Protecting Your Best Ideas

News You Can Use

Mail Problems at Copyright Office: Due to last year's anthrax scare, the Copyright Office did not accept any mail delivered through the post office for a period of about six months, creating a huge backlog which they have still not remedied. If you are planning on filing any copyright applications, use a commercial mail carrier such as FedEx, UPS, or Airborne Express.

Case to Watch – Eldred v. Ashcroft: On October 9, the Supreme Court heard arguments in the case of Eldred v. Ashcroft, which seeks to overturn the 20-year copyright extension that was enacted by Congress in 1998. Currently, copyright for works published before 1976 lasts for 95 years and no new copyrighted works will enter the public domain until at least the year 2018. If the Supreme Court decides to strike down the law, then the copyright term will go back to the previous 75-year term and all works published between 1923 and 1928 will immediately enter the public domain, including such seminal works as the movie The Jazz Singer, Gershwin's Rhapsody in Blue and the first Mickey Mouse cartoon. More information can be obtained at http://www.eldred.cc.

Court Rules "Skank" is Not Defamatory: In case you were worrying about being sued for calling someone a "skank," the California Supreme Court has said, "It's okay." In the case of Seelig v. Infinity Broadcasting Corp., Jennifer Seelig, one of the losing contestants on the television show Who Wants to Marry a Millionaire, sued San Francisco radio DJ Vincent Crackhorn, as well as the station, for referring to her on the air as a "chicken butt," "local loser" and "big skank." The California Court of Appeals struck down her lawsuit, ruling that the terms mentioned above were simply hyperbole and could not be proven true or false. So, go ahead, call someone a "skank;" you might get punched, but you can't get sued.

How to Conduct Trademark Searches for Free

If your company is planning on putting out a new product or starting a new service, you're going to want to choose a name that is catchy, and stylish, and, most important, isn't already being used by someone else. A trademark search company will charge between $200 and $1000 for each trademark search depending upon how thorough you want them to be. So, before you shell out that money, do your own search. It won't tell you for certain that a name is available, but it will give you a good idea if the name you want is already taken, so you can move on to other choices.

First Step—Patent and Trademark Office
The first place you're going to want to look is naturally the United State Patent and Trademark Office ("PTO"). The PTO has a searchable database of all current and expired trademarks, which is called "TESS" the Trademark Electronic Search System. You can find it on the web at http://tess.uspto.gov. When you get there, put your search term in the box and hit enter. TESS will automatically search both the plural and singular of your search term and give you results for both active registrations ("live") and expired or abandoned registrations ("dead") registrations.

If the search comes back with no results, great. Your term might be clear. But search again, this time using common misspellings. For example, if your proposed trademark is "Forever," then also search "Fourever" and "4ever." Get creative. Remember it doesn't cost any more to do these additional searches, but it will cost you if you choose a trademark that's already taken.

If your search comes back with results, don't panic. That doesn't necessarily mean that the mark is definitely taken. First, look at the "live/dead" indicator on the search results. Are all the matching results "live"? If they are all "dead," you don't have a problem. For those that are live, check and see what goods and services are being offered under those marks. If the goods and services are very different from those that you plan to use, then you may be okay. For example, if you're planning to use the "Forever" trademark on a line of purses, and you find that someone has registered "Forever" for use with plumbing supplies, you shouldn't have a problem because no one is going to confuse the two companies. However, if the prior registration is for women's shoes, then you might have a problem even though the goods aren't identical. That's because the PTO will look to see if the two products are so related that consumers might be confused.

Second Step – The Web
Once your PTO search is done and you're sure that no one is using the mark you've chosen, your next step is to head to the Web. Go to one of the major search engines, such as Google, Altavista, or Dogpile, and enter your term. What do you see? Is the mark already being used? If so, for what purpose? If you get too many results from your search, narrow the search by also including the product or service you want to use (e.g., "Forever Purses").

