Name: Nils
LinkedIn: http://br.linkedin.com/in/nilsmontan
Personal Blog: http://www.ipally.com
Bio: I am an American IP Lawyer living and working in Brazil. I have been practicing IP law for 30 years in the areas of copyright and trademarks.
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Legal Ramifications – Trademarks III – How to create strong trademark rights
April 11th, 2010It’s funny, but not all trademarks are created equal.
There are strong marks and there are weak marks and all kinds of marks in between.
When you first use your trademark – for your blog for example – the strongest mark will be something that doesn’t have anything to do with blogging or publishing or the subject of your blog. That is because the audience, your customers, will not associate it with your publishing services.
So, if I am picking a trademark for my blog on law and social media, I might call it FLEETWOOD. That would be a strong mark because it is arbitrary for the subject and no one in the public needs it for their own use.
Think of gasoline for example. If you called your gas, say EXXON, that’s a pretty strong mark because it doesn’t mean anything and the public doesn’t need it. If I sold my gas under the mark PRETTY GOOD GASOLINE, well – you get the picture.
Now you can develop trademark rights to a “descriptive mark,” but it will take time for the public, through use and advertising to come to recognize your descriptive term as a trademark.
As a blogger you might WANT to use a descriptive term as the name of your blog because, in fact, you want your readers to know exactly what it is. For example, for my ning site on social media and the law, I called it LAW AND SOCIAL NETWORKING. Not a strong mark, in fact, a very weak one. But it was more important for me to let people know what I was doing than to claim the title as a trademark.
Later, as I build up rights to the term, I might be able to stop someone from using the exact title as a blog title for their blog – but it will probably take time.
So – when naming your blog, it’s really up to you. Strong or weak, you choose. 
Legal Ramifications – Trademarks II – Creating Rights
March 27th, 2010Last time on Legal Ramifications we talked about the definition of “trademark” as well as trademark rights.
Remember I said that the definition of trademark is any word or symbol that comes to represent the goods or services of a particular source. When you see the Apple logo on any number of products, you know that that product comes from a single company and you know, in general terms, the quality of the goods that have come from this company in the past. Same with Coke, Taco-Bell or Ford. It is this power of association and the propensity for consumers to go back to products they like from the same source that makes up the psychological power of trademarks.
The law around the world protects the owner of a trademark from having his trademark used by another and it also protects the consume from getting a product he didn’t bargain for (You probably wouldn’t be too happy with an Apple computer from Nils for example).
In the United States, rights in trademarks are established by use. Once you start to use a trademark in connection with your goods or services in the United States you are developing rights to the mark. This is true for a blog as well. If you have a good trademark for your blog (and I will talk about the strength of a mark later), as you write your blog and more and more people come to associate it with a single source, you will be building trademark rights in the term.
If your use of the trademark goes across a state line, you are using it in Interstate Commerce and you will be able to apply to register the mark in the United States Patent and Trademark Office in Washington, DC. The registration does not establish rights, but it will give you certain benefits.
Don’t forget, however, that I mentioned last time that trademark rights in countries outside the US are normally created through the registration process and not by mere use.
Next time we move beyond the definition of trademark and creating trademark rights to how to pick and clear a strong trademark.
Legal Ramifications – Trademarks
March 8th, 2010
We have covered a fair amount of ground here on Legal Ramifications over the past few months. We have talked about defamation (libel and slander) and discussed a general overview of intellectual property. We have gone into some great depth about the law of copyright, probably the IP basket that concerns most bloggers.
Today we will start our discussion of the basics of trademark law. Unlike patent and copyright law, trademark law did not orginally grow up as a federal right under the US consititution, but as a common law right of property protected by the courts of the United States. Today, there is a lot of federal and state law covering trademarks in the US, but the fact is that someone can still develop trademark rights without having to register the trademark with the United States Patent and Trademark Office.
The situation is much different outside the United States and in most countries of the world the owner of a trademark will have to register the claim to trademark with the national patent and trademark office. This points out the fundamental fact that trademarks are territorial in nature, that is, the rights to a trademark at common law extend only to the owners trading area. In nations that have national registration systems, the registation will extend to the entire country. Just because you have trademark rights in one country though, does not mean you have any rights in another country.
A trademark is defined as any word, symbol or logo that the public has come to associate with a seller and his or her products or services. The public is included in this definition because, unlike copyright law which just concerns itself with the rights of a private party, the law of trademarks developed in large part to protect the consumer from the confusion that develops when another party starts using a similar trademark to one that the public has associated with another party. Think of what would happen if another company began selling Coke in a red can and you get the picture. Although Coca-Cola would be damaged – millions of people might buy something that they were not bargaining for.
