Law & Business

In this episode, Michelle Carter and I discuss some of the mistakes that bloggers make which result in a lawsuit.  This can include trademark infringement (naming a blog after a registered trademark), copyright infringement (in pictures and music), and defamation.

Anthony Verna:

Hi there. Welcome to the Law & Business Podcast. I’m joined with the lovely, beautiful, smart, intelligent Michelle Carter. How you doing?

Michelle Carter:

I am great. Thanks for having me again.

Anthony:

Anytime. I’m going to let you kick it off cause this topic was kind of your idea wasn’t it?

Michelle Carter:

Indeed it was. I think today we’re going to be talking about the five things as a blogger that can get you sued.

Anthony:

And I’m sure there’s more than five now that I think about it, but we’ve got five in mind though.

Michelle:

You’re the attorney so you would know better than I, but, I think that we have both found that there are five common mistakes that bloggers make that will tend to get them in hot water if not right away then in time because eventually they will find you and catch up with you.

Anthony:

We’ll go with that.

I’ll say this is a caveat to the show topic is that we’re giving five tips or five things to be wary of, but ultimately there’s always more than that. And these are five main ideas and five main thoughts. But, but anybody out there who has a blog in order to make money in order to advertise in order to keep business going, there’s just more than these five.

Michelle:

Fair enough. So number one on our list of five things that can get you sued as a blogger is naming your blog after another business.

Anthony:

Some examples that come to mind are IkeaHacker.

Michelle:

I can answer you Forever 21.

Anthony:

That’s a good one.

Michelle:

A Kindle Fire Department. One of my favorites of all time is Regretsry.

Anthony:

Right. And Regretsy is not around anymore.

Michelle:

No. April has moved on, but it was a great blog while it lasted. So, so why is it that naming your blog after another business could get you sued?

Anthony:

Well, for a lot of these businesses, obviously the business name is, is a trademark. And let me take a step back because I know not everybody listening has been listening since episode one. But the trademark is a business name, a business, a slogan, a logo that relates back to a business. Usually business people can own trademarks, but it basically identifies the source of goods and services and the quality of those goods and services. So something like Ikea, you think of Swedish furniture there. There you go. Swedish, that’s made in China. Right? Okay. Isn’t it all? But the idea of, of, of more than just Swedish furniture is I would say modular furniture, modern furniture. And what a website like – was it Ikea Hacks, Ikea hackers.net did, and I’m still not sure why you would want to do this, but they basically had their own ways of putting together Ikea furniture so that you could put together your bookshelf as a desk instead.

They had a lot of different projects, like they had one where you could buy an end table and make a guitar out of it. Is this fair use, or, why not? Yeah. Honestly, it may be. It’s, I know I read at least one comment where people said it was cheaper to buy Ikea furniture than it was to go to your local home improvement store and buy wood. So, and it’s already cut. It’s already polished. It’s already finished there. There are a lot of different projects. We certainly can’t fault them for their creativity.

I wouldn’t want to do anything like that, though.

Michelle:

Okay. Your opinions on this website aside the, the fact is it was a very popular website. They had a lot of readers.

Anthony:

Yes, absolutely. And there is delineation here as to why Ikea decided to stay away from a lawsuit. And then they went to start the trademark infringement suit because ikeahackers.net started to take in advertising because of course having a website that gets a lot of hits requires server space, requires an expense, especially when you’re storing all of that as well. At the very least, I wanted to cover those expenses if not make money and, and really turn it in, turn it into a business.

And frankly, I think all of us would love to do that with a blog. In this particular case, Ikea took umbrage to the selling of advertising and that’s when Ikea started the trademark infringement suit.

Because prior to that, it was just a hobby of a big a fan, being an aficionado of their thing. But once they started taking an advertising, now it’s a business.

Michelle:

What’s the difference? Exactly. No, really what’s the difference?

Anthony:

Because I want you to think about this because you’re not the lawyer here, but I want you to think about this, if that’s the true delineation then is is using Ikea beforehand acceptable and then, and then once you collect money using Ikea after that is not acceptable. Does that make any sense to you whatsoever?

Michelle:

Well, no. I would assume that if it’s an infringement, it’s an infringement regardless of whether it’s a hobby or a business, it’s just a matter of when, when do you become a big enough fish for Ikea?

Anthony:

It’s to start frying. Yes, exactly. And, I would say that’s exactly the correct answer.  It’s not, that was not a legal issue. That was more of a practical issue. Right. Trademark infringement requires the use of goods and services, I mean, of the nature of the name, logo, whatever that mark is on other goods and services so that consumers are likely to confuse the two. Companies, the two products, the two sets of goods or services. Sure. I’d argue that Ikea is not in the business of selling their products to be used in another manner so that their end tables aren’t meant to be used as a guitar, so that their, bookshelves are not meant to be used as desks or something to that effect. So that really people who are going to Ikea hackers, whether or not Ikea hackers is getting, um, any money from advertising, people really aren’t all that confused. They’re going to Ikea hackers.net for a reason. Sure. And that purpose is to do something else to Ikea furniture. So I’d argue that there really isn’t a likelihood of confusion here for that particular reason.

Michelle:

No. If anything, I would say that it’s something that supports their brand. Like are there, their marketing department should be sad that they didn’t come up with it first.

Anthony:

Well, no business is going to ever think that way.

Michelle:

I disagree. Okay. How many times do you see food products offered with recipes for things that you would never think about cooking with them?

