Feeds:
Posts
Comments

Posts Tagged ‘IP enforcement’

So it seems the gun world is up in arms (that’s right, I went there) about the fact that the Spearmint Rhino chain of strip clubs has sued gun manufacturer Chiappa Firearms for using a confusingly similar mark on its RHINO 40DS model .357 magnum (Spearmint Rhino Companies Worldwide Inc. v. Chiappa Firearms Ltd et al., 2:11-cv-05682-R–MAN, Central District of California).  I’ve seen no comment from the strip club community.  Apparently they have what they regard as better things to focus on.

Let me mention at the outset that a good friend and eminent member of the Michigan bar tipped me off to this, uh, tussle.  I appreciate it very much because a) it provides a great opportunity to talk about an enduring public misconception about trademark infringement, and b) nothing drives traffic to a blog like the phrase “strip club” in a post title.

The Spearmint Rhino and Chiappa trademarks at issue in the law suit.

Here’s a good photo showing a comparison of the marks, courtesy of this article on the GUNS.COM site.  (I couldn’t help smiling at the phrase “PLENTY of VIDEO” in the title – another savvy web marketer at work.  Touche, my friend.)

I don’t think it’s unreasonable to observe that, aside from the rhinos facing in different directions, the marks actually do look quite similar.  Spearmint Rhino has registered its rhino-outline-in-a-circle mark for “T-shirts and hats; lingerie, namely panties, g-strings, brassieres and corsets for semi-nude and erotic dancers; golf clothing, namely golf shirts, jackets, vests and caps.”  Chiappa has registered its rhino-outline-in-a-circle mark for firearms, but not clothing.

If you clicked over to the GUNS.COM article (and I hope you did), you’ll notice that both the article itself and the reader comments express some surprise and doubt that Spearmint Rhino’s suit has any merit.  I believe the phrase “snowball’s chance in hell” shows up prominently.  This line of thinking can perhaps be summed up as: no one would ever confuse pistols for panties.  Or maybe: how can you mix up guns and G-strings?  Or how about: one holds bullets, the other holds boobs – case closed!  (Sorry.  Traffic, you understand.)

So, would anyone really go out to buy a gun and come home with a G-string instead?  Okay, I’ll grant that one can imagine situations where that might happen.  But would it happen because of confusion caused by the trademarks involved?

The answer to that question is, probably not – but it doesn’t matter.  This is where the enduring public misperception comes into play.  Trademark infringement is not limited to situations where customers are confused into buying one party’s product thinking they’re buying another’s.  This is the important take-away from this article.

People often don’t realize that trademark infringement also exists when the nature of the marks and goods could cause the public to believe there is some connection (such as license, for instance) between the two companies, when in fact that connection doesn’t exist.  Again, not the undies.  This is the important part.

Looked at in that light, maybe Spearmint Rhino’s legal claims don’t seem so ridiculous after all. 

First of all, while the frilly underwear may be more fun to focus on, hopefully you noticed that Spearmint Rhino’s trademark registration also covers T-shirts, hats, golf shirts, jackets, vests and caps.  It’s not unusual at all for makers of outdoor lifestyle products to use their marks on that kind of clothing.

-          The famous GLOCK gun trademark is registered for firearms, but also for “clothing, namely, footwear; headgear, namely, caps, baseball caps, earmuffs, headbands, and headcloths; T-shirts; polo shirts; fleece sweaters; wind-resistant jackets; track suits; neckerchiefs; neckties.”  Perhaps it bears mentioning that T-shirts (at least the white ones) are also a type of underwear?

-          The famous REMINGTON mark is registered for guns, but also for similar clothing goods.

-          Heck, for that matter, the famous HARLEY-DAVIDSON MOTOR CYCLES trademark is registered for motorcycles, but also for hats and caps, and even for “T-Shirts, Tank Tops, Halters, [and] Panties.”

Second, how are these kinds of lifestyle trademarks commonly used on clothing?  By licensing the trademark to another company that’s already in the clothing business.  For some reason, people who spend all day boring out gun barrels don’t want to spend their evenings with straight pins in their mouths, basting seams. 

