Tag: legal pitfalls

Beware of the Legal Pitfalls — Intellectual Property Confusion

When it comes to intellectual property rights, confusion abounds. Between copyright, trademark, service mark, and patents, questions arise as to what rights apply. The purpose of this article is to help shed some light on the differences. Remember, this article is an educational resource only and is not to provide legal advice.

What Is a Trademark or Service Mark and How Do They Differ From Patents and Copyrights?

Registered

A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.

What is a trademark or service mark?

• A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.
• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.

Do trademarks, copyrights, and patents protect the same things?

No. Trademarks, copyrights, and patents protect different types of intellectual property. A trademark (or service mark as the case may be) typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention.

Do they protect the same thing?

Likelihood of Confusion with Other Marks

The United States Patent and Trademark Office (USPTO) examines every application for compliance with federal law and rules. The most common reason to refuse registration is a “likelihood of confusion” between the mark of the applicant and a mark already registered or in a prior-filed pending application owned by another party.

The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source. Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark. That is, generally two identical marks can co-exist, so long as the goods and services are not related.

Each application is decided on its own facts and no simple mechanical test is used to determine whether a likelihood of confusion exists.

Mistakes Do Happen

An author filed a trademark application claiming exclusive rights to the word “cocky” in Romance book titles. Once she obtained the trademark registration she went all out and sent multiple notices requiring authors to change the title of their books. She attempted to block the sale of books by romance writers who used that word in their title. Amazon even complied with her take down request.

Mistakes do happen!

“Cocky” is a popular word in the genre, and it didn’t take long for her registration to be contested, especially when a recipient of one of her demands happened to be an intellectual property attorney and the registration was clearly an error on the part of the USPTO.

The law is explicit — only series titles can be trademarked, NOT book titles, and common words can’t be trademarked unless the word creates an association with a specific source (i.e. an individual author) in the minds of the public. Moreover, the USPTO specified that a trademark owner in a book series title cannot prevent that mark from being used in a single book title. “Only series titles can infringe another series title.”

Next month we’ll take a look at contracts, an area encompassing everyone whether you are traditionally published or self published. What has your experience been?

(c) 2019 Karen Van Den Heuvel Fischer

Writers Beware of the Legal Pitfalls: Defamation, Privacy, and Publicity

A general challenge of publishers (which definitely applies to Indy publishers) originates from the changing boundaries of the laws of publicity, libel, and privacy. Contracts typically contain indemnification clauses protecting the publisher’s interests in this regard.

Mourning Candle

If you publish statements that are false and defamatory, or even private facts that are embarrassing to someone, you can be sued. In this litigious and highly proprietary time, more and more references to individuals (deceased or living) are bringing claims of breach of privacy, defamation, or violation of publicity rights.

These issues primarily face nonfiction publishers, but that doesn’t prevent those publishing fiction to be affected. Let’s take a look at each of these areas.

Please use this article as an educational resource only, it is not meant to provide legal advice.

Defamation

Scorned or Ridiculed

Generally “defamation” is a false statement of fact
about a living individual (though in certain jurisdictions it may apply to deceased individuals and, periodically, to corporate entities) that holds the person up to scorn or ridicule. Note that the law allows more leeway when discussing public figures.

Privacy Rights

An individuals’ privacy rights is a related issue. Typically, this area is more of a challenge to magazine and newspaper publishers because of the nature of the fast paced reporting which may cause the re lease of facts that should not be made public, including financial, medical, or other highly personal information.

Fast Paced Reporting

The reality is that all publishers of nonfiction must be wary of disclosing personal information of a sensitive or embarrassing nature. (And this is in the United States, where the rules are relatively liberal; beware of disclosing personal information about foreigners or about Americans in works published outside the United States.) Where any such information is about to be published, consult with your lawyers to be sure you aren’t at risk of violating a criminal or civil statute here or abroad.

Publicity Rights

Mona Lisa

Publicity is closely related to the right of privacy. (This is technically a subset of the “right of privacy” which, in legal terms, incorporates four related rights: publicity, intrusion, privacy, and false light.) Generally, the right of publicity prevents the commercial exploitation of the value of an individual’s likeness and name. Not only are celebrities protected by this right, but it protects others whose appearances and names have real commercial value. It also prevents the use of anyone’s likeness or name in trade or advertising without their permission.

Karen Van Den Heuvel Fischer

Are you with a traditional publisher or are you Indy? If you’re with a traditional publisher, check your contract. If you are an Indy publisher, what steps do you take to protect yourself?

Next month we’ll take a look at negligent publication.

