For any of you all who were born pre-1980, we’ve all seen. Michael Jackson’s sweet lean move during his rendition of “Smooth Criminal” on stage and in his videos. This move is actually protected by US Patent Number 5,255,452 “Method and means for creating anti-gravity illusion.” Translation: special loafers fitted with heels that can slot into the stage floor to allow the wearer to lean forward, at gravity-defying angles. The patented system uses a notched bracket that rises from the floor of the stage, and into which specially designed shoes can latch. The patent refers to similar arrangements on astronauts’ shoes, for use in zero-gravity. And you thought the only thing Jackson left behind was his music?!
The moral of the story? Patent protection for your inventions may NOT be so obvious.
The patent issued on October 26, 1993, so will soon be expired. Let’s just keep our fingers crossed that Justin Beiber doesn’t start using this in his concerts!
United States trademark law recognizes a “spectrum of distinctiveness,” a sliding scale of protectability, where the more distinct and unique the term, the easier it is for the owner to claim and be granted exclusive trademark rights for that term. Trademarks fall somewhere on this scale of distinctiveness, ranging from “coined”, which is the strongest, to “generic”, which is worthless:
COINED – Very Strong/Valuable (invented/made up words such as STARBUCKS and KODAK)
ARBITRARY – Strong/Valuable (words/images without connection to THE goods or services, such as APPLE and BLACKBERRY)
SUGGESTIVE – Good Value (words/images that allude to the goods or services but do not describe them such as GREYHOUND and PUP-PERONI, my personal favorite!)
DESCRIPTIVE – Weak/Low Value (words/images that refer to the character or quality of the goods or services, or an ingredient or aspect of them, such as JUICY STEAK)
GENERIC – Worthless (words/images that are names of the goods or services in any language)
The mark you choose should be strong, not just for registration purposes, but for the purposes of value and enforcement. Even a registered mark, if descriptive, may not be sufficient to prevent others from using the mark in association with those services because it will be difficult to enforce “fair use” of the mark for other purposes. Initially, you may be tempted to use a descriptive mark. However, keep in mind that the most valuable marks in the world reside on the upper end of the scale (i.e., “coined” and “arbitrary”). Coined and arbitrary marks are generally the easiest to register because there is no connection between the mark and the goods or services (as is the case with descriptive and generic marks), but they may present a marketing challenge when trying to educate the public about your company, goods or services.
Companies may choose a descriptive trademark even though it is a weak mark because there are marketing benefits to using a mark that describes the product. The USPTO generally hesitates to allow registration of a descriptive trademark because it describes all other competing products too. While descriptive trademarks have an initial marketing ease, there are many disadvantages to using them. These include increased costs of trying to register descriptive trademarks, which are routinely rejected by trademark offices worldwide. In the event that the owner of a descriptive trademark is not able to develop secondary meaning in the trademark (consider the now-registered mark HONEY BAKED HAM COMPANY), the mark is not protectable and consequently the owner will not be able to prevent others, even competitors, from using the same or similar terms.
Suggestive trademarks often strike the perfect balance, protectable as trademarks while still suggesting characteristics of the company, goods or services.
When creating your trademark, it is important to avoid marks which are the full name or a surname of an individual living or who has died in the last 30 years. In certain circumstances, it is possible to obtain registration of a surname as a trademark, particularly with permission of the individual (Taylor Swift owns the mark TAYLOR SWIFT). If you file to register a mark which appears to be someone’s name, you may be required to swear under oath that no such person exists, that the person is long dead, or to supply a written permission from the person named.
Avoid names that include a geographic area. Besides being easy to forget, and difficult to protect under trademark law, a geographical name may no longer fit if your business expands its sales or service area. Especially if you plan to sell products on the Internet, you should think twice about giving your business a geographic identifier.
Also, don’t limit expanded product lines, and don’t choose a name that might not be representative of future products or services. Also, consider choosing a mark which lends itself to becoming a “family” of marks. For example, MCDONALD’S, MCMUFFIN, MCRIB, etc.