So, when we strip away (sorry) all the rhetoric, what do we have here?  Two marks that are pretty darn similar in appearance.  One is used on guns, and one is used on a line of products that often have famous gun trademarks on them, via trademark license. 

Could anyone see the Spearmint Rhino mark on, say, a baseball cap and mistakenly believe that the mark was licensed by the gun maker Chiappa?  You can draw your own conclusions, but hopefully I’ve given you a better legal framework to think the matter through.

Read Full Post »

What's in the pocket there, chief? Don't let this employee walk away with your trade secret!

The first post in this series discussed what defines a trade secret.  The second post considered what reasonable steps must be taken to guard the secrecy of your trade secret. 

But what happens if, despite your best efforts, your trade secret is discovered?  This post will focus on some specifics you should know if you are thinking of taking action against the “bad guys.”

What is misappropriation of a trade secret?

If someone learns, uses or discloses your trade secret as a result of improper means, that generally constitutes an unlawful taking or “misappropriation” of that trade secret.  So if you want to take action for misappropriation of a trade secret, you must show that it leaked out as a result of “improper means.”  That in turn raises the question of what constitutes “improper means,” in this context.

In the last post in this series which covered maintaining the confidentiality of your trade secret, we learned that if someone learns a trade secret through theft or “spying,” that can be improper means.  Generally, obtaining a trade secret through bribery or misrepresentation will be considered improper means.  The same can be true (though not always) if the secret leaks out the result of a breach of someone’s duty to maintain secrecy.

One common scenario for claims of trade secret misappropriation is when an employee with access to confidential trade secrets leaves to work for a competitor.  Consider, for instance, a salesman with access to a confidential customer list; a marketing person with knowledge about upcoming advertising and marketing plans; a tech employee with extensive knowledge about upstream research and development activities. When these kinds of employees are hired away by a competitor, it’s only natural to assume that they will use and/or disclose the trade secret in the course of their new employment. 

What is not misappropriation?

You should bear in mind, though, that there are ways a competitor can learn your trade secret that are not regarded as misappropriation.  If someone learns your trade secret as a result of your failure to take reasonable precautions to protect its secrecy, that is not improper means and thus not misappropriation.  Similarly, if someone learns your trade secret by purchasing your product and taking it apart to learn how it works (called “reverse engineering”), that is not improper means either, and thus not misappropriation.

Even if your trade secret has been misappropriated by one party, in some cases others who learn the secret from the original “thief” may not have any liability.  This is particularly true of the second parties engaged in no misconduct in learning the secret. 

The problem of Internet posting

This issue of the “innocent” second party is a real problem if, for example, the thief posts your trade secret on the Internet.  There are interesting cases on this subject from California, Virginia and Colorado courts, involving the Internet posting of alleged trade secret materials of the Church of Scientology. 

In the Church of Scientology cases, the courts found that the original posters may have liability, but those who merely downloaded the posted information committed no misconduct.  The courts went on to find that trade secret protection had been lost through the posting, because the information had become “generally known” and thus no longer secret. 

What remedies can I get through a misappropriation lawsuit?

If you are successful in your trade secret misappropriation lawsuit, you can get a permanent injunction that bars the misappropriating party from use or further disclosure of the trade secret.  You may also be able to obtain a temporary restraining order and preliminary injunction while the lawsuit is pending, to prevent a threatened misappropriation or to prevent use of the trade secret until a judgment is rendered.

You also can seek money damages for your actual injury and/or the defendant’s profits from the use of the trade secret.  In the case of willful misappropriation the court may even double the award and/or award you attorneys’ fees.

Get Legal Advice

My comments here are general in nature, of course.  As I noted earlier in this series, there is no preemptive federal statute on the subject and thus trade secret laws vary from state to state. 

If you suspect misappropriation has occurred, you should work with an attorney with experience in the field of trade secrets.  He or she can look closely at the circumstances with reference to your state’s trade secret statute, to determine whether you may have an action for misappropriation.

Read Full Post »

Having not read this blog post, Smedley and Popoff thought they were about to get rich by stealing a competitor's trade secret.

