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.

MoveOn.org lawsuit- the billboard can stay Reply

Earlier this week, a federal judge in Louisiana ruled that the billboard using the PICK YOUR PASSION trademark to criticize MoveOn billboardLouisiana’s governor for refusing to expand Medicaid can stay up.  The judge denied a preliminary injunction requesting that the billboard be taken down asap.   The judge’s preliminary ruling that the billboard can stay up is an indication that she does not feel folks were confused by the billboard.  Evidently, the judge stated in her decision that, “[i]n this Court’s view, the Lieutenant Governor underestimates the intelligence and reasonableness of people viewing the billboard.”  On an interesting aside, MoveOn stated in a campaign drive this week that initially they had only intended to keep the billboard up for a month.   Now MoveOn is raising money to “ensure our winning billboard will stay up.”  (I grew up in Louisiana and made a contribution to MoveOn’s billboard fund).

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; 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/; photo by Pam Kaster at www.pamkaster.com; @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.

 

Explaining the Getty Images “freebies” (see the fine print) 2

In a revolutionary move, Getty Images has just made some of its stock photos free to use on websites, blogs and social media so long as the photos are used for editorial purposes and with Getty Images’ new Embedded Viewer.  Undoubtedly, Getty Images is motivated to try to control and “cash in” on the rampant on-line photo piracy.  In exchange for “free use” of Getty Images’ photos and images, folks will authorize data collection and advertising by Getty Images and others.  Here is how Getty Images explains their new Embedded Viewer and defines the permitted editorial purposes in their website Terms of Use:

Embedded Viewer

Where enabled, you may embed Getty Images Content on a website, blog or social media platform using the embedded viewer (the “Embedded Viewer”). Not all Getty Images Content will be available for embedded use, and availability may change without notice. Getty Images reserves the right in its sole discretion to remove Getty Images Content from the Embedded Viewer. Upon request, you agree to take prompt action to stop using the Embedded Viewer and/or Getty Images Content. You may only use embedded Getty Images Content for editorial purposes (meaning relating to events that are newsworthy or of public interest). Embedded Getty Images Content may not be used: (a) for any commercial purpose (for example, in advertising, promotions or merchandising) or to suggest endorsement or sponsorship; (b) in violation of any stated restriction; (c) in a defamatory, pornographic or otherwise unlawful manner; or (d) outside of the context of the Embedded Viewer.

Getty Images (or third parties acting on its behalf) may collect data related to use of the Embedded Viewer and embedded Getty Images Content, and reserves the right to place advertisements in the Embedded Viewer or otherwise monetize its use without any compensation to you. (http://www.gettyimages.com/Corporate/Terms.aspx)

As you can see, Getty reserves the rights to 1) change the terms, 2) remove the image, 3) place advertisements in the Embedded Viewer, 4) collect data from folks who use an embedded image, 5) permit 3rd parties to collect data from folks who use an embedded image.

This is an interesting way for Getty Images to “make new rules” regarding free use of their images on blogs, websites and social media.   It will be interesting to see if folks who are currently copying and using Getty Images’ photos without permission take the time to use the Embedded Viewer.  Using the Embedded Viewer has more steps than simply right clicking and copying an image, which is how I’d guess most infringers currently access Getty Images’ photos.  To use an image with Getty Images’ Embedded Viewer, HTML code provided by Getty Images needs to be copied and pasted into the source code of a website.  Here is a link to steps for using the Embedded Viewer http://www.gettyimages.com/Creative/Frontdoor/embed and a screen shot of the code that needs to be used in order to embed an image of a surprised guy:

Embedding an image from Getty Images http://www.gettyimages.com

Embedding an image from Getty Images http://www.gettyimages.com

Will be interesting to follow this development and see how it goes.

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

vk@kasterlegal.com

For more information see, Getty Images websites at http://www.gettyimages.com/Creative/Frontdoor/embed; and the Terms of Use at http://www.gettyimages.com/Corporate/Terms.aspx;  an article by Russell Brandom in The Verge website titled, The World’s Largest Photo Service Just Made Its Pictures Free To Use available at http://mobile.theverge.com/2014/3/5/5475202/getty-images-made-its-pictures-free-to-use; for other blog posts on Photo Copyright; @iplegalfreebies and www.kasterlegal.com.

