by Mike Oliver | May 1, 2013 | Intellectual Property, LegalEase, Uncategorized
The U.S. Patent and Trademark Office (“PTO”) is warning business owners and individuals who own federal trademark registrations to be wary of unsolicited mail and emails that look official but are really are the work of scam artists. Here’s how the scam works. The scammers find your contact and official registration information using the public PTO database and then use it to create official-looking correspondence that appears to be from the PTO.
The official-looking correspondence sometimes requests that fees be paid to maintain the validity of a registration, or that fees be paid for trademark monitoring services. Note, however, that the PTO’s trademark communications are always from, “The United States Patent and Trademark Office” in Alexandria, Virginia, and PTO email is always from the domain, “@uspto.gov”.
Bowie & Jensen’s trademark attorneys can quickly spot a trademark scam and so your safest course is to check with the firm before responding to any PTO or official-looking correspondence, and particularly before paying any fees requested by mail or email. Of course, ignoring correspondence that you believe to be a scam also has its risks because failing to pay maintenance and other legitimate PTO fees puts a registration at risk of being canceled.
For more information contact Mike Oliver or Kimberly Grimsley.
by Mike Oliver | May 1, 2013 | Intellectual Property, LegalEase, Trademarks, Uncategorized
Low barriers to entry in certain businesses breed rapid response and quick-to-market products that capitalize on “in the moment” mania. Often the in-the-moment-mania products derive from long standing famous trademarks owned by aggressive trademark enforcers. Buyers should be beware of these types of aggressive trademark enforcers prior to making costly investments.
Here is a hint. The National Football League is one of them.
An enterprising sports fan who almost a year ago saw an investment opportunity in the term “HarBowl” recently got more than he bargained for when the NFL’s lawyers came knocking.
The term “HarBowl” emerged into popular sports conversation around Thanksgiving of 2011, when brothers John and Jim Harbaugh became the first siblings in NFL history to lead their teams against one another as head coaches. The first “HarBowl” was a media frenzy of a family affair staged on national television during one of the country’s favorite family meals. Older brother John’s Baltimore Ravens won the inaugural “HarBowl”, yet Indiana resident Roy Fox remained interested in the term even after the final whistle had blown.
The two teams would go on to have very successful seasons before each fell a game short of meeting once again in the only scenario possible that year; the Super Bowl. Despite the super rematch of the “HarBowl” not coming to fruition, Fox liked his chances of the possibility enough to invest in filing for a trademark in hopes of eventually profiting from the phrase.
He filed trademarks for “Harbowl” and “Harbaugh Bowl” on February 21, 2012. The marks, filed as intent-to-use, were allowed and published for opposition.
The NFL contacted Fox in August of 2012 stating concern that his recent trademarks could easily be confused with the NFL’s trademark of the term “Super Bowl.” It was reported the NFL encouraged Fox to abandon the marks shortly thereafter, which he did.
According to ESPN, the league refused to provide Fox with any remedy for his investment in the marks when he asked the league to reimburse him for his costs to file for the trademarks. He was also reported to have requested several other simple consolations such as season tickets and an autographed photo of league commissioner Roger Goodell.
Fox reported that instead of honoring his requests, the NFL chose to aggressively shift direction with its efforts and suggested that not only would the league oppose his filings, but they would also seek to have him pay its legal bills. Fox would eventually fold his hand. At least three more similar marks have been filed over the past month. They will likely meet the same fate.
The legal issue is not that Fox necessarily had a losing hand. The issue is that the NFL holds a lot more chips.
Many would argue that the NFL’s claim is not a legally strong one. “HarBowl” is certainly no less confusing to Super Bowl than other trademarked phrases such as “Sugar Bowl” and “Lingerie Bowl” which are also used to describe football games.
In reality, “HarBowl” is probably no less confusing than “cereal bowl” or “toilet bowl.”
Legal professionals who have publicly commented on the case have noted that the odds of a jury agreeing that the two phrases are confusingly similar are relatively poor. However, mere likelihood of confusion is only one aspect of the legal issues – Super Bowl is unquestionably a world famous trademark. Famous trademarks enjoy a much wider berth – even non confusing but tarnishing or blurring acts can dilute a famous trademark.
The NFL basically smoked Fox out of the hole by signaling their intention to be aggressive in pursuit to stop him. The NFL is an organization with essentially unlimited financial resources. Mr. Fox presumably does not have the type of financial capabilities as a multibillion dollar company. As a result, the question became – are the trademarks financially worthwhile to combat a lawsuit that could potentially cost six figures? Fox made the reasonable decision that no amount of revenue the trademarks could yield would justify that investment.
The moral of the story is an important message for anyone who considers pursuing a low barrier to entry business that expects to profit from the fame or notoriety of someone else or someone else’s trademarks, particularly famous trademarks. Legal review and anticipation of probable legal action is part of the going-into-business decision process. At the end of the day, legal costs in high risk activities should be considered as possibly significant line items on a budget just like any other expense. If the potential return of the expense is not equitable to the potential cost, it may not be a wise investment of resources.