When Heinz Ketchup says: Have you ever thought about using Heinz Ketchup in these four dishes? Or you get Triscuit crackers and they say, use them this way. And by giving me additional ways to use the product, I’m encouraged to buy more, even though if it, that may not necessarily be the thing that I want.

Anthony:

Here’s why it’s not analogous because you’re talking about food. And I can put a Heinz Ketchup on a hotdog, on a hamburger or on ice cream, and I don’t necessarily have to mention that it’s an Oscar Meyer hotdog, that it’s a McDonald’s hamburger or that it’s Bryers ice cream.

Why? Why do that?

For me to be absurd is why. Whereas here, Ikea Hackers is all about going to Ikea, buying something from Ikea, opening it up and putting it together in a way that the directions don’t matter. So from Ikea’s standpoint, the two situations are not necessarily analogous. And that if you’re going to Ikea hackers.net, you’re looking to ultimately deface Ikea products, which of course you’re allowed to do once you have bought it.

Here I’d say ultimately I don’t really think that there is a likelihood is confusion between the two, but that if you’re naming your blog after somebody else’s trademark, it’s going, you’re going to find yourself in some level of hot water, whether it’s just a cease and desist letter or a full blown trademark infringement suit, you’re going to find that there’s going to be an issue.

Michelle:

So it’s, it’s not that they’re, if they were to rename the blog, Swedish furniture hacker and continue to doing business as normal, everything would be fine. It’s just the use of the word Ikea. That’s the problem.

Anthony:

I’m a lawyer, I’m going to be hesitant to use the phrase, everything’s going to be fine. But there are ways to structure that blog there. There are ways to structure that. Yes, exactly. Exactly. And I think that that’s, I think the lesson, although look, let’s start here. I’m fully acknowledging Ikea hackers, Regretsy, WTForever21.com certainly wouldn’t necessarily have the following if it were Swedish furniture hackers. People make terrible stuff and sell it and this fashion is is utterly ridiculous. I get it. I get it completely that having that tie in. But on the same token, that’s really a part of trademark infringement is that your, your piggy, your business is piggybacking off of somebody else’s business. We also have something that we call trademark dilution. And trademark dilution is about famous trademarks. Now. Now, first off, a company’s trademark has to be declared famous bite by a court in order to, to, to be able to claim trademark dilution. But of course, that seems to be –

Michelle:

So, Twitter fame and actual legal fame are two different.

Anthony:

Yeah, fame is fleeting. Fame is very, very fleeting. And fame is even a higher level than: we have a lot of sales. Okay. I was involved in a lawsuit where the plaintiff said, well, we have $300 million in sales and our advertising budget is gigantic. Not all even allowed to say the number, but it was gigantic. I don’t even remember the number, but it was gigantic. So the court said, okay, $300 million of sales a year is highly impressive. Guess what? It’s not famous. Famous trademark has to affect the average consumer in such a way. And in this particular case, I always go with McDonald’s because it’s a very classical Lee, a famous trademark. Everybody understands McDonald’s or the MC portion and what it, what it signifies. So if you’re looking at that writing a blog that specifically targets a company whose trademarks are famous, then you really have another reason not to name your blog after that company. Cause it may be trademark infringement, but it also may be trademark dilution as well. If you’re mark, if your blog, excuse me, is going to harm the value of, of one of those other.

Michelle:

I think that’s how WTForever21.com got in trouble was because a lot of their posts, especially when they were starting out, were showing instances of items from that store that were remarkably similar to items that were being sold in other retailers that are being sold on Etsy. Images that may have been borrowed.

Anthony:

Oh, they were not very kind to that chain when they first started out. And that’s probably how they got on the radar.

Michelle:

Well, I mean, that’s getting on the radar to begin with.

Anthony:

What that blog did is different than the name itself and so we can, we’ll talk a little bit about defamation a little later on, but I would say a lot of the things that, that it was doing was probably claimed to be defamation, which is totally different than thinking about how to name the blog or even how to talk about a company in a blog.

And I will say this: first off in the United States, we have the First Amendment and the First Amendment allows for free speech. And sometimes there’s commercial speech which is less protected than political speech. Certainly this is commercial speech here as well.

And you’re still allowed to opine and discuss facts about another company. So, so you can do that. And then we have in trademark law what’s called nominative views. And you can name a trademark if the only way that you’re going to be talking about it is by naming the trademark. And if you’re a product reviewer, the only thing that you’re going to be able to say is I bought an iPhone. I bought a Samsung Galaxy phone or I’m eating Hershey chocolate or, or whatever it is. You still, the only way that you can do it is by naming the product, right? Therefore, you have to be wary that it’s okay to name products. And then is that the reason why that your business exists? If it is, then you’re going to probably begin to fall over that trademark infringement life.

But, but there is, don’t, don’t get me wrong, it’s a very, very fine line between nominative use and naming your blog or your business after another company. Sure. And, and then what’s your, and then what’s you’re allowed to say in it. We’ll, we’ll talk about that a little later but, but here it’s just about naming it as and, and what to look out for in this particular section. Okay, got it. The other thing that I did want to point out is that, um, there was a card comparison site and let me see if I can find it. That was, um, that was sued as well for showing rates and fees of various different credit cards. And part of the issue was trademark infringement. But I will say this, a lot of bigger businesses are being over protective today.

