Trademark: to keep bands called THE SUPREMES from popping up in every State Reply

“Yeah, I know and can appreciate what you do (as a trademark attorney working with musicians). Back in the day, different bands called THE SUPREMES were popping up in every State. You can’t have that.” A jazz musician friend said this to me the other day and it was music to my ears.

from the USPTO online database

from the USPTO online database

This is right on point. For a band like THE SUPREMES, who became the most popular female group of the Sixties, owning the trademark of their name grants the trademark owner (Motown Records and now Motown Records’ successor) the exclusive right to use the name “THE SUPREMES” for various music performance and recording services. [USPTO Reg. No. 1003076]. Owning the trademark rights in the name of your band grants the trademark owner the exclusive right to use the trademarked band name for specific uses – like music performance and recording services. This can be a tool to keep other bands or music groups from performing under the same name or a confusingly similar name without permission of the trademark owner.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: the USPTO TESS data base at http://www.uspto.gov/; a copy of the USPTO Certificate of Trademark Registration for THE SUPREMES, USPTO Reg. No. 1003076; The Supremes bio at http://rockhall.com/inductees/the-supremes/ ; Baby Love on YouTube at http://www.youtube.com/watch?v=23UkIkwy5ZM; @iplegalfreebies and www.kasterlegal.com.

WORLD CUP – National Teams & Big Brands out on the field Reply

While watching the US play Ghana yesterday in the World Cup, I couldn’t help but notice that in soccer ballsaddition to the rivalry between the two national teams on the field… there was also a competition between famous brands on the field too.  Adidas, Nike and Puma were the three famous brands and trademarks that I noticed all over the field, players, officials, equipment and gear.  Adidas trademarks were on the game ball, officials and frequently appeared on the stadium’s sidewall advertising. Nike’s swoosh trademark was on the US jerseys and many cleats.  Puma’s leaping-cat trademark was prominently featured on Ghana’s jerseys.

Adidas, Nike and Puma are all famous brands.  Nike owns nearly 300 USPTO trademarks including their famous swoosh.  Adidas owns close to 150 USPTO trademarks including their famous three stripes.  Puma also owns many USPTO trademarks featuring its leaping cat.

Flashing trademarks out on the field, and World Cup endorsements is big business.  According to a recent Bloomberg Businessweek article, Nike is the largest sportswear company in the world, with $25 billion in revenue.  Adidas (based in Germany) is a close second with $20 billion in revenue. Combined, these two brands control 70 % of the market for soccer gear.  Soccer is a big focus for Adidas and the brand has a long history with soccer sponsorship, including sponsoring FIFA since 1970.  Nike joined the soccer sponsorship game more recently in 1994 when the US hosted the World Cup.

Enjoy watching the rivalries play out during the World Cup this summer!  National Teams (and the sponsoring brands) will be giving it their all.

Great game last night. Thrilling 2-1 victory by the US over Ghana.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also FIFA stats on the US v Ghana game at http://www.fifa.com/worldcup/matches/round=255931/match=300186512/index.html#nosticky; the USPTO TESS data base at http://www.uspto.gov/; Bloomberg Businessweek article by Brendan Greeley, titled “Shootout Can Nike Beat Adidas at Soccer?”; Scores online at http://www.fifa.com/worldcup/index.html and http://msn.foxsports.com/soccer/schedule?competition=12&season=2014; @iplegalfreebies and www.kasterlegal.com.

Meet .NYC – the new domain for New Yorkers Reply

A new class of generic top-level domains (gTLDs) is rolling out, including “.nyc”!  This is a new domain for New Yorkers.  Here is a bit of information about the new .nyc domain from the official website: http://www.nic.nyc/about/ 

Who Will Own .nyc?

  • Any New Yorker whose work, ideas and creativity are based in the City.
  • Locals who provide services, products or content to fellow New Yorkers.
  • Companies, organizations and individuals wishing to showcase the value of their location online.

When can I register a .nyc domain name?

It is currently expected that .nyc will launch as early as May 2014, with phasing as follows.

PHASE 1 (May 2014): Trademarks Sunrise (45 days – ending June 20, 2014)

Sunrise is an initial period designed to protect intellectual property rights holders: those with registered trademarks. Trademark owners can take advantage of the Sunrise phase to safeguard the domain name that matches their trademark. As required by ICANN, all trademark owners must have their marks validated and registered in the Trademark Clearinghouse as a minimum requirement if they wish to register during Sunrise. Submit a trademark to the Clearinghouse at: http://trademark-clearinghouse.com.  After marks are registered with the Trademark Clearinghouse, registered trademark owners may apply for their own .nyc web address at: http://www.nic.nyc/trademarks.  The steps for priority registration for registered trademark owners are outlined here: http://www.trademark-clearinghouse.com/content/nyc-priority-registration-trademark-holders?utm_source=.NYC&utm_medium=clickthrough&utm_campaign=NYCSunrise

Learn more about the Trademark Clearinghouse on ICANN’s website: http://newgtlds.icann.org/en/about/trademark-clearinghouse

If there is more than one qualified trademark holder applying for the same domain name, an auction will be held to determine the registrant.

