I have a great idea for a tee-shirt!!!

Tee-Shirt Trademarks

I have a great idea for a tee-shirt – can I register it as a trademark???

Short answer – probably not.  The main issue with whether a slogan or word  operates as trademark is how it is used.   This is especially true of tee-shirts.

If the mark / slogan is just printed on a shirt – no protection – the Trademark Office deems that as being “merely ornamental” (there is an exception when the mark is also used for other products or business name).  However if the mark / slogan is also used to identify the tee-shirt company, it may serve as a trademark and be registered (i.e. it is a “source identifier”) – the only caveat is that you would need to show it being used in that manner rather than just emblazoned on the front.  Showing the mark this way can be done be showing the phrase on things like the name of an online store, packaging, an inside-tag, or a hang-tag.

So “Peanuts for Everyone” emblazoned on the front of a shirt – likely not a trademark.  PEANUTS FOR EVERYONE brand tee shirts, with slogans like “Peanuts for Everyone” on the front – trademark.

With that said, if “Peanuts for Everyone” is included in a design on the shirt; that particular design may have copyright protection, but the phrase by itself is unlikely to retain the protection.


You Own Devices Act proposed

You Own Devices Act

Congressman Blake  (R-TX) recently reintroduced to committee H.R.862, You Own Devices Act (YODA), to amend title 17, United States Code.  If enacted, the bill will provide that the first sale doctrine applies to any computer program that enables a machine or other product to operate.  https://www.govtrack.us/congress/bills/113/hr5586/text  Expect opposition to come from

Copyright Office Releases Comprehensive Music Licensing Study

LOC NewsNet Issue 567
February 5, 2015

Copyright Office Releases Comprehensive Music Licensing Study

The U.S. Copyright Office has released a comprehensive study, “Copyright and the Music Marketplace,” detailing the aging music licensing framework as well as the ever-evolving needs of those who create and invest in music in the twenty-first century. In addition to providing an exhaustive review of the existing system, the report makes a number of recommendations that would bring both clarity and relief to songwriters, artists, publishers, record labels, and digital delivery services.

“Few would dispute that music is culturally essential and economically important to the world we live in,” said Maria A. Pallante, Register of Copyrights, “but the reality is that both music creators and the innovators who support them are increasingly doing business in legal quicksand. As this report makes clear, this state of affairs neither furthers the copyright law nor befits a nation as creative as the United States.”

There is broad consensus across the music industry on a number of key points: (1) creators should be fairly compensated; (2) the licensing process should be more efficient; (3) market participants should have access to authoritative data to identify and license sound recordings and musical works; and (4) payment and usage information should be transparently available to rightsholders. But there is less agreement as to how best to move forward.

The Copyright Office’s recommendations address almost every aspect of the music landscape, including the existing statutory licenses, the role of performing rights organizations, terrestrial performance rights for sound recordings, federal protection for pre-1972 sound recordings, access to music ownership data, and the concerns of songwriters and recording artists. These recommendations present a series of balanced tradeoffs designed to create a more rational music licensing system for all.

The full report and executive summary are available on the Copyright Office’s website at http://copyright.gov/docs/musiclicensingstudy/.

Copyright Office Announces Public Roundtable Discussions for Music Licensing Study

From the United States Copyright Office

NewsNet 542
May 5, 2014

The U.S. Copyright Office will hold a series of public roundtables to gather input for its music licensing study. The roundtables will take place in Nashville, Tennessee on June 4 and 5, 2014, in Los Angeles, California, on June 16 and 17, 2014, and in New York, New York, on June 23 and 24, 2014. The roundtables will offer an opportunity for interested parties to comment on the music licensing issues set forth in the Notice of Inquiry issued by the Office on March 17, 2014. Those seeking to participate in the roundtables should complete and submit the online form. Requests to participate must be received by the Copyright Office by May 20, 2014.