And if you are a smaller business, if you are a blogger and you’re going to be using companies’ names, I’m not sitting here saying don’t do that because that, that has a chilling effect on speech and we don’t want that. On the same token, be wary that bigger companies are protecting their intellectual property much more than ever before. Those companies are finding where that intellectual property is being used more than ever before and they’re getting better at it every day. Yes. So yeah, you may receive a cease and desist letter if you’re naming other companies in it.  I would say for a lot of bloggers, if you’re going to be talking about other companies, if you’re going to be reviewing products, make sure there’s somebody in your back pocket there who can give you a hand in making sure that your use of other company’s trademarks is within nominative use. And also within the first amendment of the constitution. It makes a lot of sense. I do my best to, to make a lot of sense. Okay.

Michelle:

And that’s why you get paid the big bucks. So let’s go on to number two in the list of, of things that are frequently getting bloggers sued, use of pictures owned by others.

Anthony:

I’ve had clients that have received fun copyright infringement: cease and desist letters. Yes. This isn’t a problem limited to bloggers by any stretch. No. And usually what a lot of people are complaining about these days are our Getty images, meaning that Getty images sends a letter that says you’re using our photograph in your website and here’s the, here’s the use of it in the, in the website, here’s our registration, copyright, registration of it. Here’s how it appears in our stock photo catalog. And here’s the typical licensing rate if pay us this and we’ll go away.  So you basically are turning copyright infringement into a license. And a lot of people are not too thrilled with that. And the fact remains that under copyright law, and this isn’t even the digital Millennium Copyright Act and cause, I’ll talk about that in a bit, but under copyright law, the copyright owner’s the one who’s allowed to make copies to sell copies to publicly perform copies to licensed copies.

And I realize that online it’s really easy to right click save it. And then when you’re posting your own web page to put it on the page I’ll share because those images are free and everything on the Internet. I’m going to try to not be too cynical because I realize that a lot of people are used to the free thing. But the answer to the problem with that, but the problem with that is that right, you can’t just take, and as a content creator, I hope that that a lot of bloggers can put themselves on the other side of that equation as well, that they wouldn’t want their work necessarily taken and put elsewhere without proper payment. Of course. Yeah. And it’s not credit: credit is is nice, but that’s all it is, is credit.

It’s not a license. It’s not a sale. It’s not a purchase. And in these particular cases you’re going to get a cease and desist letter if you’re using somebody else’s image. And the reason why the Digital Millennium Copyright Act doesn’t protect you as the DMCA is meant for others. So that if your website is a user generated website, in other words, the content comes from the users. Think social media, Facebook, Twitter, Pinterest, Instagram, the pictures that are posted. If they violate traditional copyright philosophies such as copyright infringement, then the owner of the website has to receive the cease and desist letter before the owner of the website is sued. Okay. Yes. For Co for basically what, what would be contributory copyright infringement. So in this particular instance, it is the bloggers zone website. A, there’s the bloggers’ own ability to take the picture and put it on there.

And it’s the bloggers own liability. Sure. So the blogger needs to really make sure that a picture that is used is either properly licensed or original, right. And under properly licensing a picture, a lot of stock, um, a lot of stock photograph companies have licenses and you can easily, um, license that particular picture or license a whole group of pictures, right? And you can pay the royalty rate and that’s not really going to be an issue. Or if you need a photograph you could probably work a deal out with, with photographers to create bunches of photos that, um, can work for this particular use. And so it’s not much of an issue to actually create something or get your camera, get your phone camera, go take photos and this way they’re your photographs

Michelle:

And then there’s no question about who owns them.

Anthony:

None whatsoever. So I would say, I would say, yeah, avoid using somebody else’s, um, pictures and always, and always assume that it’s, that, that somebody’s copyright is registered and that if you’re going to use somebody else’s picture, you’ll get a cease and desist letter.

Michelle:

And also be reasonably careful about it as well. I’ve read multiple articles about people that were using Creative Commons images that they got. I’m not realizing that the user had uploaded a copyrighted image.

Anthony:

You know, the other issue with Creative Commons: as the person who is using that image, you’re still responsible for it even though you thought: oh, I’ll never have a problem.

I think people have to pay close attention to the kind of license that they’re, they’re getting.  Some licenses allow you to use an image once and that’s it. Some images allow you to use that image however you’d like forever. Um, some licenses are restricted so you can use it on a blog, but you can’t use it in, say, a magazine. It’s really important for people to pay attention to, to what they’re using.  I’ve also heard it suggested that once you get in an image that you also save a screen cap of the license because it’s not uncommon for a photographer to license an image to a website like stock photography.com or Iphoto or whatever for use and then sell it to someone like Getty five years down the line. And if Getty comes after you, you need to prove that you had that license when you first acquired the photograph.

Anthony:

I think what has to happen to that point is an understanding of the agreement at that point. Because if a photographer has licensed a photograph and then wants to sell his or her entire portfolio or collection to Getty, then if there’s an ongoing business relationship, the licensee needs to know that. And there has to still always be an open level of communication between the licensee and the license or photographer, so if Getty’s then buys the catalog and Getty sends a cease and desist letter, then there’s a level of communication or one that has broken down.

But the point is the blogger alone is responsible. You’re not going to get a letter from  Fotolia saying, “Hey, by the way, we sold that image, you’re no longer licensed.”

You, you alone are responsible for what those on your property.

I would say if you’re the licensee, you should understand who your license or is. And if the license changes hands. You should know that from the very beginning that somebody is selling that picture. You really should.

Michelle:

All right, so let’s go on to the third most common reason. Bloggers manage to get themselves sued and that is pictures using pictures of people without their permission.