PHASE 2 (June/July 2014): City Government-Affiliated Reserve List (30 days) / Sunrise Auctions

During this phase, City government and government-affiliated .nyc entities will have the right to register .NYC domains through a City-designated single point of contact that will authenticate eligibility.

PHASE 3 (August/September 2014): Landrush (60 days)

All businesses, organizations and residents with a physical address in the City will have an equal opportunity to register .nyc domains during the Landrush phase. There will be a slightly higher fee for registrations occurring during the Landrush phase. If there is only one application for a .nyc domain name during this period, the applicant for that name will be granted the registration. If there are multiple applications for a domain name during this period, however, an auction will be held to determine the registrant after completion of the Landrush period.

PHASE 4 (October 2014): General Availability

After the Landrush phase, all businesses, organizations and residents with a physical address in the City of New York shall be entitled to register .nyc domain names in real-time on a first-come, first-served basis. For the first ninety (90) days of General Availability, in the event that a domain name registrant applied for a domain name that is an exact match of a trademark appearing in the Trademark Clearinghouse, the registrant will receive a notice about that trademark during the registration process and asked whether or not it wishes to proceed with the registration. If it does, the name will proceed to registration, but may subsequently be challenged by the Trademark owner through an ICANN dispute resolution procedure if the name is likely to cause confusion with the trademark.

For more information see the Official Website at http://www.nic.nyc/  and http://www.nic.nyc/trademarks/.  For folks outside of NYC, a new generic top-level domain may be launching in your area too.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

Imitating Others On Social Media Reply

photo(2)Social media sites generally frown upon users who imitate others and list impersonation as a no-no within their Terms Of Use and Privacy Policy.  By using, joining or registering with a social media site, folks “agree to” and “accept” the terms and policies of the social media site.  Note, that the terms and policies of a social media site (that you should, although, may have never read) apply merely by the simple act of using the site, joining or registering.

Imbedded within these terms and policies are several common elements that relate to impersonation and the treatment of imitators.  Often, these are listed as things that a user is permitted to do and not do.  “Shall not” language is commonly used in these lists (perhaps modeled off the Ten Commandments).  Here are a few examples:

THOU SHALT NOT (as per terms and policies of various social media sites):

  • provide any false personal information on Facebook, or create an account for anyone other than yourself without permission [excerpt from Facebook’s Statement of Rights and Responsibilities]
  • create any account for anyone other than yourself without such person’s permission [excerpt from Foursquare’s Terms Of Use]
  • use a User Name that is the name of another person with the intent to impersonate that person [excerpt from Foursquare’s Terms Of Use]
  • post content or take any action on Facebook that infringes or violates someone else’s rights or otherwise violates the law [excerpt from Facebook’s Statement of Rights and Responsibilities]
  • upload, download, post, submit or otherwise distribute or facilitate distribution of any Content on or through the Service, including without limitation any User Submission, that:
    • infringes any patent, trademark, trade secret, copyright, right of publicity or other right of any other person or entity or violates any law or contractual duty;
    • you know is false, misleading, untruthful or inaccurate;
    • impersonates any person or entity, including any employee or representative of Foursquare  [excerpt from Foursquare’s Terms Of Use]

These are short, illustrative excerpts from the Terms and Policies currently posted on the Facebook and Foursquare sites.  The Terms and Policies also include information on how to report imitators.  Generally, a valid imitation claim will result in the imitator being removed from the site and possibly forfeiting other privileges and use of the site as well.  While Terms and Policies are subject to change, discouraging imitation will likely remain standard protocol.  Social media sites have a vested interest in discouraging imitators on their sites, because, this keeps their sites user friendly for original celebrity users.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

The Terms of Use and Privacy Policy for various social media sites can generally be found with a Google Search or are available on the social media site, often at the bottom on the login page. 

See also: a related post on What to do if someone is using your stuff on social media sites; The Terms of Use and How to Report Claims of Intellectual Property Infringement posted on Facebook at https://www.facebook.com/legal/terms and https://www.facebook.com/help/www/39922488347420; @iplegalfreebies and www.kasterlegal.com.