(C) 2018, 2019 Karen Van Den Heuvel Fischer

Writers Beware of the Legal Pitfalls — Copyright Basics Part 2

Writers Beware of the Legal Pitfalls is a multi-part series intended as a general educational resource. The last article was the first of three articles on copyright basics. This article will delve into the Work for Hire exception, transfers of ownership, Fair Use, federal documents, and facts and ideas.

Please use this article as an educational resource only, it is not meant to provide legal advice.

What is the Work for Hire Exception?

When someone creates an original work for someone else, (i.e. an employer or commissioned work), the employer or company, the individual who commissions the work owns the copyright and all the rights and benefits that attach. A work for hire must be agreed to by the creator in writing.

Work for Hire Exception

Transfers of Ownership

You may transfer ownership of your copyright or any portion of it but it must be in writing to be valid unless it’s a non-exclusive license. Transfers of ownership may be recorded with the U.S. Copyright Office.

Ownership of Copyright vs. Material Object in Which It’s Fixed

It’s different. This means that when, for example, an original painting is sold, it’s the sale of a thing, not the copyright, unless the owner of the copyright and the buyer agree specifically in writing that the copyright is sold together with the tangible object.

Fair Use

This is the limitation on the owner’s exclusive rights. It allows a person to use limited portions of a work, including quotes, for purposes of criticism, commentary, scholarly reports and news reporting. Among the factors to determine “fair use” are the character and purpose of the use (i.e., non-profit, non-commercial, and educational uses are more likely to be seen as “fair” as opposed to commercial gain), the nature of the work copyrighted (i.e., the more creative, the less likely it will be viewed “fair”), the amount and substantiality of the “portion” used in relation to the work as a whole, and the effect the use will have upon the potential value of or market for the work.

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Fair Use – Government Documents

Federal Government Docs

Works produced by the U.S. government, any government agency, or person acting in a government capacity are in the public domain. Additionally, the texts of statutes and legal cases from federal or state government are also in the public domain. Note though, that the private contractors working for the government can transfer copyrights to the U.S. government.

Facts & Ideas

You can report the ideas and facts embodied in a web page or in another person’s article. Copyright only protects the expression — the combination of words and structure that expresses the factual information — not the facts themselves.

Next month we’ll address topics particularly interesting to bloggers including the Creative Commons License among other issues. It’ll be the last of the copyright basics before we hit other important topics. By the way, the U.S. Copyright Office has made it particularly easy to copyright your work online. Simply go to www.copyright.gov and follow their step by step instructions.

(C) 2018 Karen Van Den Heuvel

WRITERS BEWARE OF THE LEGAL PITFALLS — COPYRIGHT BASICS Part 1

In my first post, some off the wall lawsuits reminded us of the importance of avoiding legal pitfalls. This week we will address some copyright basics. As a reminder, this series is provided as a general educational resource ONLY. It is NOT legal advice. If you have any legal questions, please see your attorney.

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Copyright Basics

Let’s start with the copyright basics.

The U.S. Constitution (Art. 1, Sec. 8, Clause 8) provides the legal framework for Copyright protection which gives Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Certain exclusive rights are provided to authors over their works to which they may use to their financial advantage. The purpose is to encourage individuals in their pursuit of intellectual and artistic creations

What is copyright?

Copyright is a form of protection provided by the laws of the United States
(Title 17, U. S. Code) to the authors of “original works of authorship,” including:

  • literary,
  • dramatic,
  • musical,
  • artistic,
  • and certain other intellectual works.
  • This protection is available to both published and unpublished works.

What does it protect?

Copyright protects the author’s exclusive right to reproduce and publish her original work, perform, distribute copies, adapt the work, and authorize others to do the same.

What type of works are copyrightable?

“Original works of authorship” that are “fixed in any tangible medium of expression.” As of January 1, 1978, the protection attaches to original works as they are fixed in a tangible form of expression, such as handwriting as it flows from the pen onto the paper, audiotape, computer, typing, or radio. Because ideas or concepts are not fixed in tangible form, they are not copyrightable, but business processes may be subject to patent protection.

Original does not need to be novel to have copyright protection, it just needs to be “independently created,” — not copied. Two authors who do not know of each other could each create works that are identical, and therefore not novel, but both are considered “original” and entitled to copyright protection.

Another required element is creativity which is different from original. Creativity requires that the author intellectually conceived of the work. Most work contains the fairly low level of creativity required. Quality or merit in a literary work is not required for copyright protection.