Anthony:

This is, from a practical standpoint, this is related to what we were just talking about from a legal standpoint, it’s actually not because we’re now into what we call states state rights of privacy and publicity, but quite often people are using a photograph and a photograph can have other rights as the content of the photograph. So, if there’s a photograph of a company’s trademark, then you have a copyright issue on the photograph itself and you might have a trademark issue on the trademark in the photograph. So in this particular case, you’ll, you may have the copyright issues that we were just talking about, if the photograph is not an photograph or isn’t licensed properly, but now because it’s a person’s image likeness, a sometimes a name, depending on what state you’re in now, the person’s right of privacy or publicity, again, depending on what state you’re in is infringed.

And that’s something a lot of bloggers don’t really think about because for a lot of pictures it’s just, it’s just not thought of like, oh, I can take a picture of somebody down the street. And sometimes that’s okay. Um, sometimes you can take a picture and it’s not okay. That that picture of somebody walking down the street, I think that you have an example of, well I think the, I think the most recent case that fits into people’s memory, it might be Katherine Heigl who sued a, the pharmacy, the New York City pharmacy.

Michelle:

Duane Reade.

Anthony:

Right. Cause Duane Reade – it’s a pharmacy in New York City in North Jersey. And that’s about all, I think.

Michelle:

I heard that at the one in Brooklyn, you can get beer and a manicure or –

Anthony:

Really? You can get a manicure?

Michelle:

It’s a destination.

Anthony:

Now. I didn’t know that cause I don’t get  manicures.

That’s not my thing.

Anyway, you get more manicures than I do, right. Probably I would hope so. So in, in this particular instance, and Katherine Heigl was a pictured coming out of a Dwayne reed and carrying bags – branded Duane Reade bags. And of course, Duane Reade posted a tweet with that. And, and I think what makes that particular case so blatant is that it was Dwayne reed showing a picture of a celebrity that’s not in and who is not paid to endorse a Dwayne Reed. So it’s a blatant advertisement. So that particular instance is very, very blatant on the on use of somebody’s image. Sure. I would say for a lot of bloggers, it’s probably not going to be so blatant.

Now. It might be, and I’ve certainly have seen this, the picture of the blogger who is at a party and at a sponsored party and there were a couple celebrities there. So they take the picture and they put it on. So the question is then: does that create an endorsement of the blog? Is the blog making money? So therefore is, is that the kind of instance that a celebrity would be paid for on the same token for, um, more private citizens?  Is there even a right for anybody to take the picture and use it? So that image and likeness, it always is going to revolve around is this an endorsement? Is this commercial speech? Is this something other than artistic? So, for example, if somebody is walking down the street, I take the picture and then I just sell the picture.

I will tell you in New York that is perfectly acceptable as somebody not having a right to privacy because cause somebody who’s just on the street now you take that picture and you say, Hey, this person’s wearing a X brand baseball cap. Look how great it is. People love it. Now you’re dealing with the commercial speech and the rights of privacy and publicity again being invoked because that’s an endorsement and people are usually paid for that particular endorsement. Sure. So I, I’d say that a lot of bloggers need to be wary about somebody’s image. If there’s one advice we always give to clients is, do you have this person’s permission? Right? Is it, do you have the permission? Is a written, did you pay for it? And, and the real key are one and two.

If you had to pay somebody for their permission, that’s acceptable. But do you have permission and is it written if their people’s images and likenesses appearing get permission. And if it’s something that’s not a part of the stock photography agreement or if it’s something that that’s just doesn’t exist that then it has to be taken off where you have to get permission of those people.

Michelle:

And most stock photography websites will have a line where it will show whether there a model release exists or does not exist. And I would say stay away from the ones where it doesn’t exist cause you just don’t know.

Anthony:

Yeah, I agree completely.

Michelle:

Number four on the list of ways that bloggers managed to get themselves sued use of others’ music. Well, this legal, this is so common.

Anthony:

Yes. This is copyright infringement. So a lot of what we were talking about with photographs works for music and that is – I hate to use the phrase “it’s copyrighted”, but you’ve heard of the phrase before, right?

And it’s music that I, I hate to say and copyright it cause it’s not really the case, but it’s music that is allowed to be in the public domain because the people who wrote it have given away their copyrights. But that’s not quite true either because a lot of people can, can join these uncopyrighted websites.

Stock photos except for music. Exactly. Thank you. We have a recent youtube blogger, her name is Michelle Phan and Michelle Phan was a, excuse me, is a makeup and self-help tutorial blogger. How am I doing?

Michelle:

You’re doing well.

Anthony:

So wonderful. I don’t watch too many makeup tutorials.

Michelle:

She’s pretty popular, I can assure you.

Anthony:

All right. She’s probably not with my particular popularity set.

Michelle:

Male lawyers are not her target demographic.

Anthony:

Yeah. Yeah. Male lawyers with bachelor’s in computer science. Not, I don’t think that’s what she’s telling. Yeah. Yeah. So what did she do? Well, she used songs, I guess his intro and outro music or his background music from, um, a label called ultra and ultra includes a cascade and, um, who, who else is, is included in there? What cascade is one cascade is one guy. If I find a list of others, I’ll let you know. But the issue is that Ms Fan has not, um, licensed any of that. She’s getting advertising revenue through youtube. Of course she’s getting thousands upon thousands of views. She has 74,000 subscribers. That’s really nice. Yes, it’s, yes. Channel 74,000 subscribers.

Michelle:

So you mean to tell me that if I run a business and I create a photo montage and I set that photo montage to a song by Dirks Bentley, I can’t just use that.

Anthony:

No, but

Michelle:

it’s the Internet and the Internet is free.