 

How to use the trademark & copyright symbols: ®, TM, SM, © Reply

The ® Registered Trademark Symbol

Once a trademark is federally registered with the USPTO (US Patent & Trademark Office), the coveted ® symbol can be used. While use of the ® symbol is not required, it is highly recommend. Using the ® symbol lends credibility to a registered mark.  Additionally, it puts potential infringers on notice of the trademark owner’s rights and makes it easier for the trademark owner to collect certain damages in the event someone infringes these rights.

The TM and SM Trademark Symbolsphoto (1)

The TM and SM symbols can be used with an unregistered trademark or service mark to inform the public that a word mark, logo, or design mark is being used as a trademark and that the owner of the mark claims rights to it.  Using either of these symbols gives notice that the mark owner is intentionally establishing ‘common law trademark rights’ in the mark. For example:  MY TRADEMARK ™  or MY SERVICE MARK ℠    (For more information on how to use the TM or SM symbols click here).

The © Copyright Symbol

Another familiar symbol is the  copyright symbol.  Using the © symbol is an easy way to notify the world that copyright exists in your original, creative work.  While it’s not required by law to use the © to establish copyright in a photograph, piece of music or other original work, it’s simple to do and could save you a lot of headache down the road.  Use of the the © copyright symbol does not require permission from, or registration with the US Copyright Office.  (For more information on how to write a © copyright notice click here).

Many creative works may contain both a trademark symbol and a copyright notice.   A website, for example, will often contain the website owner’s trademark (registered or unregistered) and a copyright notice.  A novel may have the publisher’s registered trademark and the author’s copyright notice on it.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: USPTO (US Patent & Trademark Office) resources at www.uspto.gov; www.uspto.gov/trademarks/basics/register.jsp; and www.uspto.gov/faq/trademarks.jsp#_Toc275426682 ; US Copyright Office Circular 3 on Copyright Notice at www.copyright.gov/circs/circ03.pdf; US Copyright Office Circular 1 on Copyright Basics at www.copyright.gov/circs/circ01.pdf; @iplegalfreebies and www.kasterlegal.com.

Federation Bells Call For Compositions (nice ring to their Terms & Conditions) Reply

The Federation Bells park in Melbourne has launched an open call for composers to submit compositions to be Fed bells picplayed on a fascinating instillation of 39 bells.

The Federation Bells are a (recently refurbished) collection of 39 bronze upturned bells mounted on poles in a grid arrangement at Birrarung Marr in central Melbourne. They can be played using a sophisticated electromechanical system, in which internal hammers strike the bells, triggered by simple MIDI commands.

Submitted compositions can be heard daily on an evolving weekly schedule that is posted online.  My friend Rob Waring’s composition titled, Daybreak at Birrarung Marr, is currently scheduled to play daily. (Bravo, Rob!)

To encourage folks to submit compositions, the Federation Bells website features an online composition tool that lets folks compose music for the 39 bells.  A composer’s manual and guide is also posted on their website at http://federationbells.com.au/media/Federation-Bells-Composers-Manual.pdf.

The Terms and Conditions for submitting a composition also have a nice ring to them.  By submitting a composition folks agree to: 1)  grant a license allowing their composition to be played on the bell instillation for one year (composer retains ownership) and 2) submit their composition freely without seeking any further consideration.  Additionally, some folks may earn royalties if they are a member of APRA (or an equivalent society) and there is no promise made that submitted compositions will be performed.  (Terms and Conditions are always subject to change).

Federation Bells Terms and Conditions

An image of the Terms and Conditions from the website

Evidently, over a hundred compositions have already been submitted.  As I type this, I am singing to myself, “ding dong merrily on high in heaven the bells are ringing.”  The melody and lyric of this carol are fitting.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: Rob Waring’s website http://home.broadpark.no/~rwaring/; Information about composing for the Federation Bells at http://federationbells.com.au/play-the-bells/composing-for-the-bells; http://federationbells.com.au/media/Federation-Bells-Composers-Manual.pdf ; and http://composer.federationbells.com.au/FederationBells.html; @iplegalfreebies and www.kasterlegal.com.

Happy Birthday Shakespeare (Your prose… a public domain goldmine) 2

William Shakespeare turns 450 today.  His masterful use of language keeps his plays popular, relevant, in production and available to us all as literary treasures in the public domain.  Public Shakespeare's First Foliodomain works, like Shakespeare’s plays, are available for the public to use, copy, distribute, perform, quote, sample and make derivative works from… for free.  Shakespeare’s plays are in the public domain because they are nearly 400 years old.  (Here in the United States, works published before 1923 are in the public domain).