Next time on Legal Ramifications we will discuss how trademark rights are developed and how to protect you trademarks.
Legal Ramifications – Copyright VI – Damages And Other Remedies
February 23rd, 2010This will be the last post on the fundamental basics of Copyright law and will cover what happens when a plaintiff successfully sues a defendant for copyright infringement. The short answer is that the plaintiff will be entitled to damages, real and those imposed by the law and injunctions, orders telling the defendant to stop what they are doing. 
Before we get there. let’s review Copyright in 30 seconds. Copyright is a creature of the state. Every commercial country in the world grants authors and artists the right to prevent others from making copies of their works. Although Copyright law is different in every country, much of it has been harmonized due to the fact that, again, most countries have conformed their laws to the requirements of international treaties. The copyright to the work exists as soon as the work is created, “fixed in a tangile form” and the author does not have to do anything more – except in the USA where the work must be registered with the US Copyright Office in order to bring a law suit in a federal court. You may use parts of a work protected by copyright under the “fair use” defense, particularly if you are using the portion for comment and you aren’t damaging the commericial viability of the work. If, however, you copy the work and can’t but up a good defense, such the fair use defense (there are a couple of others) then you may be liable to the Copyright owner in a law suit.
Whew!
A couple of things. First, if you are accused of copyright infringement, you should consult a lawyer as soon as possible. This post is not legal advice and lawsuits always turn on the specific facts of the case. Second, most cases don’t go to trial, but can be settled quickly by the parties through some form of negotiation.
OK, so what happens if a Copyright is infringed? The owner of the copyright try to get the defendant to stop the infringing use and maybe to pay some money. Then it is up to the defendant to agree or not. If an arrangement can’t be worked out, the plaintiff will ask the court to:
1. issue orders (injunctions) to prevent further violations;
2. award money damages if appropriate to compensate the plaintiff for the losses it suffered; and
3. in some cases, award attorney fees.
In most cases, if we are talking about someone copying a substantial part of your blog, you should be able to get them to stop and remove the offending use simply by sending an email to them and explaining the situation. One of the good things about the Internet and blogging is that material can be removed quickly. The ugly part of it is that is easy to steal stuff and pass it off as your own.
In our next post Legal Ramifications will look at the world of Trademarks.
Legal Ramifications – Copyright V – Infringement!
February 8th, 2010Copyright infringement is a two way street of course. Someone may copy your work – or you may be charged with copying someone else’s work. Either way, the plaintiff, that is the copyright owner is going to have to jump over a few hedges to make the case.
First, in the US only, the plaintiff will have to register the work with the United States Copyright Office in washington, DC see http://www.copyright.gov. Nobody registers blog posts unless you want to pick a fight with someone, but if you create a significant work, you might want to register it.
The registration will act as a form of proof in the United States that you own the copyright in the work. Outside the US you don’t need to register the work, but you will have to prove to a local court’s satifaction that you are the owner and the work has enough originality to be subject to copyright (not originality like a patent, only original to you).
After that, you have to show that the defendant, or the copier, had access to your work. If the person has copied it exactly, 100%, this access is often assumed or inferred. If the copying isn’t an exact duplicate, you will have to prove by facts or circumstances that the defendant had access to your work. This is easier on the Internet where blogs are there for everyone to see (and steal).
Finally, the plaintiff will have to show that the defendant’s work is “substantially similar” to the plaintiff’s work. Again, with an exact copy, this is no problem. But copyright infringement can occur even in cases where much less than the entire work has been taken.
Two methods are used to determine if copyright infringement has occurred: the subtractive method and the totality method.
The subtractive method, also known as the “abstraction/subtraction approach” seeks to analyze what parts of a copyrighted work are protectable and which are not. The unprotected elements are subtracted and the fact finder then determines whether substantial similarities exist in the protectable expression which remains. For instance, if the copyright holder for the musical West Side Story, alleged infringement, the elements of that musical borrowed from Romeo and Juliet would be subtracted before comparing it to the allegedly infringing work because Romeo and Juliet exists in the public domain (remember term of copyright is now life plus 70 years).
The totality method, also known as the “total concept and feel” approach takes the work as a whole with all elements included when determining if a substantial similarity exists. The individual elements of the alleged infringing work may by themselves be substantially different from their corresponding part in the copyrighted work, but nevertheless taken together be a clear misappropriation of copyrightable material.
Modern courts may sometimes use both methods in its analysis of copyright infrinement. Once the court is satisified that copyright infringement has taken place, it will rule for the plaintiff and move onto the damages and remedies phase – which we will discuss next week.