If you're only planning to use the mark in a limited geographical area (e.g., for a drycleaner), then you will also want to search the Internet phone books at www.switchboard.com or www.bigyellow.com. Put your term in as the business name and search Los Angeles and the surrounding areas. Again, if the name comes up, check to see what product is being offered. You should only have a problem if the products are similar or related.

Remember, even though your search comes up clear, this does not necessarily mean that you can use the mark. A company may be using a spelling that you didn't think of, or maybe it just doesn't have an Internet presence and didn't come up in your search.

But by using these free searches, you might be able to quickly and cheaply determine that a name you want has been taken, and you can move onto another choice.

Help! Someobody Stole my Website

A recent but unfortunate trend I have noticed is of companies blatantly stealing information posted on a website. One company will spend days or weeks, and thousands of dollars in preparing a website, describing its products and services in just the right way and putting it in the perfect arrangement. Then, a competitor comes along, and, with a few clicks of the mouse, takes all of that information and puts it on its own site.

Once the competitor is caught, a letter will usually convince him to remove the stolen material, but what about damages? If the website hasn't been registered for copyright then normally the victim would only be limited to its actual damages, which would be hard to prove and probably not worth the trouble of a lawsuit. Also, the victim couldn't receive any attorney's fees, making most lawsuits prohibitively expensive. However, if the website was previously registered with the copyright office, then the injured party cannot only recover the attorney's fees incurred in prosecuting the case, but can also ask the court for "statutory damages" instead of actual damages.

Statutory damages are a device which allows the court to impose damages based on the nature of the infringement and the culpability of the offending party. The court is granted discretion to impose damages between $750 and $30,000. And, if the court finds that the infringement was committed willfully, then the court can increase the damages in an amount up to $150,000 for each act of infringement.

Consequently, I would certainly recommend that if you have a website which contains protectable material (not just your collection of Jennifer Garner pictures), you register the website for copyright protection. It's neither difficult, nor expensive and can certainly pay off in the long run. If you are constantly making additions to your website, then file registrations for just the updates on a regular basis (quarterly, semi-annually or yearly depending upon how often changes are made.)

The Benefits of Copyright Registration

I am often asked by clients whether their new artistic creation (e.g., script, book, or website), must be registered with the U.S. Copyright Office. While it is true that a creative work is protected by copyright at the moment of creation, copyright registration grants the copyright holder certain benefits which are well worth the $30 registration fee.

First, by registering your work for copyright you now have irrefutable proof of when the work was created. So if someone infringes your copyright and you sue them, they won't be able to claim that their piece was done first.

Second, registration is a prerequisite to filing a lawsuit for copyright infringement. The court will not allow a copyright infringement lawsuit to go forward until they see that the work has been registered. Although you are allowed to file the registration after the infringement has taken place, it normally takes at least six months for the application to be registered with the Copyright office. Or you must pay $580 to expedite the registration. Neither is a very good alternative.

Third, in the event of a lawsuit, you can only recover attorney's fees and statutory damages from the defendant, provided that you registered the work before the infringement took place, or within 90 days of its creation. If you did not register the work for copyright before the infringement or within 90 days of the works creation, then you would only be able to recover actual damages at trial. I can't tell you how many times clients have complained to me that they are being infringed, but they cannot pursue their claim because their actual damages are minimal or are far outweighed by the attorney's fees it would cost to pursue the matter. If they had filed for copyright registration prior to the infringement, the court could award them their attorneys fees as well as statutory damages of up to $150,000 for each act of infringement. This puts the copyright holder in such a strong position that many cases are settled without the need for having to file a lawsuit.

So make it a regular practice to register your creative works for copyright as soon as they are completed. This small investment in time and money will pay you back a hundredfold in the event someone steals your creative work.

You may share, use or forward this newsletter to anyone you wish. All I ask is that you give me appropriate credit and a link to my web site: www.ZernerLaw.com.

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