Intel on when to draw the line on infringement suits
© Cheryl Hodgson 2010 | Posted On June 8, 2010
It is not unusual for companies with famous marks such as “eBay” or “McDonalds” to file trademark infringement suits against competitors, especially when trying to avoid confusion in the marketplace. But the number and nature of suits filed by Intel, the world’s largest semiconductor company, leaves the impression that it is an overprotective bully, without knowledge that “intel” is common shorthand for the word “intelligence.”
Since 2008, Intel has filed infringement and dilution suits against at least 20 other companies (mostly small ones) for using the word “intel” in names and domains, even when there is obviously no similarity in goods or services or any possibility of consumer confusion.
Examples of recent suits include Intel’s infringement case against a jeans company with “intel” in its name and a travel agency by the name of Intellife Travel. Trademarks only cover specific areas of business, and because Intel sells microprocessors, not clothes or travel services, both of these suits were filed without consideration of basic trademark interpretation.
Most recently, Intel sued the operators of Mexico Watch, a political newsletter, for using the domain “LatinIntel.com.” Since Intel and Market Watch are in totally different businesses and even the most careless internet surfer would not confuse the two companies, Mexico Watch’s first motion to dismiss the complaint was granted. Intel filed an amended complaint a few days ago, but since it’s barely different than the first, and since the arguments within the complaint are not consistent with trademark law, it will likely be rejected again.
Intel’s recent string of unreasonable suits is a good lesson for large companies with the money to pay lawyers to bully smaller competitors (and even noncompetitors.) While it’s necessary and vital to protect your brand name from infringement and dilution, it’s also important to know when to draw the line to protect your reputation with the public.
Goodwill is an essential ingredient to the success of any company, and business owners should keep that in mind when deciding whether to file a lawsuit or not. Just because a company like Intel has the manpower and money to go after another company doesn’t always mean it should, especially if it makes them look like a bully, picking on the little guys.
I recently published an article on this subject in the latest edition of World Trademark Review. Apparently, trademark bullying is becoming all the rage with the big guys. Even Intel is now in on the action.
To read more about this topic, check out my article, “When Enforcement Becomes Bullying.”
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Technorati Tags: trademark; registration; Intel; bully; infringement; dilution; Mexican Watch; ebay; McDonalds; lawsuits
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Lesson from Corbis Copyright Registration Procedure: Your photographs may not be protected unless you register your own copyrights
© Cheryl Hodgson 2010 | Posted On May 11, 2010
Photographers who have utilized Corbis’s copyright registration program since the mid-90s may have less copyright protection than they think. A valid copyright registration is required in order bring a legal action for infringement, and a registration prior to infringement is vital for purposes of obtaining statutory damages and attorneys fees. Without registration, the copyright owner is left to pay his or her own legal fees and can only recover actual damages, often measured by the profits made by the infringer. In the case of a photograph, this is an all but impossible burden, and the cost of litigation even a greater hurdle.
In a recent federal court decision out of New York, photographers Marc and David Muench brought a copyright infringement suit for a textbook publisher’s use of their images beyond the scope of the license. The court ruled against the Muenches, saying they didn’t have ground to sue because the images were not properly registered through Corbis’ bulk copyright registration program.
The Muenches, like many other photographers, had an agreement with Corbis granting legal title in selected images “solely for the purpose of copyright registration.” After Corbis registered the images as a compilation in its own name, it would reassign legal title in the individual images to the photographers.
This program, used by hundreds, was thought to be a benefit for photographers because it took care of the copyright registration process for artists and allowed Corbis the right to pursue infringers. The result, however, is that the Corbis collection of photographs are now only valid as a compilation. The problem was that the individual authors of each photograph were not identified as authors in the registration.
This means that the individual photographers whose names were left off when the compilation was registered, do not have valid registration for their individual images in the collection. The result is vulnerability for the hundreds of photographers who have used the registration system through Corbis.
This case emphasizes an important lesson for all photographers and creators: you should register your own images in order to preserve important remedies in the event of infringement! If you have images with Corbis and signed a Corbis Copyright Assignment Affirmation Declaration, or have other photos being licensed through any other site, or on your own, you should immediately start the process of registering the images by contacting the The U.S. Copyright Office today. Get the ball rolling, because without registration, you will face the same situation as the Muenches, with no ground to sue for infringement.
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Copyright, branding questions answered. Artists, check it out.
© Cheryl Hodgson 2010 | Posted On April 9, 2010
By Antonio Marsillo
One of the common questions that artists and bands always ask is, “How can I copyright my music and secure that my band is the only one allowed to use that name?”
How can you ensure that no one else will use your name—your brand?
We hope this interview will give bands a better idea of how to protect their cherished name and brand.