Legal Ramifications – Copyright IV – Ownership and Transfer
January 26th, 2010OK, remember that I told you that your copyright to your work exists as soon as it is in a fixed tangible form – that is, in a form that someone else can read it. Now, who owns that copyright? 
With three important exceptions, a copyright is owned by the person who creates the work – in a blog, that’s you. Under copyright law you are called the “author.”
The three exceptions are:
1. If a work is created by an employee in the course of employment, then the work is called a “work made for hire” and copyright is owned by the employer. Be careful what you write and what you do on your blog during the time you are at work, using your company computer. Could raise some problems.
2. If the work is commissioned (created by an author working as an independent contractor) and the parties sign a written work made for hire agreement and as long as the work falls within one of the statutory categories of commissioned works that can qualify as works made for hire, such as a contribution to a collective work.
3. If the author sells (“assigns”) the copyright to someone else, the purchasing person or business owns the copyright.
Copyright actually encompasses a bundle of separate exclusive rights, all of which can be sold or licensed separately. When all copyright rights are transferred unconditionally, the agreement is generally called an “assignment.” when only some of the rights are transferred, it is known as a “license.” An exclusive license exists when the right being licensed can only be exercised by one party and no one else. If the license allows others to exercise the same rights, is is known as a “non-exclusive” license.
Transfers of copyright should always be in writing for everyone’s protection. The US Copyright Office allows buyers of exclusive and non-exclusive rights to record these interests in the Office. this helps to protect the buyers in case the original copyright owner later decides to transfer the same rights to another party.
The US Copyright Office can be found at http://www.copyright.gov
Legal Ramifications – Copyright III – Fair Use
January 9th, 2010Fair Use is one of those terms that can raise a lot of passion among people. Some people today say that all use should be more or less “fair” and it is unfair for big media companies to try and hassle people. The traditionalists in the crowd say that fair use is merely a small limitation on the rights of copyright owners so that others may use portions of their works for certain purposes. 
This is truly one of the fascinating discussions of our times in IP law – but I am not going there today. Later on we will discuss these issues in some depth. Today, since I don’t want you to be charged with copyright infringement when you think your use is fair, I am going to give you the black letter traditionalist view of the law of fair use. Fair enough?
Some uses of a copyrighted work, let’s say a novel, are so useful to society, that copyright law as always recognized the concept of fair use. For example, it would be very difficult to review our novel if the reviewer could not copy, or site for the reader in the review, portions of the copyrighted work. Accordingly, a reviewer under the fair use doctrine has that right.
The idea is that what otherwise would be infringement is excused or privileged because the work is being used for a transformative purpose such as research, scholarship, criticism, or journalism. It is important to remember that fair use is an affirmative defense rather than an affirmative right. This means that a particular use only gets established as a fair use if the copyright owner decides to file and lawsuit. Then, it’s up to you as the defendant to say that your use fits into one of the categories that the law will recognize.
When thinking about whether an alleged infringement should be excused on the basis of fair use, a court will use several factors, including the purpose of the use, the character of the use, the amount and substantially of the portion of the work used, and the effect of the use on the market for the copyrighted work.
In our novel example, it will be fair use for me to take portions of the work and refer to them in my review. We want books to be reviewed and my review (even if it is a bad one) will not damage the market for the book in a copyright sense. If I take the entire file of an ebook version of the novel and upload it for thousands of people to read – well, you know, that’s probably not “fair use.”
When blogging, it’s perfectly cool to take some paragraphs from some one’s blog if you are commenting on them and if you attribute the source. Just to copy the blog, or substantial portions of the blog and palm it off as your own may get you into trouble.
Legal Ramifications – Copyright II
January 5th, 2010A creative work is protected by copyright from the moment the work assumes a tangible form – which in copyright circles means as soon as the work is “fixed in a tangible means of expression.” You don’t have to put a notice on the work – or register it with the US Copyright Office in Washington to get protection – although there are some benefits to doing these things if you are creating a major work.
So, as soon as I post this article to “The Bloggers’ Bulletin” the copyright to the work is done and I, as the author, have the right to stop others from copying my work.
If another blogger copies my work and posts it to his blog as his own, he or she would be liable to me for copyright infringement.
If I want statutory damages in the US (damages set by a statute rather than what I can prove I lost), I need to prove that the infringer knew what he was doing, that is, that this was not an “innocent” infringement. This is easier to prove if I use the standard copyright notice. The usual notice is (c) year of publication, author, or, in this case (c) 2010 Nils Montan.