The first post in this series discussed exactly what defines a trade secret.  In many states any piece of information you possess, which has value to your business because it is unknown to the general public and to your competitors, can potentially be a trade secret.

But in order to qualify for protection for your trade secret, you must also take reasonable steps to guard the secrecy of that information.  This post will examine how that is accomplished.  We also will explore the circumstances under which trade secret protection may be preferable to seeking a patent. 

If I Have A Trade Secret, How Do I Protect It?

By its very definition, a trade secret must remain a secret.  That means that, as noted above, you must take reasonable steps to maintain the actual secrecy of your trade secret. 

What kinds of steps are recommended?  To some extent, it depends on the nature of the secret.  In every case, you should limit access to and disclosures of the trade secret to those with a need to know, requiring your employees and contractors to sign non-disclosure agreements if they may be exposed to a trade secret. 

You also should keep all trade secret materials in a secure place.  In the case of secrets that encompass paperwork, the papers should be locked up and marked “CONFIDENTIAL.”  If your trade secret is a manufacturing technique or process, you should carefully restrict access to/visibility of the production areas where that method is used.

How Far Must I Go To Maintain Secrecy?

To what lengths must you go to protect the secrecy of your trade secret?  Generally speaking, the key word here is reasonableness.  You don’t need to take wildly expensive measures to defeat even the most imaginative forms of industrial espionage.  The courts usually find such spying constitutes trade secret misappropriation.

In duPont v. Christopher, a famous case arising in Texas, a competitor chartered a plane and flew over the plaintiff trade secret owner’s factory while it was under construction.  By taking aerial pictures of the plant in this way, the competitor was able to figure out duPont’s trade secret.  duPont sued, and the court held that the trade secret owner need not have taken the extraordinary precaution of preventing airborne espionage while its factory was built – the competitor’s actions were misappropriation of the trade secret. 

On the other hand, if your measures are effective in avoiding discovery of your trade secret, you won’t have to go to the expense of litigating to protect it.  How extensive your confidentiality measures should be boils down to a judgement call, based on the level of competition your industry. 

Why Not Just Get A Patent?

With all the precautions necessary to maintain a trade secret it is reasonable to ask, “Why not just get a patent instead of bothering with all of that?”  There are at least two good reasons to use trade secret protection instead of seeking a patent, under the right set of circumstances.

First, patents are expensive and difficult to register.  Not everything that might be useful in the competitive arena would qualify for patent protection – in fact, most things would not.

And second, put very simply, patents expire.  A patent provides a window of time during which the patent owner has a complete monopoly over the manufacture and use of the patented invention.  Once the patent expires, the invention falls into the public domain and anyone can make or use that invention.  So a patent is basically a trade-off – you’re trading long-term exclusivity for the absoluteness of the patent monopoly.

Trade secret protection, by contrast, is easier to arrange.  And, if you take the proper precautions, you may be able to exploit your trade secret forever – it has no automatic expiration date, in any event. 

Get Legal Advice

If you think you may have a trade secret and want to protect it, it is a very good idea to consult an attorney with experience in trade secret law.  That attorney can help you set up the appropriate safeguards and precautions in order to maintain the secrecy of your trade secret.

Read Full Post »

Copyright infringement is an elusive concept for some.  The matter is complicated further by some enduring popular myths about what steps can be taken to avoid infringement.

I should point out that my intent here is to discuss “good old-fashioned” copyright infringement – there are exemptions and “safe harbors” against infringement created by things like the Digital Millennium Copyright Act that are beyond the scope of this discussion.  Watch this space for a discussion of the DMCA at some point in the future. 

"DON'T think about 'He's So Fine,' DON'T think about 'He's So Fine,' DON'T think about 'He's So Fine'..."

What Rights Come from Copyright?

Before we can discuss what constitutes copyright infringement, it’s probably a good idea to lay out what specifically are the rights that are granted by the U.S. copyright laws.  Stated briefly, U.S. copyright law provides a copyright owner with a bundle of rights in a work: he/she has the exclusive right to reproduce, distribute, perform, display, or license his or her work, and to authorize others to do any or all of these things.  The copyright owner also has the exclusive right to create or authorize the creation of derivatives of that work.