It’s important to note that newer productions, translations or works based on Shakespeare plays may still be covered by copyright protection… and may NOT be in the public domain.  For example, movies of Shakespeare plays are “new” enough to still be covered by copyright.  The length of time that a play or other creative work is protected by copyright, and the timeline for when works enter the public domain varies country by country.

Happy Birthday Shakespeare!  Thank you for your stellar intellectual property!  “…can one desire too much of a good thing?”

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: earlier blog posts on the topic of “public domain,” https://iplegalfreebies.wordpress.com/category/public-domain/; other copyright and public domain resources, http://www.copyright.gov, http://copyright.cornell.edu/resources/publicdomain.cfm, http://creativecommons.org/publicdomain/; ending quote from, As You Like It; @iplegalfreebies and www.kasterlegal.com.

Vivian Maier- Publishing a newly discovered photo treasure-trove 2

Finding Vivian Maier, is a fascinating, documentary film about a talented street photographer who kept her photographs secret… and was recently discovered when a young entrepreneur purchased boxes of her negatives and undeveloped film on a hunch at auction. This situation raises an interesting copyright scenario; because, Vivian Maier took her photographs from the mid-1950’s-1990’s but they are only now being “published” and made available to the public for viewing, sale and distribution. The “publication” of a work is an element in copyright registration that can often seem mysterious for a first-time copyright registrant. Let’s take a look at the publication element in US copyright registration by using Vivian Maier’s newly discovered photographs as an example.

showing at the IFC in NYC

showing at the IFC in NYC

Here is background on Vivian Maier and her photographs: “Now considered one of the 20th century’s greatest street photographers, Vivian Maier spent her life as a nanny, secretly taking over 100,000 photographs. Hidden during her lifetime, Maier’s work was discovered by pure chance when amateur historian John Maloof ended up with a stash of her photo [negatives] at an auction. Fascinated, he searched for more—and for the story behind the woman. Now, this unsung art- its strange and riveting life and work are revealed through never-before-seen photographs, films and interviews with dozens who thought they knew her.”   [the synopsis of the film, Finding Vivian Maier, as posted on the IFC website at http://www.ifccenter.com/films/finding-vivian-maier/] [the film gets 2 thumbs up].

What is copyright publication?
Publication has a technical meaning in copyright law. According to the statute, “Publication is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication.” Generally, publication occurs on the date on which copies of the work are first distributed to the public. [Quoted from the US Copyright Office website at http://www.copyright.gov/help/faq/faq-definitions.html]

Why is the publication date of a copyrighted work important?  Because, the publication date of a work may impact the duration of copyright protection vested in a work. This is especially true for works, like many of Vivian Maier’s photographs, which were created before January 1, 1978 but only recently published. Here are details on how long copyright protection endures:

  • Copyright Protection for Works Originally Created on or after January 1, 1978.  A work that was created (fixed in tangible form for the first time) on or after January 1, 1978, is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author’s life plus an additional 70 years after the author’s death. In the case of “a joint work prepared by two or more authors who did not work for hire,” the term lasts for 70 years after the last surviving author’s death. For works made for hire, and for anonymous and pseudonymous works (unless the author’s identity is revealed in Copyright Office records),the duration of copyright will be 95 years from publication or 120 years from creation, whichever is shorter. [Excerpt from US Copyright Office, Circular 1 at http://www.copyright.gov/circs/circ01.pdf]
  • Copyright Protection for Works Originally Created Before January 1, 1978, But Not Published or Registered by That Date. These works have been automatically brought under the statute and are now given federal copyright protection. The duration of copyright in these works is generally computed in the same way as for works created on or after January 1, 1978: the life­plus­70 or 95/120­year terms apply to them as well. (Many of Vivian Maier’s newly discovered and published works likely fall into this category).  [Excerpt from US Copyright Office, Circular 1 at http://www.copyright.gov/circs/circ01.pdf]
  • Copyright Protection for Works Originally Created and Published or Registered before January 1, 1978.  There is quite a bit of variation in copyright terms vested in works created and published before January 1, 1978. The longest term of copyright protection for these works was for 95 years [See page 6 of US Copyright Office, Circular 1 at http://www.copyright.gov/circs/circ01.pdf]

For Vivian Maier’s newly discovered and published works, they will likely benefit from a longer term of copyright protection; since, they have recently been published some twenty to sixty years after they were taken.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: Information about Vivian Maier at http://www.vivianmaier.com/about-vivian-maier/; the US Copyright Office website at http://www.copyright.gov/help/faq/faq-definitions.html; US Copyright Circular 1: Copyright Basics at http://www.copyright.gov/circs/circ01.pdf and http://www.copyright.gov/circs/circ01.pdf#page=3; show times for seeing Finding Vivian Maier at the IFC in NYC at http://www.ifccenter.com/films/finding-vivian-maier/; @iplegalfreebies and www.kasterlegal.com.