If I want to sue the infringer in the US, I have to register my work with the US Copyright Office. The Office has a very helpful website with a lot of information plus the forms you will need to register your work at http://www.copyright.gov.
Unless you are creating the work for an employer within the course and scope of your employment, or unless you have been commissioned to create the work under contract, or unless you assign the work, you, as the author of the work, are the copyright owner and entitled to all the rights under the law of copyright.
Copyright protection around the world are fairly similar due to the Berne Convention, under which member countries must afford copyright protection to authors who are nationals of any member country. The Berne Convention allows US authors to enforce their copyrights in most countries and allows the nationals of those countries to enforce their copyrights in the US.
Legal Ramifications – Copyright Law – I
December 29th, 2009In the last Legal Ramifications, we gave an overview of intellectual property (“IP”) law and said that bloggers will have to contend with two of the three main parts of IP – namely, copyrights and trademarks (patent law will rarely if ever effect a blog).
Let’s take a closer look at copyright law.
Copyright has a long history in law, in Anglo/American law going back at least as far as the Statute of Anne in 1710 in England which first gave the right to stop copying to authors.
When the United States constitution came into effect at the end of that century, the Federal government of the United States was given the right by the constitution to grant authors limited rights in their creations in other to encourage the creation of creative works.
Over the past 200 years or so, the length of time that all us authors has been given in the US has been extended on many occasions from an a term that only ran for 14 years, to a term today that now lasts for the life of the author plus 70 years. Copyright term can be a very complicated issue as it will depend on when the work in question was created and what kind of work it is. For our purposes, however, you can bank on the fact that any work you create today will be subject to your copyright for a term of your life plus 70 years. Seems like a long time, doesn’t it.
Truthfully, most of us could probably do with a shorter term. I mean, do you think about the income of your heirs from your writings perhaps 100 years from now! Probably not. But if you were, say an author like Dan Brown or J.K. Rowling, you might. The truth is, though, that this long copyright term is the result of lobby by media companies like Time Warner and Disney, who wanted to make sure that there films and licensing characters had as long a life as possible. We all benefit from the long term in some sense in that anything any of us create will be protected for a long, long time.
On the other hand, there is an argument that keeping things under copyright for long periods of time prevents others from using them and detracts from the general ability of the public to use pre-existing works to create new works. This term is not an international standard though and there is little chance that it will ever be rolled back. As a matter of public policy, we should probably make sure that it is not lengthened any further.
Any work that is not under copyright is said to be in the public domain (or “PD”). If a work is in the public domain, it is free for anyone to copy and to use to their heart’s content. Works can be dedicated to the public domain when they are created, that is, the author of the work can simply declare that the work is in the public domain and that he, she or it (that’s right, corporations and other entities can own copyrights – more on that later) has no intention of exercising the right to prevent copying.
The other way for works to fall into the public domain is for the copyright term to expire, or, under some of the older copyright laws, for the author of the work do have failed to take some action needed to maintain copyright.
For example, under an old law in the US, the owner was required to use a copyright notice when the work was published. This is no longer true under our newer laws and it is much harder to inject a work into the public domain by accident or through negligence than it used to be.
Next on Legal Ramifications – what kind of works are subject to copyright – and what is this thing called “Fair Use?”
Legal Ramifications – The Basics Of Intellectual Property Law
December 19th, 2009All bloggers should know a little something about Intellectual Property (often called IP) law.
Last time on Legal Ramifications we learned a little about the law of libel and how important it is to be sure about your facts when you write something negative about a person that could effect their business.
Now let’s look at something more positive (although with a possible negative twist). 
Intellectual Property has been around for many hundreds of years. Generally there are three “baskets” of IP – patents, trademarks and copyrights (there is a lot of other stuff – but I will talk about things like trade secrets some other time).
I don’t think that we have to worry too much about patents for bloggers. A patent is the protection that a government gives to an inventor for the creation of a novel and useful invention that can be embodied in an object. Not the kind of thing that will often arise in this space.
Copyrights, however, are created all the time. A copyright is the right of an author to exclude others from copying the expression of his or her work. That’s right, copyright does not protect ideas in the abstract, but only expression of those ideas in some tangible form. Think of a novel, a film or a painting and you have the idea of some of the works that may be protected by copyright.
Trademarks, on the other hand, are words or symbols that have come to be understood by the public as representing the goods or services sold or rendered by a company or individual. Think of Coca-Cola, Ford, or the Apple logo and you are thinking of trademarks.
Next time on Legal Ramifications I will go into the law of Copyright in a little more detail. Both copyrights and trademarks are great things to own and develop. If you use someone else’s IP though, it can mean big trouble (the negative twist).