Believe it or not, the USPTO has been granted the subjective task of deciding what is scandalous or disparaging material. Obsenities and racial or ethnic epithets are often rejected by the USPTO, and, due to it’s subjective nature, many marks actually get registered which are arguably scandalous or disparaging.
Avoid insignia of a government agency, or of certain organizations protected by law, such as the insignia or name of the FBI, Olympics, etc.
“Clever” Misspellings of Otherwise Unusable Marks.
I have a lot of clients ask if they can use fun spellings and iterations of marks that would otherwise not be available. Please keep in mind that this does not avoid the original problem with the mark. You probably could not get a registration for “DISNEE”, as it is too close to the famous mark DISNEY. Also, descriptive mark like “speedy” for a fast car is not registrable if you write it “spee-dee”. Similarly, if “Tomato” is generic for tomato, then so is “Toomatoe”.
Conduct a Search
After you’ve chosen one or more marks that seem possible, and before settling on a trademark and commencing any marketing efforts or spending any marketing dollars, make sure you do a cursory trademark search, by seaching Google and the USPTO website. You may also want to search WHOIS, for purposes of domain name availability. Because so many domain names are now unavailable (at least for a reasonable cost), then you may want to check what is available before settling on a trademark.
Keep in mind that searching on your own has its inherent limitations, and it’s wise, should the cursory search be “clear,” to utilize a third party search firm to search for marks that could be listed in business databases and used at common law. Such a comprehensive search will also check state databases for use of the mark as corporations or LLCs, for example.
My last post discussed how to avoid infringing the the IP rights of others. My fourth and final post on this topic will discuss how to avoid exposing YOUR intellectual property rights to infringement BY others! While you want to make every effort to avoid infringing the intellectual property rights of others, you must be just as eager to protect your own intellectual property rights in cyberspace. Here are just a few points to consider.
Proper Use of Your Trademarks
Regarding trademarks, consider registering trademarks, including your domain name. Further, use trademark notices appropriately and consistently throughout your website. Check to see if any of your company’s trademarks are being used as domain names, and consider obtaining ownership of domain names that infringe your trademarks. Obtain “legal title” to the domain name; avoid allowing legal title to be held by the website developer, the Internet service provider, or an employee.
Proper Use of Copyrights
Although creative content on a website is protected automatically by copyright, you should use copyright notices appropriately and consistently to reserve your rights and put others of notice. Further, obtaining federal copyright registration allows you to sue in U.S. federal court for infringement of your copyright. Under certain circumstances, websites that intentionally copy the so-called “look and feel” of another site may be subject to claims of copyright infringement in the U.S. One way to demonstrate copying is to show that the source code is identical. It is suggested that web designers give their graphics unique names so that if a particular graphic appears on another site with that same unique name, it may be cited as further evidence of direct copying. As between the site owner and the web designer, again, the issues related to which party is going to be the copyright owner of the elements of the site must be addressed in the contract between these parties, and the agreement should indemnify you or your client should any suit arise with respect to copying the “look and feel” of a website.
Furthermore, attempt to be proactive in prohibiting copyright infringement of your website and the elements of your website. For example, consider mechanisms to prevent “cutting and pasting” of information, text, and pictures from your website as a deterrence to copying, or at least explicitly state the prohibition of copying. Consider using technology to track third party use of your content, and take steps to ensure that your website fully complies with and takes advantage of the Digital Millennium Copyright Act.
Although an actual “patent” is unlikely to appear on your website, or even be accessible to third parties via your website, you should consider whether patent protection could be available for the technology or business models incorporated on your website. You should determine whether the ideas underlying the business model used for your website and e-commerce business are adequately protected under patent law. Further, keep in mind the novelty requirements, and in the U.S. there is a statutory one-year bar (35 U.S.C. §102), which allows you a one-year grace period after publishing information about your invention, using the invention publicly, or offering it for sale. In other words, you must file a patent application by the one year anniversary of the first publication, use or sale of your invention to obtain a patent; otherwise, you are statutorily barred. Outside the U.S., most countries require absolute novelty at the time of patent application filing, and, in many countries, business methods are not patentable subject matter.