For Fox, a few thousand dollars in filing costs for trademarks may have been worth the prospect of making some money off of clothing sales should the Harbaugh brothers inevitably meet in the Super Bowl. However, the cost of defending those trademarks against a force such as the NFL was not worth the legal bills.
For more information on trademark law, contact Mike Oliver or Kimberly Grimsley.
by Mike Oliver | May 1, 2013 | Business Law, Intellectual Property, Internet, Technology and Privacy Law, LegalEase, Uncategorized
FAIR USE FIASCO – BE CAREFUL USING *ANY* IMAGE ONLINE by Mike Oliver
The internet is littered with millions of images – taken by professional and amateur photographers alike, that contain NO identification of the author of the image. In part, this may be because it is not known, and in part it could be that the “meta data” in the image – which if done professionally will typically have the author’s name and the claim of copyright embedded as text inside the file (known as EXIF data) – is stripped off.
A recent decision in the 3rd Circuit (Pennsylvania, New Jersey, Delaware, and the Virgin Islands), Murphy v. Millennium Radio Group, LLC, [https://www.ca3.uscourts.gov/opinarch/102163p.pdf] demonstrates how dangerous it is to post on your website an image that does not contain this “copyright management information.”
In Murphy, a professional photographer took a picture of two radio show shock jocks, partially nude, for a print publication. The photographer maintained copyright. A radio station employee scans the image, posts it on the radio station website, and invites people to “photoshop” the image in a contest. No attribution identifying the photographer is given.
The photographer sues and loses in the trial court – essentially because that court believed the use was a fair use or licensed. The appellate court, however, reverses. It holds that under the Digital Millennium Copyright Act, the “copyright management information” includes identification of the author of the image. Of important note – the DMCA for the purposes of this provisions, has no “fair use” defense – in other words, the copyright management information must always be included.
The take away here is that if you are electronically displaying images in which you are not the author, the EXIF file data – the data that is embedded in the image and can be read by software to see the copyright management information – cannot be stripped off the file. In addition, if you are using stock photography, or manage a stock photo site, the EXIF data must be retained in the image.
For more information, please contact Mike Oliver.
by Mike Oliver | May 1, 2013 | LegalEase, Uncategorized
A familiar question dependably re-emerges at about this time each year.
It essentially asks “can I get in copyright trouble for having a Super Bowl party with a big screen TV?”
This post gives you some ground rules in order to spare everyone from the possibility of being arrested by the copyright police . (Disclaimer: there is no copyright police, but some copyright enforcers are just as aggressive as the pretend police would be if they really existed.)
The short answer is “yes you can host a Super Bowl party” but there are a few rules.
The answer to this question lies in Section 110 of the Copyright law – entitled “Limitations on exclusive rights: exemption of certain performances and displays.” Within that section, there are a number of copyright restrictions related to big screen televisions and projector screens. There are also several exemptions to those restrictions. So essentially, as long as you are watching the game in your private home and are not charging admission, you can have a giant one-bazillion inch television or projector and cram your house full of people like a clown car and not worry about it. Just be sure not to use the outside of your house as the projector screen or otherwise make it visible outside of your home so it does not become a public viewing.
First, as long as you do not charge your guests, viewing the Super Bowl in a private residence is legal, and in fact you are in the clear to request friends bring food and drink in exchange for hosting. Meaning yes, you can charge your buddies beer in order to watch at your house.
In other cases, the law states that TV and digital broadcasts can be displayed in certain cases as long as there is no separate admission charge to view the game, and so long as the TVs device displaying the broadcast does not have “a diagonal screen size greater than 55 inches, and any audio portion of the performance or display is communicated by means of a total of not more than 6 loudspeakers.”
The NFL gained infamy in 2007 when news emerged that it had pressured an Indiana church into scrapping its “Super Bowl bash” (why the NFL has picked on Indianapolis Colts fans in both of our recent articles is unknown but giggled at here in Baltimore). According to an MSNBC article, the league has a long-standing policy to ban “mass out-of-home viewing of the Super Bowl except at sports bars and other businesses that televise sports as part of their everyday operations.” If a group does not fit that description, they must request permission from the NFL.
The NFL stated that the reason is to honor the NFL’s contract with the networks that provide free broadcasts of the game and to protect the Super Bowl trademark. Essentially, they want to make sure that the networks that make bazillions of dollars on Super Bowl Sunday aren’t deprived a few extra ratings from a few extra TV sets in America being left off.
Here is the full breakdown of the particular conditions under which commercial establishments can display the game:
For establishments that are not a food service or drinking establishments, you are ok if you:
(A) have less than 2,000 gross square feet of space (excluding space used for customer parking and for no other purpose), or
(B) if you have 2,000 or more gross square feet of space (excluding space used for customer parking and for no other purpose) and—
– if the performance is by audio means only, the performance is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space; or
– if the performance or display is by audiovisual means, any visual portion of the performance or display is communicated by means of a total of not more than 4 audiovisual devices, of which not more than 1 audiovisual device is located in any 1 room, and no such audiovisual device has a diagonal screen size greater than 55 inches, and any audio portion of the performance or display is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space.