Anthony:

Okay. Sarcasm, massage, dripping wet, sarcasm aside. Yes. No, you can’t. There has to be a license and I will tell you that. I mean, I mean YouTube has done a very good job at not taking down videos because they’ve worked out with ASCAP and BMI and see suck away to take advertising rep a way to recognize what songs are being used and a way to take those royalties and, and move ’em over. Sure. So on one hand I’m really surprised that this was not what happened.

And another thing that YouTube has started doing is if they recognize if their software recognizes copyrighted music, they will not allow you to upload that video in the first place. I actually had a video where I was using a, an intro that I had hired out to somebody else and that somebody else used copyrighted music in the intro and I wasn’t even able to upload that video. So they’re getting much more savvy.

The video, the ability to tell what music is in the background and transfer royalty money comes from the same exact system by the way. It was Dea5maus and Calvin Harris. Those are the, those are some of the artists.

I would say that in these particular videos, I’m really surprised that this software system didn’t happen. That either it wasn’t blocked for uploading or the, the advertising money just changed hands in order to make it happy.

That didn’t happen.

Michelle:

But she’s also been in business for quite a while. So it could be that these were some of the older videos that were uploaded prior to that technology’s existence. But the point is she was using music that didn’t belong to her and she got caught and now she is being sued. One and a half million. Not going to be easy.

Anthony:

No, it’s not gonna be easy because if there’s no license and the music’s there, I mean, again, we go back to what is copyright infringement?

It’s the unauthorized copy, the unauthorized public performance, the unauthorized sale.

It’s something that’s just not authorized by the copyright holder. And in this particular case, if it’s not there, if that authorization is not, does not exist, then it’s copyright infringement.

Now, we can take a bigger, broader view and we can say in the bigger, broader view, we have examples of YouTube use creating sales. And in that particular instance, I think we can agree that Michelle Phan’s use of the music probably created fans and probably created sales. Sure. We have other examples. There was a time when, Monty Python was going after fans for putting up their skits even though the skits are 50 years old at this point, because that was the 60s. Sure.

Monty Python DVD sales went through the roof once they stopped doing that. So we have, we have some examples.

I know I have a third one sitting right here in my notes…

Oh, Disney! Disney and “Frozen” has not beaten up everybody who is doing covers of “Let it Go.”

Michelle:

I can understand that.

Anthony:

Yes. But they can. The point is Disney has kind of let this go as an example. This I can’t believe, can’t believe I did that. I cannot believe I just did that. But anyway, that was totally accidental. But what they have decided to do is not, not necessarily enforce every instance of it as a way to let that song continue to multiply and the idea thinking that every parody, every cover version out there, one, the, the Google Youtube software can handle any advertising monies that go back to them. And two, it helps drive sales of course. Now the beautiful, the beautiful thing about copyright law is that as an owner, you don’t necessarily have to enforce it. Although if you have to enforce it against somebody and you haven’t been enforcing it, there might be an issue down the road of damages because if it wasn’t worth anything to you before, what’s it worth to you now? So that might be an issue down the road. But ultimately letting the copyright multiply and have the parodies and have the appearances and other videos on youtube, that’s a choice by the copyright owner. The copyright owner still has the right to shut it down, of course.

Michelle:

So the important thing to keep in mind is really just to, to be careful and avoid these dangerous areas of you can because you and I are not part of Ikea’s marketing department or Coca-Cola’s marketing department and it is not up to us to decide to decide if what we are doing is helping them sell their product.

Anthony:

There’s a part of, of me that I know that a lot of people don’t necessarily like, which is being a lawyer. I’m conservative on these particular issues and there is a reason for that because I don’t like seeing my clients get sued.

Michelle:

It is much easier to not get sued than it is to defend a lawsuit.

Anthony:

I’ve had a fun debate with an attorney last year who I met and we were talking about video games and I asked, “What do you name a video game; how do you get it out there?” And, my colleague said, “You know what? First of all, our company, I’d tell them, name it whatever they want, see if they get caught and, and just throw it out there.”

I don’t particularly like that because when it comes to software, a lot of software companies are voracious in their appetites for enforcing their intellectual property. And I don’t think it’s good advice to tell a software company. Just to put it out there. I don’t think that’s good advice because I think that’s inviting an infringement lawsuit.

Michelle:

I agree completely. And honestly, a startup is the kind of company that has least able to defend themselves in a situation like that. You don’t want to put yourself where in a situation where the viability of your business could be called into question.

Anthony:

His, his argument to me was that because it’s a startup, they’re least likely to be found.

Michelle:

Okay.

That’s not necessarily,

Anthony:

And I agree with you. I do agree it’s not necessarily true because the company was also a startup. Yes, it was. Yes, it was. So what’s our, so what’s our final point on, on this episode?

Michelle:

The, the, the fifth way that bloggers get themselves sued is everybody’s favorite. Defamation, yes. Defamation, libel, slander, et cetera.

Anthony:

This particular legal theory when we’re dealing with bloggers, okay. And the reason is one, the truth in the United States, not in the United Kingdom, by the way, but in the US the truth is an absolute defense to defamation.

Michelle:

And

Anthony:

If there is a blogger who is giving his or her opinion about a product, that opinion is truth as the blogger sees it. However, a lot of companies are going after bloggers who write bad reviews of products. We’re finding that, um, not only is his defamation invoked, but by the way also trademark infringement and dilution aren’t poked as well for bad reviews.

In these particular instances, I think we’re finding that the bloggers are winning. But I’ll tell you it’s not a fun fight.