Pied Piper’s Trademark Problems

On a recent episode of HBO’s new show Silicon Valley, the hapless coders find themselves in a bind when they realize that the “placeholder” company name “Pied Piper, Inc.” was already in use by Pied Piper Irrigation, another California company. The problem is that they received a check from a venture capitalist in the name of the Pied Piper Inc. – humorous situations then ensue as the protagonist tries solve the problem – and then, I began ranting at the television to the chagrin of my wife.

Why, you might ask, does this drive me crazy? Not because it is a common and overused plot point, but more notable because it gets both state registration laws and trademark laws completely wrong by muddling the laws of business registrations and trademarks.

Someone already registered my business’ trade name – what do I? A trade name is the name used to identify the business. States have varying restrictions on registration of similar names when forming a new business – primarily, they need to see that the name (along with the designated business form – inc, corporation, limited liability, etc) is not already in use. This means that while an exact match of something like “Pied Piper, Inc.” will not be allowed, other variations might be. So in some states “Pied Piper, Corp”, “Pied Piper Holdings, Inc”, or even “Pied Piper 2, Inc. will likely be acceptable for registration of a different business. Some states even allow it to go as far as “Pied Piper Inc.” vs “Pied Piper Incorporated”. As an example, there is currently an active company registered in California with the name Pied Piper, Inc.” – there is also “The Pied Piper Exterminators, Inc.”, “Pied Piper Players, Inc.”, and “Pied Piper Play Center” – there are also suspended businesses using similar variation on the theme. Simply put, the standard of what variation of name is acceptable is not that high and the problem for the boys in Silicon Valley aren’t real in regard to the business trade name. In the TV show the issue came up because the protagonists had received a check made out in the name they had been using as a placeholder; the reality is that most banks aren’t concerned with minor variations in the corporate name and “Pied Piper IP Holding Company”, will most likely be able to cash a check made out simply to Pied Piper, Inc.

But that other company is using my trademark. On Silicon Valley, the episode moves forward to discover that the company trademark PIED PIPER is the company name of a nearby irrigation company. My response — so what? Trademarks are not simply the name associated with any business, but rather a name associated with specific goods or services. Is there any likelihood that someone buying software using the mystery algorithm that is the core of the tech companies’ product is going to confuse that it originated from the irrigation company services? – not likely. Both companies can simultaneously use the mark PIED PIPER without any concern of trademark infringement, because there is little likelihood of confusion by consumers.

But my trademark has to be the same as my trade name. Nope – not true – while the two are often related, there is no rule that says they have to be the same. The best example for this is Doctor’s Association, Inc. Who is Doctor’s Association? – well you probably know them better by their SUBWAY trademark. What this means is that our newly minted entrepreneurs can register whatever business name they want, and still operate under the trademark PIED PIPER, and there is no need for them to go and purchase the name from the cranky irrigation company owner.

So what is the take away here? – don’t take legal advice from TV sitcoms – then again I hope you already knew that. By the way, it is a funny show.

The Vivian Maier Dilemma

Vivian Maier (February 1, 1926 – April 21, 2009) was a nanny living in Chicago and New York during the 50’s and 60’s.  She was also a photographer whose work involved sizable numbers of photos taken of street scenes.  She was not publicly recognized as an artist until after her death and upon the discovery/purchase of her storage locker which contained over 150,000 unprinted negative, hundreds of rolls of un-developed rolls, along with a few thousand that had  been printed (leaving open the question of what she wanted produced).  Subsequently, the negatives were acquired by a handful of entrepreneurs, and select works are now being exhibited and sold as prints.  What is left out of this story is that she died largely without funds of her own, and that she died without any heirs.   The storage locker was sold because no one paid the storage fees.  So who owns the copyright in these photos?
Vivian died in Illinois a couple of years AFTER the negatives were sold at the storage auction.  In Illinois, like most states, if something of value is left by a decedent it “escheats” to the state.  However, as no one had ever heard of her as an artist before her death and the discovery and posthumous printing of her work, the photos largely fell through the cracks of the courts and state house.


Fast forward to the present and some of the owners of  the negatives  and prints found in that locker are apparently licensing the images under the claim that as the owners of the negatives, they are also the owners the copyright in the works – Appearing on one of their websites is the following:
    All photographs appearing on this website and in the archive of the Maloof Collection are copyrighted and protected under United States and international copyright laws. The photographs may not be reproduced in any form, stored or manipulated without prior written permission from the Maloof Collection.