So, since the copyright owner has the exclusive right to do all of those things (or to permit others to do them), infringement can happen when someone does any of them without the copyright owner’s permission.  From a practical standpoint, however, the majority of copyright infringement suits involve reproduction (as in copying a work) and/or distributing (as in unauthorized copies of the work). 

Substantial Similarity + Access = Copyright Infringement

Courts find copyright infringement when an accused work is “substantially similar” to a preexisting work, as a result of copying by an infringer.  Often it is difficult for a plaintiff to prove actual copying, since there often are no witnesses to the actual act of copying.  In those cases, in order to show copying the plaintiff must be able to demonstrate that the accused party had “access” to the earlier work – in other words, an opportunity to see, hear or otherwise experience the infringed work. 

So a finding of copyright infringement requires both of these elements: substantial similarity and access/copying.  It stands to reason that mere access, without any substantial similarity, is not infringement.  After all, you certainly are exposed to many copyrighted works every day, and you probably create potentially copyrightable works of your own every day – provided none of “yours” are substantially similar to the any of “theirs,” there is no infringement.  They’re just your own works.

Likewise, the defendant’s access to the prior work is a critical element, and without it there will be no infringement.  This means that (at least theoretically) it is possible for two people to create identical works without infringement.  For example, two photographers could take identical photographs and, if the second photographer created the work solely from his own artistic sense and had never seen the first photographer’s image, there would be no copyright infringement despite the substantial similarity of the works.

There are times when “substantial similarity” is not an issue.  Think, for example, of a case involving the reproduction of a digital image or a recording in digital format.  A digital copy is about as identical as something can get, so in those cases the only real issue is whether the defendant had access to the original work so that copying could occur.

Perhaps a more familiar example would be two songwriters who have written the same melody.  Some may remember that a court found ex-Beatle George Harrison had infringed the copyright in the song “He’s So Fine” with his song “My Sweet Lord.”  The melodies in the two songs are indeed substantially similar, and the court found access based on the fact that that “He’s So Fine” was a popular hit in Britain in 1963, a time when George Harrison was quite active in the music business (in fact, “He’s So Fine” was number 12 on the English charts at a time when a Beatles song was at number 1.)  So, reasoned the court, “Harrison was aware of ‘He’s So Fine.’” 

Don’t Buy Into the “Some Little Change” Myth

One of the most common and enduring popular misunderstandings about copyright infringement goes along these lines:  “As long as I make some little change in the work, I can avoid copyright infringement.”  Some versions of the myth even apply numeric criteria to the formula:  “As long as I don’t use more than X% of the original work, I’m fine.”  The numbers vary according to the version.

These beliefs about how one can avoid committing copyright infringement are completely incorrect and probably result from a misunderstanding of the “substantially similar” requirement.  The courts have developed a number of tests for substantial similarity, but none of them are as simplistic as “Did the defendant make some little change in the original work?” or “Did the defendant use more than X% of the plaintiff’s work?”

In fact, in both of those versions of what we’ll call the “some little change test,” the defendant started with a work owned by another party and sought to create new work free of infringement risk by adding some elements of his/her own creativity.  What the defendant actually has done is to create an unauthorized derivative work – which is in itself another form of copyright infringement.

Read Full Post »

Gwen Stefani isn't going to screw up and step on someone's toes in the rag trade. You, on the other hand, might.

In the preceding post in this series, I mentioned some reasons why it’s a good idea to hire an attorney with experience in trademark law to handle the application to register your band name.  There are other reasons why hiring an attorney for this process is a good idea, though.  For instance, your attorney will have the experience to know whether existing trademarks covering peripheral “merch” goods categories are problematic.

What do I mean by that?  Well, when you put your band name/trademark on goods like clothing, you are wading into an industry not directly related to music or entertainment.  The apparel industry has its own brands and, unless you’re Gwen Stefani, as a musician you may be unaware of another identical or highly similar brand name in that industry. 