I just, I just don’t, I’m not sure exactly what else to say because to me, you’re not defaming a company if you say that a certain product fails to meet certain expectations. Defamation is purposefully saying something that is untrue, that hurts a company’s reputation or a person’s reputation. But in this particular case, we’re talking about businesses and, and a lot of businesses have acted poorly to negative reviews online. And I don’t like it. And, but since we’re talking about being conservative and since we’re talking about protecting yourself from a lawsuit, I would say to do two things, especially if you’re a blogger who’s putting out product reviews. One, have an attorney in your back pocket who handles these particular matters and make sure that the attorney just peaks. At the blog every once in awhile. It doesn’t have to be a thorough review, which is just have the attorney peak and just say, look, DSC something that off the top of your head sets off bells, alarms and whistles.

Make sense, and to try to be as eloquent as you can in your writing. I have found that blockers get themselves in trouble by holding themselves to a lower writing standard, and I would say if you’re eloquent in a review that’s going to be negative and you’re able to say, here’s what I liked, here’s what I didn’t like, here’s what I thought could be fixed. Here’s what I thought could have been better. Then it doesn’t feel like defamation, so make sure when you’re writing and writing a negative review that it doesn’t feel like definition defamation. Excuse me, and I think the blogger will come away with a better product as well as a lower chance of being sued. Now Look, everything we’ve talked about here is not 100% you could still get sued.

Michelle:

Well sure. Anybody can sue for any reason. This is just a matter of trying to decrease your exposures.

Anthony:

And in these particular instances, I think it’s important to take all of this as a whole in writing a blog avoiding the names of other companies; discussing a name when you can’t do it any other way. Making sure that pictures are licensed and making sure that the content of pictures is proper. Making sure that the music is licensed. If you need music, I need music, I need an intro and an outro. Did you do so at some point we’ll be getting the proper license for that and also making sure that when you’re doing a negative review, it doesn’t cross that line into defamation. Sure. But I would say with that negative review, make sure you write it as eloquently as possible because the idea here is for everyone to avoid that. And it’s not a a hundred percent, you’re not always going to avoid it. But I think in this part, I think these are helpful tips to make that blog better and to make your defenses better when somebody complains.

Michelle:

Agreed. Now going back to the, the negative reviews, just to clarify  there, there were quite a few stories in the news not long ago about people being fined for negative reviews because they had signed up with services or with websites and it was in the terms of service that if they left a negative review review they could be fine. What we were just talking about as completely separate from that.

Anthony:

Absolutely. And I would say those stories stem from what you just said, signing up with a service that has terms of use, which of any piece of software is a contract that is legally enforceable. And if that terms of use says that you are not allowed to put up a negative review on any of our member products because you’re signing up for these member products one way or the other and your co and if you do put up a negative review, it’s fine, sure. It’s been enforced inherently. I understand that a lot of people don’t like that particular ruling, but you can contract and you can agree. And my advice there is read terms of use the terms of service of any service that that you sign up for. Because if it relates to them, having access to goods and having member products, then I think you’ll understand better.

How to deal with this particular service of course. And you need to avoid those pitfalls. But, but yeah, that comes from just not reading terms of use in terms of service, which let’s be honest, most people, the overwhelming majority of people aren’t reading terms of views. Exactly. And that’s a mistake in and of itself.

Michelle:

But anyway, to just to sum up the episode as a whole, it seems to me that really what you’re saying is that the Internet is no longer the wild, wild west. We don’t have the anonymity that we used to have.

Technology has progressed to the point where someone who’s in charge of IP for a large corporation like Coca-Cola can get Google alerts delivered to their inbox immediately every single time their brand is, as mentioned, Getty has an image search engine that will find their images.

Anthony:

Yeah. I’m not here to single out any one particular company or corporation because all big companies, all big companies have mechanisms in place to show when their trademarks come up on the Internet.  I hope the many small businesses do as well.

Michelle:

You and I both know small businesses that have gotten sued over trademarks from near and far just because the Internet makes it easier.

Anthony:

Right.

A lot of small businesses also don’t care and they get sued because they don’t care. So my point is that there is software out there that makes it easy for trademarks to be found for a copyrighted material to be found and therefore they will be found if they’re online. And so the way that a blogger can protect him or herself is what I said earlier, make sure that, that the use is protected. Make sure, make sure that trademark uses is properly protected. Make sure the copyrights are either secured or licensed, and make sure that that content doesn’t step over the lines. Have an attorney review. Not doesn’t have to be every single time, but make sure there are periodic reviews so that you as the blogger can understand in what direction to take your blog and also to make sure that you’re just not stepping over the line.

Michelle:

Sure. That makes a lot of sense.

Anthony:

All right, Michelle, if people want to find you, how can they find you?

Michelle:

Very difficult to find. I can be [email protected] and that’s Michelle, with two Ls, the way it’s intended to be.

Anthony:

And I’m Anthony Verna, Managing Partner at Verna Law, P.C.

In this episode, I speak with Daniel Sollecito, who has had a distinguished career in law, handling antitrust and commercial litigation.  We discuss preparing for litigation, document retention, and communications between the attorney and the client with litigation ongoing.

Here is a lightly-edited transcript of the episode:

Anthony Verna:

Welcome to the Law and Business podcast. I’m Anthony Verna. I’m here with my good friend, Dan Sollecito. Dan, am I still allowed to call you an attorney-at-law?

