Tag Archives: The Daily Record

The Perils of Secondary Liability for Copyright Infringement

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The Perils of Secondary Liability for Copyright InfringementVicarious and contributory liability are terms well-known to every tort lawyer and law student.  They should also be familiar to business owners and managers.

The legal theories of vicarious and contributory liability are well-established in copyright law and are employed to impose liability for another’s direct infringement where a third party, such as a distributor or landlord, contributed to the infringement by encouraging or providing the means to infringe, or where the party had the means to stop the infringement and benefited financially from it.

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Trademarks: Only Use in Commerce Establishes Ownership

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Trademarks can be a business’s most valuable assets. Apple’s mark is estimated to be worth more than $355 billion. The Amazon mark lags behind by a hair at $350 billion.

When the value of a company’s trademark can be so high, it makes good sense to carefully develop, grow and protect marks.

Trademarks can take many forms but first and foremost a mark must serve the purpose of identifying the source of goods in the minds of consumers. Letters, numbers, domain names, abbreviations, nicknames, words, slogans, color, alone or in combination with other colors, and designs can serve as marks.

The configuration of products or packaging, called “trade dress” also can serve as a mark if not functional.  Generic terms (computertraining.com) can never serve as a trademark because they remain available for anyone to use. Marks that are merely descriptive of the goods (Ever Sharp) must acquire secondary meaning, being an association in the consumers’ minds between the goods and their source.

“First come, first served” is the basic rule of acquiring rights in a mark. Ownership of a distinctive mark goes to the first to use it in commerce; ownership of a descriptive mark belongs to the first mark that acquires secondary meaning through use. Continue reading →

Should I Register My Mark? Yes!

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Should I Register My Trademark? YesA pal and I walked across the parking lot at the Maryland State Bar Association conference last month looking for a lunch joint; the topic of our conversation was whether and why copyright and trademark registrations are necessary and beneficial.

My bud correctly pointed out that a trademark acquires common law rights as soon as it is used on goods or services, and a copyright exists as soon as the work is fixed in a tangible medium of expression. The bulb over my head lit up; my June column was born. I offered to buy him an adult beverage, or two, for the idea.

“You’re correct,” I said. “Both copyrights and trademarks exist without registration, but registration of both confers substantial and valuable rights.”

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US Supreme Court Opens Door for Once-barred Copyright Claims

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US Supreme Court Opens Door for Once-barred Copyright ClaimsEarlier this month the U.S. Supreme Court answered the question of when a copyright plaintiff must file an infringement claim or be barred from suing by statute of limitations. The case was Warner Chappell v. Nealy Music, Inc.

The controversy arose because the U.S. Circuit Courts of Appeal were in disagreement whether limitations under 17 U.S.C. Section 507(b) required that suit be filed within three years of the infringing event or whether a plaintiff could sue when it discovered, or should have discovered, the infringement even though beyond the three-year limit for suit. Continue reading →

Your Voice is Your Identity

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In 1992, a jury awarded the singer Tom Waits the equivalent of $6 million in today’s dollars because Frito-Lay used a voice-alike in its Doritos ad and misappropriated his right to publicity. Bette Midler, Shirley Booth, and Bert Lahr also sued advertisers who used their voice-alikes in ads.

The reason for the lawsuits is that a distinctive voice is a recognizable component of a person’s identity, and the use of a person’s identity without consent to sell goods violates their right of publicity. With new technology, there will be many new incidents.

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A Company’s Website and Copyright Issues

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It happens way too often. A website owner or employee innocently downloads to their website a photograph or some other work to illustrate or explain some aspect of the owner’s business. Or, its use may be intended to draw more viewers to the website.

The work may be a news photo, an illustration or an article. Use may be as innocent as finding and downloading a photo of the city’s skyline just to emphasize the business is local. One picture, they say, is worth a thousand words.

Then a letter arrives, demanding that a work must be immediately taken down from the website. The letter further demands that the user pay compensation to the owner of the work for unauthorized use, claiming that use on the website is copyright infringement. The compensation demanded may be in low five figures per work infringed, sometimes more. Continue reading →

Trademark Law and ‘Trump Too Small’

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The U.S. Supreme Court recently heard argument in a third trademark case in which a denied registrant sought to overturn a provision of the Lanham Act on First Amendment grounds.

The mark at issue is “Trump Too Small.” First there was Tam in which the court held “The Slants” must be registered for a musical band even if it allegedly disparaged Asian-Americans. Next was Brunetti where the court required the U.S. Patent and Trademark Office to register “Fuct” for a clothing line, a salacious term if ever there was one. The Lanham Act’s bans on registration of salacious and disparaging marks were held to violate First Amendment rights because they were expressive speech. Continue reading →

Taking Aim at Press Freedoms

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Don Blankenship was convicted of conspiracy related to a deadly mine explosion. He was sentenced to one year in prison, a day less than a felony sentence. He served his sentence in a prison where he was the only inmate in for a misdemeanor.

A rich man, Don ran for the U.S. Senate when he got out of prison. Numerous media, in error, reported he was a convicted felon. Blankenship sued the media for defamation claiming his reputation was irreparably damaged. The lower courts dismissed his suit on the basis of New York Times v. Sullivan.

Blankenship petitioned the Supreme Court of the United States to hear his case and toss or modify Sullivan, asserting that Sullivan, “grant[s] the press a license to publish defamatory falsehoods that misinform[s] voters … and incite[s] unrest.” Maybe, but the requirement for that license under Sullivan is strenuous.

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