While some have tried to twist the issue into whether the state should have the rights, in my opinion the issue of whether the state has rights is not really related to the storage locker, but rather to the fact that she died without a will. While it would be sad that she had no relatives to pass ownership to, the ‘escheat’ laws are there to help prevent property from just laying around for the first random person to snatch-up.  The contention that because someone owns the prints and negatives, they also owns the copyright is something of a concern and I think if the state or another reproducer of the negative challenges it, I believe they will lose.  If you remove the fact she has since passed away, I think most artist would be a little pissed if the buyers of their work started making prints. The copyright laws are quite clear that ownership of the physical item is distinct and separate from the intellectual property rights.


Additional Reading:

Authors Guild v. Google

After eight years of a trail and the appeals process, on Nov. 14, 2013, U.S. Court of Appeals Judge, Denny Chin, dismissed a suit by the Author’s Guild against Google for its’ digital scanning project where they began scanning millions of books and making snippets (not full books) available in its search results. His full opinion can be read here. The Author’s Guild has filed an appeal. The Author’s Guild claim is that this scanning alone violates those authors’ copyright. Google’s defense — the one that Judge Chin agreed with — was that it fell within the scope of Fair Use. Chin says in his opinion that, “…Google Books provide significant public benefits.”

Section 107 of Title 17 of the U.S. Code determines the nature of Fair Use. Fair Use allows for the use of copyrighted material for a variety of purposes — education, criticism, research, etc. The most relevant portion of the criterion to be met in this case was subsection 3, which looks at, “…the amount and substantiality of the portion used in relation to the copyrighted work as a whole…” Basically, you can use parts of a work when using it for a specified, and approved, purpose, but you’re not allowed to take all of it or cherry pick the most substantive parts.. Chin believes that the actions of Google with their project fits within this criterion of Section 107.

What does this mean for the average creative? Well, for one, your works, if published, your work could be scanned by Google and be made available, in part, online for Internet users to search. This means that works might soon begin to be more readily available online whether authors want it or not, or at least snippets of their work. It also means that in an age where anonymity is more wide-spread, that your work might also end up misappropriated by someone through similar means. The lines of Fair Use might very well be blurred with this ruling without further clarification of what constitutes a “substantial portion” of a work when a party decides to engage in mass archiving.

Additional Reading:
Why Google’s Fair Use Victory In Google Books Suit Is A Big Deal–And Why It Isn’t

Garcia v. Google, Inc.

Garcia v. Google, Inc.

“While answering a casting call for a low-budget amateur film doesn’t often lead to stardom, it also rarely turns an aspiring actress into the subject of a fatwa.” is the mild understatement of the Appeals court decision in Garcia v. Google, a case rooted in the anti-Islamic “film” that sparked riots in the middle east a few years back. Ms. Garcia was one of the unfortunate soles who was originally hired to act in what seemed like a vanity project of Mark Basseley Youssef. The film project was originally entitled “Desert Warrior” and while it is not clear what it was originally about, what is known is that the footage was reedited and dubbed over with new dialogue. The resulting project was entitled “Innocence of Muslims,” and the reaction to it is thought to have resulted in over 50 deaths.

Following the riots and subsequent calls for her death, Ms. Garcia filed eight DMCA take down notices with Google claiming infringement of her copyright. The trial court ended up denying Ms. Garcia’s request for relief on the basis that it did not believe she had any copyright interest in the film to base her claims on. The Appeals Court however did find that Ms. Garcia she retained some degree of copyright based on her acting and perhaps more notably that her contribution was not a work made for hire, as she was not an employee, nor was there a written work-made-for-hire agreement, but rather was provided to Basseley as an implied license – a license that was exceeded when the performance was severely chopped-up, redubbed, and placed into a new context.