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Now their attorney writes to you. That’s called an attorney demand letter. That, to me, if you are businessman, and a good businessman that absolutely requires you, like a forcing bid in bridge, you have to then call your attorney. Once you get that attorney demand letter, if you have a regular attorney who does your litigation or who does all your legal work, he is going to expect that if you get a lawyers letter from  another party, you will contact him immediately. Because now in effect, the clock is running, tape is running. Now we’re making legal history. So, once you get the letter from your opponent and it looks like a threat of litigation, you’re infringing on copyright or a trademark or you know, you sent us the wrong goods or whatever. If you’re a head’s up businessman, you might call your lawyer at that point. That’s not a bad idea. And then he can help you draft your non-lawyer answer to that to try to keep it out of litigation, you know, but once you get the letter from the other side’s lawyer, then you have to be crazy not to contact your lawyer.

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Don’t forget that even in New York, which is the biggest trial jurisdiction in the country, the trial bar is not that large. People know each other and you get a reputation. I do collections for a court reporter who’s based on Long Island and she says that her payments, short of litigation, short of even threatening litigation have improved because of the clients there are also trial lawyers and the word gets around. They know that Mrs. X has an attorney and that he will sue them if they don’t pay and so they pay.

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Speaker 2:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

So, what you’re telling the world is we keep everything for five years. At the end of five years, we get rid of everything unless we have an, and the document retention policy should say this, unless there is a pending lawsuit or we have some other document retention order, all commercial documents that are not tax related or whatever your other exceptions are, obviously you’re not going to destroy your trade secret documents. All general run of the mill telephone bills, whatever, whatever. At the end of five years we’ve destroyed them all. And why is that important? It’s important so that you can negate the claim that you went out and found everything having to do with this dispute and burned it before the court could get their hands on it.

Anthony Verna:

Dan Sollecito:

So, you know, you’ve got a plan to settle everything early if that’s the way you are. Or basically the best advice is don’t do that.  Keep good files, know where your files are, have a definite policy as to how long you retain things and follow it. If you have a document retention policy and they come into discovery and they find stuff that’s way beyond what was the discovery date, then they’re going to say to the judge, this is no policy. This is like a meaningless document cause they have all kinds of things of all ages except anything having to do with my lawsuit.

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

My clients came to me with a very bad document for the purposes of defending an antitrust case in a Fortune 10 company. And they said, well, what should we do about this? I said, well, first thing you’re not going to do is tell people to destroy that document. Because we have two or three pending antitrust cases and several overlapping retention artists plus in a company with more than a thousand employees, there are copies of it every place. Anthony has told me as my tech expert that even the Xerox machine can have its brain washed and recovered documents.

Anthony Verna:

Dan Sollecito:

There’s a way to do everything. The way is not to go after the company and find every copy because you’ll never get every copy. Some idiot will have taken one home or use it to wrap his lunch. It’ll always turn up. So, you may assume that the government is going to get a copy of it and with that copy should be a copy saying this wasn’t company policy. This was a low-level person who made a mistake.

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

There are special medical waste disposal companies that do that. But, I agree with my wife 100%. She would’ve made a good lawyer. Document, document, document, especially in your field of copyright and trademark where the issue is. How long ago did you adopt this mark? How long ago did you have this work?

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Dan Sollecito:

That was a joke, but generally people who have a lawyer to write the transaction don’t involve, don’t get involved in litigation. It happens. Everybody has mistakes in their disputes, but there’s far more litigation where businessmen on both have decided they’re going to write their own contracts. They’re going to do their own a trademark application that you know, that way I don’t really, I didn’t speak English. I don’t need a lawyer. Oh, those people are a Godsend to litigators  like me because their transactions always unwind. Why do lawyers use the same will form that there’s been since England 500 years ago? Because every term in that will has been defined by a court. Yes, you can write your own common sense will, make it all up using good, honest English, simple English. Every word in that will could lead to a lawsuit that you could spend $10,000 on, but you use the old form.

We’ve already had all those lawsuits. Everybody knows what every word in that will means as the specific meaning defined by courts. That’s why lawyers use what’s called boiler plate. And I don’t know if Anthony has ever previously used that term with you, but boiler plate is formal language, which means a specific thing which has usually been interpreted by many lawsuits and you use it because everybody on both sides knows what that word, those words mean. If you go off on your own, writing your own document, oh I don’t need a lawyer, I can speak English, I’ll write whatever I want to write. Well that’s fine and dandy, but every word you write is going to be subject to dispute cause it’s not the traditional language. As unintellectual as it may seem, you’re much better off with that boiler plate because everybody on both sides of the transaction knows what it means. The real estate lawyers to this day, their closing documents are literally exactly the same in every commercial lease and every residential lease, they’re different between those two, but they’re the same language because we know what that language means.

Anthony Verna:

Dan Sollecito:

Dan Sollecito:

That is very local law. This happened to a client of mine. If you die in the state of New Jersey and you have property in the state of South Carolina, a separate probate is open in South Carolina where that property is passed under the will and in New Jersey, but subject to South Carolina law because each state controls the real estate in their states, no matter who owns it, The Pope could own it or the or the King of Prussia. As far as the law concerned, New Jersey decides where in New Jersey real estate goes and those areas, real estate trusts in the states and family and matrimonial law especially. But even as to civil procedure and contract law, each state has their own little special rules and regulations in most areas. A general lawyer and a company level. And especially companies that are in a particular industry, their house counsel will know the law as to several of the states they operate, even though not lawyers in that state. But when you get into real estate, and I think, like I said, every business is in somehow. I mean, if you rent one room, you’re in real estate. That is an area where you need a lawyer who is versed in the law of the place where you’re operating.

