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.

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

The Devil Wears Prada: Criminals Involved in Fake Goods Are Often Involved in Human Trafficking

© Cheryl Hodgson 2010 | Posted On February 9, 2010

On January 11, 2010, National Human Trafficking Awareness Month was launched across the U.S.   Human trafficking involves horrible mistreatment of children, with some abuses too difficult to even speak of, much less imagine.  Did you ever wonder who makes those “cheap” GUCCI knockoffs?  Those DKNY items on street corners?  Many of them may well have involved child labor, some of them akin to slavery.

I recently chatted with a friend who is deeply involved in raising awareness of human trafficking through www.intent.com.  I offered to share how intellectual property theft is tied to human trafficking by sophisticated criminals.  My goal is for this piece to forever serve as a reminder to those of us who have been tempted to buy those inexpensive, counterfeit luxury handbags or watches.  We are all aware of the issue, but until more informed, tend to think in terms of the big brand owner who is upset about loss of rights and profits.  “So what’s the big deal?”  Read this, and I hope you will think again before you buy.

I am an Intellectual Property attorney who has worked passionately in the field of trademark and copyright law for many years.  Even I was completely sobered and sickened by a story I heard at a U.S. Trademark Office program here in Santa Monica a few years back.  An American attorney based in Thailand spoke of his law firm’s involvement in verifying fake goods seized by Thai custom officials. This type of cooperation is a rather recent side cooperative effort, resulting more from terrorist concerns since 9/11 than a real concern about protecting luxury goods trademark owners.   Discovery of the fake goods is a rather random event, since custom officials are routinely bribed to “look the other way.”

Imagine a horrible, unsafe, and unsanitary warehouse containing $20 million in state-of- the-art cigarette manufacturing equipment used to make fake cigarettes.  Imagine criminals who have recruited unsuspecting youngsters to travel from China and beyond to “job fairs” seeking a better life.  The innocent girls are sold into sexual slavery, and young men are chained to machines like the one in the cigarette plant, forced to do the work of criminal enterprise.  In this case, a raid of the plant found the owners long gone, tipped off in advance by custom officials in Bangkok.  All that remained were the young male teenagers, chained to the machines to which they were slaves.

A 2004 Time magazine post on the issue of fake bags pointed out the profit motive:

The machines that companies use as legitimate manufacturers are also available to the bad guys," says Timothy Trainer, president of the International AntiCounterfeiting Coalition. The factories disguise the contents of containers with foodstuffs or other consumer products like lingerie. For those brave enough to risk it, it's a spectacular investment, with as much as a 1,000% return--better than drug trafficking. A 40-ft. container filled with fake bags can turn a profit of $2 million to $4 million. And counterfeiters save the roughly 50% of that revenue that luxury houses would invest in innovation and marketing.  Read More:  The Purse-Party Blues

A June 2009 piece by Gary Jones appearing in Time brings home the reality of the enormity of the problem with a view of the Bangkok Museum of Counterfeit goods.

Clemence Gautier, a Bangkok attorney with Tilleke & Gibbins explains:

"People think, 'Oh, it's just a T shirt and it's no real harm,' but we try to explain where the money is going. What if a 10-year-old girl is working every day to make those T shirts?"  Read more: Knock it Off:  A Thai Museum for Counterfeit Goods

The writer’s own shame, like mine, and I hope yours, is inevitable once we acknowledge and understand the why and how such cheap prices come about.  Counterfeit trademark goods involve large scale criminal activity, preying upon the most innocent of humanity to reap billions in profits.  Please share this with others to spread the word.  Together we can make a difference.

Cheryl Hodgson is a member of the Emerging Issues Committee of the International Trademark Association, and past president of the California Copyright Conference.  Cheryl can be reached at www.hodgson-law.com.  She posts regularly at the BRANDAIDE Blog. www.brandaideblog.com.

What’s your copyright worth if it’s not registered prior to someone stealing your work?

© Cheryl Hodgson 2010 | Posted On February 1, 2010

The answer is:  “Not much.”  Visual and graphic artists are particularly vulnerable to unauthorized reproduction of copyrighted images on the Internet.  It’s literally a simple “right click,” “copy,” and “paste.”  Many such infringements go undetected.  Those that are discovered are often let go without remedial action.  Why?  The artist fails to register his or her work with the U.S. Copyright Office prior to the work being stolen.  For years, I’ve been asked:  “Can’t I just mail it to myself?”  In the case of scripts, “Isn’t the Writers Guild enough?”  Then I hear, “I never got around to it.”  My answer is, “Sorry, there’s not much I can do to help you.”

NO, NO and—NO!  There is one place, and one only, to register your works, www.copyright.gov.  Instead of sending in your registration by mail and waiting for years, the Copyright Office has come into the digital age so you can digitally upload the files.  So why wait?

Exactly why is registration so darn important?  While a copyright is valid without registration, the very statement is misleading.  Copyright registration is essential to preserve key remedies for infringement.  Unless registered prior to infringement, attorney’s fees and statutory damages are not available.  It is often difficult, if not impossible, to prove actual damages or profits attributable to theft of a copyrighted work.  For example, if the work is used on a product that doesn’t sell millions of copies, how do you prove your damages?

Congress created two types of damages to recover under copyright law.  In addition to “actual damages,” one can elect statutory damages without proof of out of pocket losses.  This means not only will the infringer have to pay you up to $150,000 per willful act of infringement (the amount is discretionary with the court) they will need to pay your lawyer’s fees.  However, your work must have been registered prior to the theft or these remedies are lost.  Without the threat of having to pay attorney’s fees to the copyright owner, there is little, if any, chance of finding counsel to bring a costly and drawn out infringement action on a speculative basis. 

Legally, you are entitled to obtain an injunction to prevent ongoing or future infringements even if you file the registration after the infringement.  A preliminary injunction in a copyright case can cost six figures and above in legal fees.  Just ask Perfect 10 who spent a fortune in litigation costs against Google for the past five years.  The company was p.o.’d at the search engine for providing thousands of its modeling images as thumbnail versions and for providing links to infringing sites. 

If you don’t register, you won’t be getting any statutory damages or lawyer’s fees from the defendant.  Unless you can finance the case out of your own pocket, this is one lawyer who can’t afford to help you.  Do your selves a big favor—take care of this simple but all important part of your business.  Register your works—someday you may be glad you did!

Ready for Art Licensing 102? Advance On!

© Cheryl Hodgson 2010 | Posted On January 18, 2010

Wednesday January 20, 2010, 5:30-6:30pm PST.
FREE Art Licensing Teleseminar!

IP Attorney Cheryl Hodgson will answer the questions: Hosted by Artist Tara Reed

Back by popular demand!  After the success of her last art licensing teleclass, Cheryl Hodgson will once again be answering artists’ questions during this free teleseminar.  To submit your questions and register, go to www.askcherylhodgson.com.

When you register for the call, you will also receive a free mp3 copy of Cheryl’s July 2009 teleclass as our gift to you!

It’s easy to attend—all you need is a phone!  You can also sign up for a free mp3 audio replay of the call.