Understanding Trademarks

Trademarks are valuable assets of businesses and non-profit organizations. A carefully-selected trademark can help a business distinguish itself in the marketplace and create a lasting impression with consumers. Through continual use, trademarks enable businesses and organizations to generate goodwill with the public. This goodwill can become the most valuable asset of the business or organization. Because trademarks are so important, businesses and non-profit organizations should carefully consider which trademarks to use and adequately protect those marks. Continue reading “Understanding Trademarks”

Estate Loses Exclusive Rights to Sherlock Holmes Series

Young and old have been captivated by Sir Arthur Conan Doyle’s books and stories detailing the adventures of Sherlock Holmes and his companion, Dr. Watson.[1]After Sir Arthur Conan Doyle’s death in 1930, dozens of authors added to his work, elaborating on previously established stories, creating entirely new ones, or refashioning them into television shows and movies—but not without entering into a licensing agreement with Sir Arthur Conan Doyle’s estate (“Conan Doyle”).[2] Conan Doyle held exclusive rights to Sir Arthur Conan Doyle’s works (collectively called “the Canon”), and any party hoping to use his characters or story elements had to enter into an agreement or risk litigation. Sherlock Holmes enthusiasts eagerly awaited the day when they could use Sir Arthur Conan Doyle’s characters and story elements without involving Conan Doyle. However, Conan Doyle continued to guard its copyrights even after many believed they had entered the public domain.[3] One author believed Conan Doyle was overstepping its bounds and sought a declaratory judgment to resolve the uncertainty. Continue reading “Estate Loses Exclusive Rights to Sherlock Holmes Series”

New Top-Level Domains: Opportunity or Headache?

A recent explosion of new domain names could profoundly change the digital marketing strategies of businesses and organizations. The regulatory body that coordinates domain names is known as the Internet Corporation for Assigned Numbers and Names (ICANN). ICANN has approved hundreds of new generic top-level domain names (gTLDs) that are starting to become available to the public. Some of the more well-known gTLDs that have been used for many years include .com, .org, or .edu. Examples of new gTLDs that have been approved for release are .blog, .business, .charity, .church, .shop, and .software. Continue reading “New Top-Level Domains: Opportunity or Headache?”

Organizations Should Create Appropriate Social Media Policies

The rapid growth in popularity of social media has left many business and nonprofit organizations unprepared to handle issues presented by this new form of communication.   Existing policies may not be adequate to address the novel issues involved.  We advise companies and organizations that use social media to implement social media policies that will address these concerns. Continue reading “Organizations Should Create Appropriate Social Media Policies”

Trademark “Junk Mail” Can Deceive Applicants

Federal trademark applicants should exercise care to protect themselves from purchasing unnecessary or useless trademark-related services.  The addresses of all U.S. trademark applicants are a matter of public record.  Shortly after applying for federal trademark registration most applicants receive unsolicited junk mail, which usually offers “trademark protection” services, domain name registration services, or international trademark registration.  Some of these solicitations offer legitimate services that could be useful to trademark owners.  However, other solicitations are deceptive and are designed to look like they are from the United States Patent and Trademark Office (USPTO).  These solicitations may include logos and terminology that resemble those of the USPTO or other governmental agencies.  In one of the worst examples we have encountered, a piece of junk mail contained the heading “Patent Trademark Register” and claimed to be the “Register of International Patents and Trademarks.”  The junk mail appeared to be an invoice and requested the recipient to pay thousands of dollars in fees within 8 days.  Fortunately, our client sent this piece of junk mail to us and did not pay the amount requested. Continue reading “Trademark “Junk Mail” Can Deceive Applicants”

Look Before You Click: Why You Should Read Open Source Software Licenses

The proliferation of open source software has significantly changed the legal framework of the software development field.  Software developers who use open source software in their products should be aware of these issues and ensure that they comply with the requirements of open source licenses.  Inattention to open source licenses could cause developers to disclose their proprietary source code to the public or expose them to liability for copyright infringement.  Complying with open source licenses has become an important issue because courts will likely enforce the terms of the licenses.  In a landmark case for open source software licenses, the U.S. Court of Appeals for the Federal Circuit held that an open source software license was enforceable.  Jacobsen v. Katzer, 535 F.3d 1373, 1381-2 (Fed. Cir. 2008).  The court further held that violation of an open source license could constitute copyright infringement.  During the early years of open source software licensing, it was unclear if the licenses would be legally enforceable.  The Jacobsen case resolves this doubt.  In response to Jacobsen, software developers should exercise great care in using and complying with open source licenses. Continue reading “Look Before You Click: Why You Should Read Open Source Software Licenses”

Antitrust Concerns in Publishing

The popularity of online retailers threatens the profitability of traditional retailers.  This is because traditional retailers generally have greater overhead than online retailers.  To compensate for this competitive disadvantage, traditional retailers may be pressured to implement measures that assure them of higher profit margins.  Publishing is a good example of an industry that has been profoundly affected by online retailing.  Online retailing has significantly increased the number of competitors in the publishing industry.  Traditional retail channels in the publishing industry consist of book stores and big-box retailers.  Online retailing has created several other channels for consumers to purchase books.  Most publishers sell directly to consumers through their websites.  Publishers also sell wholesale to other online retailers.  Online retailing even enables consumers to be competitors by selling their used books.   The increase in competition presented by online retailing has made it difficult for traditional retailers to remain competitive, as illustrated by the bankruptcy of Borders.  In religious publishing, “brick and mortar” Christian bookstores have almost disappeared. Continue reading “Antitrust Concerns in Publishing”

Protecting Trademark Rights in Foreign Countries

Businesses and non-profit organizations that provide their products or services in at least one foreign country should consider protecting their trademarks in the countries in which they operate.  A U.S. trademark registration will not likely deter others in foreign countries from infringing a trademark if the trademark is not protected in the foreign country.  International law provides several mechanisms to protect trademarks in foreign countries.  Under the Madrid Protocol, a trademark that is registered in a member country may be registered in other member countries by filing one application.  The primary advantage of the Madrid Protocol is that it eliminates the need to retain counsel in the foreign countries, which can save time and costs.  A disadvantage is the limited geographic scope of the Madrid Protocol.  For example, other than the United States, only one other country in North and South America is a member of the Madrid Protocol. Continue reading “Protecting Trademark Rights in Foreign Countries”

Sales Tax Liability and Voluntary Disclosures

It is a common misconception that online sales are not subject to state sales taxes.  However, states may impose sales taxes on any sale, online or traditional, if the seller has nexus with the state.  Nexus can be a difficult legal doctrine to apply, so sellers should obtain a legal opinion to determine if they are subject to a state’s sales taxes.  Nexus usually entails a physical presence in the state, which can be as insignificant as sending independent sales representatives to the state. Continue reading “Sales Tax Liability and Voluntary Disclosures”

Liability Protections for online service providers under the DMCA and CDA

The Digital Millennium Copyright Act (DMCA) and the Communications Decency Act (CDA) provide significant liability protections for those who host interactive online media.  The cumulative protections provided by these two acts can potentially eliminate liability for copyright infringement and defamation. Continue reading “Liability Protections for online service providers under the DMCA and CDA”