When a man tried to copyright his fried chicken sandwich, the First Circuit Court of Appeals pointed out that 8 categories of works are protected by federal copyright law

Literary Work
  • Dramatic works, including the music that accompanies it
  • Musical works, including any accompanying words
  • Pictorial, graphic, and sculptural works, Pantomimes and choreographic works
  • Motion pictures and other audiovisual works
  • Architectural works
  • Sound recording

Food recipes were absent from this list and the court rejected the man’s copyright claim outright stating: “A recipe – or any instructions – listing the combination of chicken, lettuce, tomato, cheese, and mayonnaise on a bun to create a sandwich is quite plainly not a copyrightable work.”

Popeye the Sailor, iron, trace minerals, minerals, blood, hemoglobin, anemia, heme iron, nonheme iron, vegetarians, vegetables, absorption, growth, development, animals, meat, RDA, Vitamin C, bone marrow, interference, oxalic acid, tannins, polyphenols, spinach, phytic acid
Fruits & Vegetables

You may not be able to copyright a recipe, but you might be able to trademark its name. So you can recreate the “dish” but can’t take the name. Although you cannot copyright a food dish, or a basic listing of ingredients, a recipe that contains original text may be protected by copyright

Who can make a copyright claim?

The work belongs to the author from the moment it is created in a fixed form. When there is more than one author in a joint work, the authors are co-owners of the copyright unless they made an agreement otherwise. When it comes to a work created by an employee that was commissioned by the author, the employer is considered the author for the purpose of copyright – the Work for Hire exception.

The next article will delve into the Work for Hire exception, transfers of ownership, and fair use among other topics.

(c) 2018 Karen Van Den Heuvel

Writers Beware of the Legal Pitfalls

Unfortunately we live in a very litigious society, which is why it’s important to be made aware of the legal pitfalls. This series will give you a heads up on what to watch for and can also provide an understanding as to why publishers may have certain provisions in their contracts or take a stance with respect to some aspects of the work, for example, whether an author wants to use real places and historical figures.

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The Contract

General Resource

Please note, Writers Beware of the Legal Pitfalls is a series that is intended to be used as a general resource only and is NOT legal advice. You CANNOT rely on it as a substitute for legal counsel from your attorney.

Who Can File A Lawsuit?

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Litigious Society

First of all, anyone can file a lawsuit about anything. Once filed, the defendant has to defend him or herself which can get quite expensive. Although frivolous lawsuits are supposed to be dismissed, that is not necessarily the case.

I’d like to open with a few examples of lawsuits that thankfully were dismissed just to give you some perspective.

 

Off the Wall

A convicted serial killer sued an author for $60 million. Even though the felon was found guilty and waited on death row, he claimed innocence in the 16 murders. His claim was based on the writer’s characterization of him as a serial killer, which he believed was misleading, false, and “defamed his good name.” He also claimed that he would be “shunned by society and unable to find decent employment” once he was able to return to life outside jail. Needless to say, the judge threw out the case in just 46 seconds, but it still cost the writer’s publisher $30,000 in legal fees.

Silence

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Music

Can you be sued for silence? Mike Batt, a musician, was sued for plagiarism after including on his album a silent song. Yes, silence. There were no vocals or music. The late John Cage’s publishers sued this musician for silence claiming it “ripped off Cage’s” album which contained no vocals or music. We don’t know what the outcome is of copyrighting silence because Batt agreed to a six-figure out of court settlement.

The Sleeping Student

When a teacher slammed her palm on the desk of a sleeping student in an effort to wake him up, she was hit with a law suit. Yes, he claimed she damaged his hearing. Really??

Batman

writing, publishing, books, business, time management, writing tips, tips, legal issues, GDPR, trademark, copyright, business law, inspiration, encouragement, writing resource, litigation, litigious society, frivolous lawsuits
Batman

I am not sure how many of you are Batman fans, but did you know there is a city in Turkey with the name Batman? The mayor sued Warner Brothers as well as Christopher Nolan, the Dark Knight director, for using the name Batman without their permission. Did they just realize the existence of this superhero after 70 years or did they want to take advantage of the movie’s billion-dollar income? It’s up to you.

Suing Yourself?

Nothing ceases to amaze me. An inmate sued himself in Chesapeake, VA. He was arrested for breaking & entering as well as grand larceny. He was upset with himself so he decided to sue himself for $5 million dollars for a civil rights offense — his own religious beliefs were violated by himself. Because he didn’t have the $5 million to pay himself, he requested that the state pay. Needless to say, his suit fortunately was thrown out.

There are many more off the wall lawsuits, but the fact is, they are a reality we need to be made aware of. Next month we’ll take a look at copyright basics.

What off the wall lawsuits have you heard of?

(C) 2018 Karen Van Den Heuvel Fischer