If you are a food service or drinking establishment, you are ok if :
(A) you have less than 3,750 gross square feet of space (excluding space used for customer parking and for no other purpose), or
(B) the establishment in which the communication occurs has 3,750 gross square feet of space or more (excluding space used for customer parking and for no other purpose) and—
– if the performance is by audio means only, the performance is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space; or
– if the performance or display is by audiovisual means, any visual portion of the performance or display is communicated by means of a total of not more than 4 audiovisual devices, of which not more than one audiovisual device is located in any 1 room, and no such audiovisual device has a diagonal screen size greater than 55 inches, and any audio portion of the performance or display is communicated by means of a total of not more than 6 loudspeakers, of which not more than 4 loudspeakers are located in any 1 room or adjoining outdoor space;
For more information, contact Mike Oliver or Kimberly Grimsley.
by Mike Oliver | May 1, 2013 | Intellectual Property, LegalEase, Privacy, Uncategorized
In April 2012, the Federal Trade Commission issued its report entitled “Protecting Consumer Privacy in an Era of Rapid Change.” You can read that here.
The Report, while a comprehensive review of hundreds of undoubtedly conflicting filings by the various extreme factions on privacy issues, ultimately just boils down to the FTC complaining that Congress has still not taken any action to normalize privacy rules. Let’s face it, privacy law is a mess – a hodge podge of state laws, some specific federal laws in the area of financial account, children, protected health information, and education areas, and a morass of case law and regulatory rules – rules that mostly derive from other laws (like the Lanham Act) not really intended to address privacy. For example, many of the actions the FTC has brought to enforce so called privacy, really involve false advertising – a company saying one thing to a consumer, and doing another, or offering some ability to control a privacy setting, and then ignoring the user setting.
The Report sets forth the FTC’s overview of its objectives and scope summarized here:
- does not apply to companies that collect only non-sensitive data from fewer than 5,000 consumers a year, provided they do not share the data with third parties
- “commonly accepted” information collection and use practices for which companies need not provide consumers with choice (product fulfillment, internal operations, fraud prevention, legal compliance and public purpose, and first-party marketing).
- recommended that companies provide consumers with reasonable access to the data the companies maintain about them, proportionate to the sensitivity of the data and the nature of its use.
- respect browser and consumer “do not track” election
- disclose privacy in use of Mobile Applications (also, the major platform providers recently signed an agreement with California, to require all apps on their platforms to link to a privacy policy
- allowing consumers to have access to and to correct information held by so called “data brokers”
- industry self-regulation (“no lip service”)
In terms of the actual principles, they are:
- Companies should incorporate substantive privacy protections into their practices, such as
data security, reasonable collection limits, sound retention and disposal practices, and data accuracy
- Companies should maintain comprehensive data management procedures throughout the life
cycle of their products and services
- Companies should simplify consumer choice (Companies do not need to provide choice before collecting and using consumer data for
practices that are consistent with the context of the transaction or the company’s relationship with the
consumer, or are required or specifically authorized by law)
- For practices requiring choice, companies should offer the choice at a time and in a context
in which the consumer is making a decision about his or her data. Companies should obtain affirmative
express consent before (1) using consumer data in a materially different manner than claimed when the
data was collected; or (2) collecting sensitive data for certain purposes
- Privacy notices should be clearer, shorter, and more standardized to enable better
comprehension and comparison of privacy practices
- Companies should provide reasonable access to the consumer data they maintain; the extent
of access should be proportionate to the sensitivity of the data and the nature of its use
- All stakeholders should expand their efforts to educate consumers about commercial data
privacy practices
From a lawyer for small to medium size businesses, it would be very helpful for some national, pre-emptive legislation that gave a lot of guidance and safe harbors for businesses so that they do not have top worry that they are violating some esoteric rule buried in some regulation, order or arcane state law. Unlikely to happen, though . . .
For more information, contact Mike Oliver.
by Mike Oliver | May 1, 2013 | Intellectual Property, LegalEase, Trademarks, Uncategorized
Section 1125(c)(1) of Title 15 (link here) provides as follows: “Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.”
Current law however also provided that a ownership of a valid registered mark was a complete bar to an action under state law, seeking a similar dilution remedy. 15 USC 1125(c)(6). The law, however, was inartfully worded such that it could be and was read to bar even claims based on federal law.
This “error” in the statute was corrected in 112 HR 6215 (https://docs.house.gov/billsthisweek/20120910/BILLS-112hr6215-SUS.pdf ) by making it clear that ownership of a federal registration is not a bar to an action for dilution under federal law. Though this is a “technical” change, the old law applies prior to the date this law came into effect, and at least one tribunal has read the old law literally, barring a claim for dilution against a federal trademark holder.
For more information, contact Mike Oliver or Kimberly Grimsley.