Music and fashion tend to track similar trends, attitudes and tastes, however.  Both emphasize youth, rebellion and counterculture style.  This makes it understandable that similar or identical names might arise in both the music and fashion industries.  So, as an example, it would’t be surprising for a band named “RAGE OF ANGELS” to bump into an existing clothing brand also called “RAGE OF ANGELS.”

Is this a problem?  Well, if the brands are identical as in the above example, and if you hope to use and register your band name for clothing, the answer is almost certainly yes.  That’s a relatively easy call for anyone to make.  But what if the names are not identical but merely similar to a greater or lesser extent?  Now it becomes a judgment call.  And this is by far the more common occurrence, by the way.

This is no small issue.  Many bands rely heavily on the money they make from sales of “merch” goods, and tee shirts and other clothing items form a dominant part of those sales.  All the more reason to have an experienced attorney search the name for these goods at the outset, in order to avoid these problems.

An attorney with experience in trademark law is better equipped to make that judgment call.  It probably would be more than worth the cost of a bit of attorney’s time to avoid wasting $275 – $325 in filing fees (for a clothing category), not to mention whatever problems and costs may come with a challenge or opposition by the clothing brand.

You want to focus on rockin’ the joint up, not on cease and desist letters from fashionistas.  Save yourself the headaches and work with an attorney who knows how to spot a potential issue in this arena and can help you avoid problems.

PHOTO COURTESY OF FLICKR USER BRAYAN E., UNDER THIS CREATIVE COMMONS LICENSE.

Read Full Post »

The first post in this series discussed issues related to finding a band name that is available for your use.  Now we can talk about protecting your band’s name against encroachment by other acts.

So now you’ve found a band name that everyone in and out of the band loves, and it has passed the availability searching test I discussed in the previous post.  How do you create and strengthen your rights in the name, so no one else takes it? 

Rehearsing is great guys, but maybe you should take five and get started on that trademark application for THE EEL RIVER BOYZ.

First, you use the name.  You use it in the band’s promotion and performance.  You create the same types of sites you were searching for earlier, using the band name prominently on your website, on a Facebook page, a Myspace page, and so on.

Next, you register your band name.  You register it as a domain name; you register it on the band name databases; you set up a presence on Sonicbids.  And, most importantly, you register your band name as a trademark and service mark for the goods and services you sell under the name.

Trademark Registration

Before starting down the path towards registration of your band name as a trademark, it’s important to understand that trademarks are not registered for all possible goods and services.  Instead, your trademark wil be registered to cover the specific goods and/or services you identify in your application.

So what do you sell, as a band?  Live entertainment services?  Recorded music?  What about the “merch” you’ll sell bearing the band’s name – shirts, hats, posters, stickers, buttons, jewelry, key chains, shot glasses/beer glasses/coffee mugs?  All of the above?  Depending on your budget, you’ll want to cover as many of these goods and services as possible in your trademark application. 

Coverage for Your Application Means USPTO Filing Fees

I mention your budget because the U.S. Patent and Trademark Office charges filing fees when you file a trademark application.  Those USPTO filing fees are based on how many International Classes of goods and services your claimed goods and services fall into.  The International Classification system categorizes all conceivable goods and services into 45 separate Classes – a very general breakout of what falls within each Class can be found HERE.

USPTO filing fees vary depending upon how idiosyncratic your descriptions of the goods and services need to be.  If you are willing to use fairly generic pre-approved wording for the descriptions (and meet other requirements for your application), you can limit your filing fees to $275 for each International Class your goods and services fall into.  If for some reason accurately describing your goods or services requires more customized wording, the USPTO will charge $325 per Class in filing fees.

In my experience, for most bands the most important services to cover in a trademark application (in order of decreasing importance) are: 

Ÿ  Live entertainment services (which fall into International Class 41);

Ÿ  Recorded music in various formats (which falls into International Class 9); 

Ÿ  Clothing bearing the band’s name and/or logo (which falls into International Class 25); and

Ÿ  Printed goods such as posters, stickers and event programs (which fall into International Class 16).