The three take aways from the opinion are the facts that the Court made a great deal about the amateur status of the filmmaker preventing the Court from viewing the relationship between actor and company as one of an employer/employee – this conclusion highlights the importance of getting a written work-for-hire agreement in place especially in more personal and vanity productions. Additionally, the opinion demonstrates that while an implied license may be given much leeway, there is a limit as to how distorted a project can be from the original intent. Finally, citing Stanislavski and Sanford Meisner, the Court noted that an actor’s contribution to a performances not merely a reflection of the written page (Otherwise, “every shmuck . . . is an actor because everyone . . . knows how to read.” Sanford Meisner & Dennis Longwell, Sanford Meisner on Acting 178 (1987).), but is also of sufficient originality to establish authorship.

Top 10 Lists

Trademark top tensI was recently asked by an attorney friend about using the phrase “The Top Ten Reasons…” in relation to a top ten list (á la David Letterman) that she was planning on using in a marketing piece.  This wasn’t a comic work meant to mimic the David Letterman version, but rather a serious piece meant to provide useful information regarding estate planning strategies.  So the question to me was whether she could use the “Top Ten List” format without running afoul of Letterman’s intellectual property.

My response was that there was a very low probability of risk – the term “Top Ten List” is descriptive and therefore not generally protected by trademark unless it has acquired such distinctiveness that the term is pretty much only associated by one source.  While, in certain contexts it is undoubtedly a very famous list, it is hardly the only place in which you can find people putting together lists of things in quantities of 10.

Further, there would need to be a showing that her use was so similar, that consumers were likely to be confused as to the source – i.e. people looking to enjoy a late night comedy show routine, were somehow distracted by her “Top Ten Reasons” and were confused as to the source of the information thinking it came from David Letterman. While it’s always important to make sure that you aren’t infringing other’s IP rights, it’s equally important to not let the use of descriptive terms by others prevent you from describing your own goods and services and sharing what you have with the world.

Sometimes They Don’t Quite Get It.

Courts sometime get the right answer for the wrong reason. In a recent case in the US Tenth Circuit (Enterprise Management Limited, Inc. v. Warrick); the court discussed a diagram of a basic idea which was the basis of the defendant copying a similar diagram to explain the same concepts.    While the end result was correct in this circumstance, the reasoning used falls short.

Where concepts or ideas are being presented there is a general rule that expression and ideas are sometimes merged and therefore the copying is allowed to not allow the copyright owner to weld exclusive rights to the idea.   The Enterprise Management court articulated this by noting:

“In short, the copyright law is not a patent law: it protects the expression of ideas rather than the underlying ideas themselves. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344-45 (1991) (“The most fundamental axiom of copyright law is that no author may copyright his ideas or the facts he narrates.”) (quotations omitted). And, when a work expresses an idea in the only way it can be expressed, courts deny those expressions protection under the “merger doctrine” to avoid giving the author a monopoly over the underlying idea. See Gates Rubber Co. v. Bando Chem. Indus., 9 F.3d 823, 838 (10th Cir. 1993). Conversely, when an idea is capable of many different “modes of expression,” the expression of the idea is eligible for copyright protection. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983).5”

Infringing Diagram

Original Diagram

The court analyzed a fairly basic diagram similar to what we have all seen on countless Power Point slide, comprising a series of rectangles.  Although the original was no longer in use, but a modified version using different shapes, the court held, correctly, that the diagram is protected by copyright.   The real issue in my mind is to what degree that protection extends – with a diagram based on common shapes, typefaces, and general structure the strength of the copyright protection is limited, as the protection is limited by the limited methods in which to express the idea.  The diagrams are virtually identical, excepting for the border around the title page.  While that the court was correct in its’ holding, the court seemed to indicate it would find the same even of the diagram had included a significant deviations to the aesthetic elements, instead basing the similarities on the use of boxes and other common design elements and implying the only acceptable method of circumventing this thin copyright was to use an entirely different diagramming method in affect allowing the copyright holder to lay claim to entire concepts based on the charting tool used.   Using the court’s analysis, parties wishing to lay broad claims to concepts and ideas could circumvent the merger doctrine, by going into any basic diagramming program, entering in the data and allowing the program to kick out different charts.