public domain or Creative Commons licensed music. Just make sure that if you use Creative Commons licensed music that you're complying with the license.
And before anyone asks, I don't have a great explanation for why Girl Talk has not been sued yet.
Recent Posts
- Does a twitter follow have a value? What does this mean for RT contests?
- XXX Domains. Should you care?
- Steve Jobs, 1955-2011
- Who doesn’t like free porn?
- My ex-employee is using my customer list and materials!
- Can I get sued for this?
- A painless trademark dispute
- DC vs Batmobile custom car seller
- The Days of Turkey Roll
- Steveodonnell.com, now with fewer penises
Comments
Post has no comments.