Informing Users of Your Intellectual Property Rights
The issues mentioned above are just a few of the many issues you must consider when implementing a website, whether it be for e-commerce, or solely for entertainment or informational purposes. Although risks cannot be eliminated in their entirety, a thorough periodic website audit will certainly reduce the inherent risks associated with owning and maintaining a website. The nature of the Internet and the laws pertaining to intellectual property are enormously complex, and it is vital to follow the dynamic legal landscape associated with the Internet and intellectual property. As such, a thorough website audit prior to the launch of a website, and annually thereafter, will address many more concerns than outlined above to avoid the risk of litigation, identify potential infringers, remind well-meaning supporters of the valuable proprietary nature of your intellectual property rights, allow you to take advantage of any new laws and regulations, and, at the very least, give you the peace of mind to proceed with your Internet business.
My last post discussed the importance of a website audit to help avoid infringement of the IP rights of others. I briefly discussed selecting a domain name, and use of third party trademark on your website. Today, hit on copyrights, and the rights of privacy and how they relate to your website.
Use of Third Party Copyrights
It may be a breach of copyright to take graphics, text, photos, music, etc., from another site and place it on your own website without the prior consent of the author. Typically, you already own the content created by your company and its employees. For materials you are already using “with permission,” review the existing licenses, which often restrict the type of media and the territory in which you can use the media. For new known third party content, be sure to obtain a license to cover your proposed uses, or better yet, obtain an assignment of ownership rights in the content. Particularly, if the third party is not your employee, you must have a valid written work-made-for-hire agreement or some other form of written agreement transferring to you all the rights in the materials. If you obtain material from a third party and you do not have a valid work-made-for-hire agreement, you will need to get a license to use the content. And, for unknown third party content (i.e., you are not really sure where the content originated), get indemnity from the supplier of that content so that you can try to insulate yourself from possible negative legal ramifications.
Rights of Privacy
The Internet has made access to information easier, including access to personal information. There is no comprehensive privacy protection legislation in the U.S. that address the collection, storage, transmission or use of personal information on or from the Internet. Typically, in the U.S., the response has been to enact laws to target specific privacy-related issues as new technologies develop and new issues arise (e.g., Cable Communications Policy Act, the Children’s Online Privacy Protection Act, and, arguably, the USA Patriot Act.)
The European Union, however, enacted the EU Directive on the Protection of Personal Data in 1995 to harmonize privacy protection laws of the EU Member States. The EU does not consider US laws to provide adequate protection of personal data, and generally personal data may not be transferred from the EU to the US, unless the US company signs a contract to provide adequate protection for the personal data. Given the U.S.’s lack of a comprehensive privacy law, self-regulation plays an important role in the U.S. for the protection of privacy online. Although the industry is motivated to self-regulate because of the fears of overly burdensome government imposed laws, self-regulation may leave open the question of whether the privacy of Internet users is actually being maintained.
My next post will discuss the rights of publicity, and linking within websites.
While marketing your company as “green” has amazing benefits, be wary of misrepresenting your “greenness” (i.e., “greenwashing”), which can damage your credibility and make you susceptible to legal claims for false advertising.
Think it can’t happen to you? Cases in pointe:
ConAgra, a food products company, has faced a lawsuit for labeling its cooking oils as “natural” even though they are made with genetically modified ingredients. Ouch.
Sigg, the maker of the Swiss-based reusable bottle, once touted to its customers that its products were BPA-free, even though the bottles contained the chemical in their liner. After this became public, sales dropped. No word on whether they will be facing any legal liability for false advertising.