LoudTrax.com:
Before the Internet, this was already a tricky question. Today, this is even more complicated. How can a band secure that they are the only ones using a particular name?
Hodgson:
The two most important actions steps are:
1. Reach an agreement as to who owns the name and document it in writing.
2. Register the name in the name of the partnership or business entity which the group forms, or the individual(s) who are to control the name.
Groups fail to register their name, because they feel they cannot afford it in the early stages. Secondly, they do not have a clear agreement has to who is the owner of the name. Both often cause problems down the road.
A few years ago, the founders of the largest Mexican group in America were jailed in Mexico for two months for attempting to perform in Mexico under their own name. A former associate had registered the name in Mexico before they did, and when they fired him, he had them put in the slammer!
A lead singer and writer of a famous Canadian group from the 60’s cannot perform in the U.S., because a former band member registered the name in the U.S. The former member and owner of the name in the U.S. tours regularly now in casinos, but misleads the public because none of the known original members are in the group. The older group members do not want to spend $100,000 or more to fight to get the name back in the U.S.
LoudTrax.com:
Does having the “.com” mean a band owns that name?
Hodgson:
NO! A domain is an address for a website on the Internet. Unless the name is used for advertising and marketing of specific goods and services, there are no trademark rights created by registering the domain. A domain will not prevent someone else from registering the band name as a federal trademark with the proper government agency, such as the U.S. Trademark Office.
LoudTrax.com:
Do you recommend that artists file their band name as a brand with the trademark bureau?
Hodgson:
Yes, in the U.S., registration is with the U.S. Trademark Office in Washington, D.C. The filing fee is $325 per class, plus legal fees. The classes most relevant to groups are those for recordings, merchandise, and live performance. If cost is a factor, pick one, and choose live performances. In Canada, there is no classification system, so filing the descriptions is a bit easier.
In a case currently pending in Chicago, the indie label registered the group name as its own (after the group had already recorded 5 albums on their own). The group is now distributed by a major label in the U.S.
The indie label registered only for merchandise and recordings, not live performances. The judge issued an injunction allowing the original group to continue to perform, but they cannot sell records or merchandise while the case is pending. I believe the judge is wrong, but until the case is tried, both groups are performing and it is a disaster for their careers.
LoudTrax.com:
When you file in one country, does that mean it is valid around the world? Should bands register their brand in several territories?
Hodgson:
The U.S. recognizes “common law” rights based upon use, but majority of the world does not. The first to file is the owner! Even in the U.S., possession is 9/10 of the law. The territory where the group is based and performs is the most important. If a group goes between two countries such as U.S. and Canada, registering in both can be important.
LoudTrax.com:
This sounds like a lot of work for an indie band to handle. It can also get rather expensive, correct?
Hodgson:
Expensive guitars are sexier and more fun than legal fees when a group is first starting out. However, protecting the band name is like recording the deed to one’s home. While it can seem expensive, think about the consequences of not doing so. Being locked out of an important territory, or having to pay 100 times the registration cost to get back rights taken by a third party, makes it worth every penny.
An expert can do the job fairly easily and some may work with the group on creating affordable options.
LoudTrax.com:
What kind of proof can be helpful in proving that you were in fact the first artist to use a certain band name?
Hodgson:
Advertising for show dates are vital. Keep an archive of early flyers, posters, newspapers, Internet ads for shows, and early invoices for merchandise sales. Albums usually have a clear release date online. It’s amazing how many groups cannot find copies of their recording agreements, or prove much of what they did in the early days, making it difficult to prove rights down the road.
LoudTrax.com:
If you trademark the band name that does not automatically mean you trademark the band’s logo?
Hodgson:
Correct. The logo is separate from the words, even if included. If faced between choosing one over the other, always go for the words alone first. Registration of the words alone provides broader protection.
Registration of a copyright for a logo containing great artistic design elements can be an inexpensive alternative to a second registration for the logo. It is less expensive ($35 in the U.S) and any reproduction would violate copyright in the artwork. It is not a substitute for a trademark registration for the name for goods and services pertaining to bands.
LoudTrax.com:
How about if the band or artist name is your own actual name? Are the rules different?
Hodgson:
The rules are the same. In either case, in order to register, one must follow proper rules of usage in marketing and promotional materials. The name of the individual should be used in connection with the sale and advertising of specific services. Registration of an individual’s name can be very important because of the Internet. Well known authors’ names get plastered on sites, or in domains, as a sort of “implied endorsement.” A new comer tries to sell their product by using the well known individual’s name to drive traffic to their site. Without a registration, this “policing” becomes more difficult and expensive.
LoudTrax.com:
What other tips can you give artists who wish to secure their name?