As you can see, filing fees can add up quickly.  Covering just the above four Classes in your application will amount to $1,100 in filing fees charged by the USPTO.  This means that you’ll want to think carefully about what’s most important to cover in light of your band’s finances.  Perhaps your budget only allows for one or two Classes, in which case I would opt for the first one or two categories above. 

Do You Need an Attorney?

If you hire an attorney to file and prosecute your trademark application, that attorney also will charge separate professional fees for those services.  Why go to that expense, you may ask yourself.

Hiring an attorney who is experienced in the practice of trademark law is not an absolute necessity for the registration of your mark with the USPTO.  But an experienced practitioner knows how to prepare an application and deal with the USPTO examiner in a way that helps ensure that the resulting registration will give you with the broadest rights possible.  Is it worth the money?  You bet it is.

File Right Away

The USPTO will accept your application right away, you don’t need to begin using the band name before you file your application as long as you can assert that you have a bona fide intent to use the name.  In fact, it’s best to file sooner rather than later.  Every day that goes by is a day someone else could file an application that blocks your registration.

Read Full Post »

Names are a touchy subject with bands.  Finding a good band name that everyone can agree on, and that is available for your use, is no picnic.  Bands have broken up over lesser issues.  That provides all the more reason to do things the right way when choosing your band name, and to take the steps to keep your name proprietary, once you finally find it. 

After much discussion and consideration, this band settled on the name - wait for it - "Amazing Grace."

Finding a Good Name Is More Difficult Than Ever

It has been widely reported that “all the good band names are taken.”   No less an authority than John Paul Jones (formerly the bassist and keyboardist for Led Zeppelin, now with the supergroup Them Crooked Vultures) has lamented in print, “Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page.”

It used to be easier to find a good band name, assuming you were a local act with no superstar ambitions.  If a name you liked was already being used by another small act in some distant location, there was no problem.  This is because the chances were good that the two bands would never encounter one another, nor one another’s fan base.

You really cannot depend on that kind of coexistence any longer, however.  When virtually every band has a MySpace page, a Facebook page or a website (or all three), it becomes more difficult to argue that such a thing as “separate territories” exists.  Anyone can access those sites from anywhere and be exposed to the band and its music. 

Verily, as the Internet giveth, so the Internet taketh away. 

Search Your Band Name

For this reason, when you are choosing a new band name, it’s important to search the name to ensure no one else is using it in a way that might result in an infringement challenge.  This doesn’t mean it has to be a name that no one else is using for any goods or services – merely that the public won’t mistakenly believe there is some connection between your use and the use anyone else is making.

So, how do you search names?  First, you should be doing your own online checks as you go along with the name consideration process.  Like John Paul Jones, you should be checking potential names through Google, Facebook, MySpace, Sonicbids.com, Pitchfork.com, AllMusic.com, and any other music site you can think of.  There also are dedicated band name databases that are worth checking.

When searching, focus on the key words in your proposed name.  Ignore any differences created by generic buzz words like “the” and “band.”  Are there a number of bands coexisting with the same key word but combining it with other distinctive words?  Calling yourself “The Kiss” isn’t going to keep Gene Simmons from suing you, but “Kiss My Grits” might.

If you find a potentially conflicting band name on any of these sites, investigate further.  Mere difference in types of music is not a good basis to assume it’s safe to go ahead with use of the name, but it may be another story if the other band is defunct.  So is the band still in existence, or did it release one album in 1989 and then disappear?  Or was it last heard from a year ago?  All of these may mean different things in terms of the assessed risk level.

It’s Worth Talking To An Attorney

Once you find a name that passes your own search test, it’s a good idea to share and discuss your results with an attorney experienced in trademark law.  It’s also a very good idea to have him or her conduct a more detailed search that includes registered marks. 

There are many reasons why an attorney search is highly recommended.  Among them is this: your trademark counsel will have a better sense of what’s a problem in non-musical goods and services.  For reasons that will be more apparent in the next installment, that insight can be very important.

PHOTO COURTESY OF FLICKR USER CONNER395, UNDER THIS CREATIVE COMMONS LICENSE.

Read Full Post »

Older Posts »

Follow

Get every new post delivered to your Inbox.