Unfortunately, “greenwashing” may just be getting worse. The Greenwashing Report from TerraChoice Group, an environmental marketing agency, has stated that more than 95% of all consumer products claiming to be green were found to commit at least one of the “seven sins of greenwashing”, which include not providing evidence (or a basis of their claims), being vague, or, yikes, flat-out lying.
So, how can you avoid greenwashing in your company’s advertising? First, keep your messages consistent and support every claim with incontrovertible evidence. Make sure you are able to back up each claim of “eco-friendly”, “99% recyclable”, etc. Next, be transparent and honest if your claims are called into question. Third, if you have any questions about what claims you may be able to make, seek out advice from an advertising attorney.
While we are on the topic of sports this week, I came across this fun trademark registration for the color yellow for the first down line, owned by Sportvision. The description of the trademark: The mark consists of the color yellow used on a virtual line that appears as an image on a football field during a television or video broadcast of a football game. The portion of the drawing in dotted lines depicts a portion of an image of a football field including line markers, and serves to show positioning of the mark. The drawing is lined for the color yellow.
Keep in mind that you may be able to obtain trademark rights in a color mark. In order for a color to be considered a trademark, the owner must show that secondary meaning has been developed for the color. In addition, a color cannot be a trademark if the color is functional in nature.
Details on the trademark registration below!
|Color Yellow for First Down Line|
It’s that time of year…oh wait..isn’t it that time of year all year long these days!? Fantasy sports are cropping up not just for football, but for hockey, golf, and, what’s next…fantasy bowling, all despite the US’s prohibition of online gambling. In fact, online fantasy games are specifically exempt from the Unlawful Internet Gambling Enforcement Act of 2006 (UIGEA), which prohibits gambling businesses from knowingly accepting payments in connection with the participation of another person in a bet or wager that involves the use of the Internet and that is unlawful under any federal or state law.
The UIGEA defines a “bet or wager” to include risking something of value on the outcome of a contest, sports event, or a “game subject to chance.” The “game subject to chance” restriction is designed to include Internet poker, while fantasy sports are specifically excluded from the definition of “bet or wager,” as long as any prize given to a participant is not determined by the amount of fees paid to enter the competition. Furthermore, the formal definition of fantasy sports within UIGEA stipulates that the outcome of a fantasy game must be dependent on multiple sports events. The enactment of UIGEA gave the first legal definition of fantasy sports with which operators could then develop games around, hence the recent explosion of online fantasy sports games.
The laws relating to fantasy sports vary by state. However, in the vast majority of them, fantasy sports is considered a game of skill, skill being the predominant factor in determining a winner, and therefore legal. In order to determine whether a contest is one of skill or chance, because often there is usually a combination of both elements present, most states rely on the “dominant factor test.” This test requires a court to decide whether chance or skill “is the dominating factor in determining the result of the game.” In some states, the law is still quite unclear.
Although the methodology behind the chance/skill distinction and the “dominant factor test” is fairly straightforward, there is still no definite way to determine whether chance or skill predominates in a given game. The modern approach to conducting the “dominant factor test” appears to be to subjectively determine whether a game’s outcome is controlled more by chance or by some other factor that is under the game participants’ control. Although a few courts and legislatures have weighed in on how to conduct this test, courts generally disagree about whether the outcomes of borderline games, such as poker and backgammon, are determined predominantly by chance or by skill.
In sum, please note that in order to have an online gaming platform in compliance with the UIGEA, three prongs must be met:
1. All prizes and awards offered to winning participants are established and made known to the participants in advance of the game or contest and their value is not determined by the number of participants or the amount of any fees paid by participants.
2. All winning outcomes reflect the relative knowledge and skill of participants and are determined predominantly by accumulated statistical results of the performance of individuals (athletes in the case of sports events) in multiple real-world sporting or other events.
3. No winning outcomes is based:
a. On the score, point spread, or any performance or performances of any single real world team or any combination of such teams; or
b. Solely on any single performance of an individual athlete in any single real-world sporting or other event.
I don’t know about you, but I’m off to get my fantasy shuffle board team together!