Hodgson:
Do not underestimate the added psychological value of having a registration in place for either a band or individual.
It is common to see fake ringtone sites with a band’s name, or use of a band or individual’s name as part of an infringing domain. In the case of ringtones, I have seen midi files of popular songs (not the original master), and the publisher ignores it. If the group does not own the master or the song, the only remedy of the group is to assert rights based upon infringement of their name. This is where a registration is invaluable.
In the case of use of the name as part of someone else’s domain, sending a letter with a copy of the registration will often get a cybersquatter to “cough it up” with little or no resistance. When caught with their fingers in the cookie jar, they hand over the cookie.
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Technorati Tags: artist rights, brand management, brand protection, Branding, brands, Copyright, copyright registration, Music Law, police your mark, Registration
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Trademarks as Google Adwords: ECJ rules for Google, but Trademark Owners Still Have Rights
© Cheryl Hodgson 2010 | Posted On March 29, 2010
A recent ruling from the Court of Justice of the European Union (ECJ) underscores the reason for business owners to have a cost efficient monitoring program in place. Competitors are purchasing trademarks as Google AdWords. Google AdWords: Friend or Foe of Trademark Owners. While Google continues to escape liability, competitors purchasing your marks may be told to stop.
As a result of these types of violations, the costs and complexity of policing one’s mark is increasing. I have been developing the Hodgson Law annual subscription trademark monitoring program. For a modest yearly fee, our team and chosen technology partners will review monitoring reports which you choose and receive. Each subscription includes up to six infringement letters per year and a flat rate for additional cease and desist letters. Subscribers also receive a complimentary copy of our Guide to Building and Protecting Your Brand Online, and free enrollment in upcoming telecasts to guide you through the process. We will be sending you details on how to sign up in the near future.
The ECJ found that Google is not infringing trademarks when it sells trademark terms as keywords. World Trademark Review Reports. This is consistent with Google’s longstanding U.S. policy on the subject. Though Google has been sued many times, nearly every U.S. case has settled, largely because Google outspends its opponents. Competitors’ purchase of trademarks as ad words is still objectionable by trademark owners. Despite the ruling, Google may be called upon to formulate a policy to investigate and respond to complaints from trademark owners.
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Technorati Tags: Advertising, brand protection, police your mark, trademark infringement
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yogitoes–Setting the Standard for Organic Brands
© Cheryl Hodgson 2010 | Posted On March 1, 2010
The word organic has been popping up all over the place lately. Do a search and you will find organic food, organic wine, organic beauty products, organic textiles… you get the picture. Organic implies a more natural way of approaching what we consume. Let’s face it… these days organic is big business… but can business be organic?
I work for a company that I refer to as an organic entity. yogitoes® (branded with a lowercase “y”) is a creative company that develops yoga accessories, it’s main product being the SKIDLESS® yoga towel. From inception, the yogitoes story has unfolded as organically as a flower in a backyard compost garden. Everything from the manifestation of the company name, logo and products, even the way employees have come to work at yogitoes has been of an organic nature. Owner, creator and yogini Susan Nichols, has allowed the company to evolve in this way, trusting that the yoga community would dictate whether or not there was a need for her products and from there, what shape her company would take.
It happened to turn out that there was a tremendous need for the products she created as she found the company quickly grew to where it is today; an internationally recognized brand. Along the way, there have been many opportunities to practice what she promotes – yoga. I am referring to the side of yoga that gets less attention – the philosophy that it rests upon. Practicing the yamas and niyamas, which are often referred to as ‘the ten commandments’ of yoga, becomes much more challenging in the business world, whether it be dealing with patent infringements or difficult business interactions. Susan has shown that it is possible to remain true to these principles, trust the unfolding, and be successful.
Another part of yogitoes’ organic existence is the fact that it is a non-advertising company. This presents the opportunity to think outside of the box regarding product promotion. When the company started in 2004, the world didn’t revolve around social media; yogitoes’ product promotion was done mainly through word of mouth. Today, staying true to the only business plan it has – organic growth, yogitoes Facebook and Twitter pages exist along with a blog and a YouTube channel featuring respected teachers known as “yogitoes Enthusiasts” using their favorite products. It has proven to be an effective way to gain further exposure for the brand as well as a public platform to answer a wide variety questions regarding the products… essentially working as customer-specific advertisements. yogitoes also involves themselves with many charity events and fundraisers, exposing their product line to new populations and launching new products to devoted fans.
Susan’s unique story and business approach has been much sought after as she frequently gets asked to mentor start-up entrepreneurs… perhaps another business waiting to unfold… organically, of course.
-Alex Ward
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Technorati Tags: brand management, Branding, brands, business management, Intellectual Property, Marketing, trademark, Trademarks
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