                                                                Screen shot from Getty Images   http://www.gettyimages.com

Maasai Trademark – Maasai tribe wants control over commercial uses of its name 2

The Maasai tribe in Tanzania has a unique identity, name and culture that various companies use to sell products.maasai  For example, Diane von Furstenberg sold pillows and necklaces using the Maasai name and Jaguar Land Rover sold a limited-edition vehicle named after the tribe.  Presently, the Maasai tribe is seeking control over commercial uses of its name.   Seems fair for the Maasai tribe to share in the profits earned by folks using their name, especially, since the Massai name is used to invoke the integrity, sensibility and style of the tribe members.

Personally, I find the arguments against granting the Maasai tribe ownership rights, trademark rights, and licensing rights to their name offensive.

CLAIM 1 AGAINST THE MAASAI OWNING THEIR NAME: because the tribe has never made an effort to enforce ownership of its culture and name until now, the rights have been lost.

COUNTER THIS CLAIM: To me, this is a rather colonial, imperialistic view of rights and ownership; however, tribes and indigenous people all over the world continually fight against this claim.  In an effort to set a global standard for respecting indigenous peoples’ rights in their names, culture, trademarks, traditional knowledge and other intellectual property, the UN has adopted a Declaration on the Rights of Indigenous Peoples.  It may take a high profile challenge by the Maasai to raise international awareness regarding the rights of tribes and indigenous people to their name, trademarks, customs, traditional knowledge and other intellectual property.

CLAIM 2 AGAINST THE MAASAI OWNING THEIR NAME: “It’s a nice idea, but if it would work, the French deficit would be gone by asking for royalties on French Fries.”

COUNTER TO THIS CLAIM:  A more accurate comparison than the french fry comment (which I don’t believe the French have ever claimed and may not even want) is the French zeal and persistence in successfully laying claims to and defending the right to use the word CHAMPAGNE as a regional indicator of bubbly wine from the Champagne region of France.

Evidently, the Maasai have launched a campaign to reclaim their name, traditional knowledge and other intellectual property so that they can share in the profits made off their name and likeness.  (They also have an attorney and a USPTO grant for support).

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

vk@kasterlegal.com

For more information see, The United Nations Declaration On The Rights Of Indigenous Peoples at http://www.un.org/esa/socdev/unpfii/documents/DRIPS_en.pdf; WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore at http://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_26/wipo_grtkf_ic_26_inf_8.pdf;  article by Stephan Faris in Bloomberg Businessweek magazine titled, For Years, Companies Have Been Making Millions Off The Maasai Name, Now The Tribe Wants Its Cut; @iplegalfreebies and www.kasterlegal.com.

“DUMB STARBUCKS” – a fake parody Reply

Did you hear that a “DUMB STARBUCKS COFFEE” shop opened in California recently?  (AND this fake Dumb-Starbucks-Logoparody was a comedian’s publicity stunt)(AND the shop has already been shut down by the LA County health inspectors)?  In addition to branding the pop-up cafe with a mocked-up Starbucks logo that added the word “dumb” into the logo, the cafe also featured a virtually identical menu to Starbucks and added the word “dumb” onto the menu boards.  (For example selling “Dumb Iced Espresso” in a “Dumb Tall” size cup).

How was this permissible?  Short answer, it wasn’t.  Parody was being claimed although this was not a parody.  Folks often think that just because something is FUNNY it is legally a PARODY.  This is a not the case.  FUNNY ≠ PARODY.  Because this is such a common assumption it’s worthwhile to mention it again (and again, and again).  For a terrific analysis of the DUMB STARBUCKS parody claim see on my friend Ron’s blog www.likelihoodofconfusion.com (post written by Matthew David Brozik).

Not surprisingly, a spokeswoman for Starbucks Coffee said that despite the humor, the store cannot use the Starbucks name.

A few other interesting elements raised by this DUMB STARBUCKS parody claim:

  • Dumb Starbucks made a claim that their parody was similar to Weird Al Yankovic’s music.  However, they left out a critical detail – permission.  Weird Al Yankovic ALWAYS gets permission for his music.
  • The fact that the shop was closed down by county health inspectors is an interesting detail in this Dumb saga.  In fact, it’s not uncommon for various local inspection agencies to become involved when counterfeit merchandise is being sold (technically, the Dumb Starbucks scheme was a misappropriation of the Starbucks brand akin to counterfeiting).  If a trademark-infringing business is violating health or building codes in addition to selling counterfeit products, nipping them in the bud for applicable health or building code violations can quickly close the doors.  Hence this was the case with the Dumb Starbucks shop being shut down by health inspectors.

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

vk@kasterlegal.com

For more information see, TMEP on trademark parody section 1207.01(b)(x) at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e5036.xml; another blog post on parody; for other blogs posts on trademarks; @iplegalfreebies and www.kasterlegal.com.