FIRST KISS viral video (the music was used with permission) 2

The FIRST KISS video that went viral earlier this month is a digital advertising phenomenon that uses music with permission! Giving a shout out the folks involved for doing it right! Here, the clothing company Wren created a three-and-a-half-minute video featuring pairs of strangers kissing for the first time accompanied by the musician Soko’s song, “We Might Be Dead Tomorrow,” which was licenseFirst Kissd for use in the video. Within days of being released on YouTube, the video went viral… and over 73 million views later, both the clothing company and the musician are selling more and making more money.

According to a recent NY Times article, “there has been a ‘significant bump’ in sales on Wren’s online store since the video made its debut. And the song accompanying the video, Soko’s ‘We Might Be Dead Tomorrow,’ sold 10,000 copies in North America on Tuesday and Wednesday [following the video’s release].”  It’s also reported that sales for Soko’s album featuring the song went up too and that the video was made on a modest budget of about $1,300.

Three cheers for the entrepreneurial ladies (clothing designer, musician and video director) for their successful collaboration on the FIRST KISS viral video phenomenon.   Gotta love a happy ending.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: YouTube video link at https://www.youtube.com/watch?v=IpbDHxCV29A; The NY Times Article by J. Koblin, “A Kiss Is Just a Kiss, Unless It’s an Ad for a Clothing Company” at http://www.nytimes.com/2014/03/14/business/media/a-kiss-is-just-a-kiss-unless-its-an-ad-for-a-clothing-company.html?_r=0; Wren’s website at http://wrenstudio.com/clothing/; @iplegalfreebies and www.kasterlegal.com.

MoveOn.org lawsuit- Trademark Infringement or Free Speech? Reply

Did you know that it’s a trademark infringement issue that Louisiana’s lieutenant MoveOn billboardgovernor has sued the nonprofit MoveOn.org over? (I gotta tell you that the defense of “free speech” keeps coming to my mind).

The trademark at issue is PICK YOUR PASSION [likely USPTO Reg. No. 4022761] which is owned by the Louisiana Department of Culture, Recreation & Tourism for the purpose of “promoting culture, tourism and business in Louisiana.”  The claimed infringement is an alleged misuse of the tourism trademark PICK YOUR PASSION by MoveOn.org which criticizes Louisiana’s governor for refusing to expand Medicaid with the following slogan, “LOU!SIANA Pick your passion! But hope you don’t love your health. Gov. Jindal’s denying Medicaid to 242,000 people.”

The complaint filed in the lawsuit alleges that MoveOn’s “political statement” (which is on a highway billboard, YouTube videos and television commercials) is a trademark infringement, because, it “confuses the viewing public as to the source” of the billboard message.

Confusion, specifically, the likelihood of confusion as to the source of goods and services is paramount in evaluating trademark infringement (codified in the Lanham Act).  However, the free speech protections granted by the First Amendment can be a defense to allegations of trademark infringement (parody is one type of free speech).  The general rule, regarding the free speech defense, is that “anyone, competitor, critic or comedian” is permitted to use a trademark to criticize the policies of the mark owner.   Here, MoveOn is using non-commercial speech to criticize the governor of the State of Louisiana and not the State’s Department of Culture, Recreation & Tourism (who owns the PICK YOUR PASSION trademark) with their political statement.  It will be interesting to see how this lawsuit develops.

It seems the lawsuit has already launched a whirlwind, national campaign for MoveOn.org to raise money and awareness about their political agenda.  It’s hard to say how many folks noticed the billboard on the I-10 interstate approaching Baton Rouge, Louisiana before the lawsuit was filed…. it’s getting attention now.

The MoveOn.org billboard was still up yesterday (3/25/14), when my mom took the photo above.  (And as a humorous post script, the next next billboardbillboard on I-10 after the “pick your passion” billboard at issue touts a steamier message).

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: The case, Dardenne v. MoveOn.org, case number 3:14-cv-00150 available at http://media.nola.com/politics/other/Dardenne%20Complaint.pdf; McCarthy On Trademarks, vol 4 and vol 6 on parody and free speech defenses; MoveOn.org which features the lawsuit on their website’s homepage at http://front.moveon.org/; The Louisiana Office of Tourism’s website at http://www.crt.state.la.us/;  photos by Pam Kaster at www.pamkaster.com; @iplegalfreebies and www.kasterlegal.com.