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Dan Sollecito:

Anthony Verna:

Anthony Verna:

In Episode 3, I am joined by Jim Cushing.  Jim is a lawyer at The Law Office of Faye Riva Cohen, P.C. , focusing on family, real estate, and unemployment law.

Jim is a big fan of the band Yes and discussed a copyright infringement case that a frequent artist for the band filed against James Cameron, the film director, over the scenery in “Avatar.”  You can read Jim’s blog here.

Through this episode, I discuss the requirements for filing a copyright infringement lawsuit and what materials in visual works are protected under copyright law and what is not protected under copyright law.

Here is a lightly-edited transcript of the podcast episode:

Episode 3:

Anthony Verna:
Welcome to the Law and Business podcast. I’m with James Cushing. James, you can say hello.

Jim Cushing:
Hello. How are you doing?

Anthony Verna:
I’m well, thanks. Thanks for calling in. Jim, tell us about your practice. We’ll start there.

Jim Cushing:
Thanks. You know, I met Anthony way back in college through a mutual friend, Steve. Do you remember?

Anthony Verna:
There’s only one mutual friend?

Jim Cushing:
Well, I think we developed many mutual friends through that, I guess. I the people there and I’ve been in practice in Philadelphia since 2002. My practice and my office Faye Riva Cohen’s sort of claim to fame as a labor employment side practice, civil rights type of stuff. But I am sort of been relegated to a lot of a domestic, family divorce, custody support, unemployment comp, small claims sort of thing. I do a lot of landlord-tenant and contracts up to sort of the garden variety every day, a real person type stuff. Usually plaintiff’s side.

Anthony Verna:
So, you’re claiming I’m not every day or a real person?

Jim Cushing:
 I guess not everyone’s patenting things every day, but yeah. So, I’ve been doing that since about 2002 for the same law practice, which sounds crazy to me. Actually, just yesterday was my 12 year anniversary at this office.

Anthony Verna:
Congratulations.

Jim Cushing:
Thank you. And my 15th anniversary practicing law.  What’s that?

Anthony Verna:
Do you get a pin? Do you get a framed certificate?

Jim Cushing:
I wish I got a gold watch or something, but it was just more of a, Hey, good, nice, go on. Thanks for not asking for more money. Something like that. And I’ve been, you know, I’ve been maintaining a blog, which is I think what sort of inspired this cast, but it’s judicialsupport.wordpress.com where I’ve been writing about some copyright infringement issues, which I guess you’ll get to, Anthony.

Anthony Verna:
Yeah, absolutely. I can break those down for you. I’ve got all the paperwork up here and what you’ve been talking about is a case called William Roger Dean Against James Cameron, 20th Century Fox, student entertainment, blah, blah, blah, blah, blah. And lots of other people who put money behind movies. Who is William Roger Dean?

Jim Cushing:
Roger Dean. He’s not usually known as Roger Dean. In fact, it wasn’t until I, I’ve been a big fan of his for years and it wasn’t until I saw this lawsuit that I knew his name was William. But, Roger Dean…

Anthony Verna:
Stage names, aren’t they wonderful?

Jim Cushing:
What’s that?

Anthony Verna:
I said stage names, they’re wonderful.

Jim Cushing:
Right? Yeah. He goes by his middle name. So, Roger Dean. He’s been around as an artist, as a surrealist artist for I would say 45 years. His claim to fame is doing art for album covers mainly, although he’s done some other things on television, movies, and architecture, but his main art avenue is going to be album covers for rock bands. So, he’s been the primary artist for the band Yes, the progressive rock band. Yes. He’s done their logo and many, many album covers for them and their stage set design.

Anthony Verna:
I was going to say you’re a big Yes fan.

Jim Cushing:
I’m a huge Yes fan.

Anthony Verna:
You’re allowed to admit this here.
Jim Cushing:
And I was going to say that nowadays in 2014 there’s, there’s very few small Yes fans anymore. It’s people who have been carrying the flame for a long time. And yeah, I’ve been sort of obsessive about them for a long, long time. Much to my wife’s chagrin, I’ve seen them 20 times. No, I met some of the guys and gone to festivals and stuff. Nowadays, Yes fans, it’s sort of like Star Trek fans where we have our own conventions and festivals and we all know each other.

Anthony Verna:
It’s kind of like Bruce Springsteen fans. Bruce Springsteen fans can recite the 38 times that they’ve seen Bruce Springsteen to the day, set lists.

Jim Cushing:
Yeah. It’s very similar, right? Yeah. And I would say Yes fans would also, the genre progressive rock is like that. It’s a very somewhat small community anymore. And   so anyway, he did Yes covers. In the 80s, he did. Asia covers. The band, the supergroup Asia. some Uriah Heep, Gentle Giant, other groups. And so he has a very distinct style with the sort of floating islands and surrealist sort of architectures, art, you know, landscapes and so on. And I think his work has been done in movies before, but he, and he’s never really taken action on. I’m sure you’re familiar with the movie Galaxy Quest.

Anthony Verna:
Of course.

Jim Cushing:
Yeah. Right. There’s a scene in that movie where they all go into a star base that looks like a rock formation in the shape of like a teardrop. I don’t know if you remember that scene.

Anthony Verna:
Not that particular one, but that’s okay. Keep going.

Jim Cushing:
That there’s a picture. I think that picture is linked on my blog somewhere in one of those things about Virginia. But anyway, so that was a riff right off of a Yes Songs, which is a live album for Yes. But Roger Dean didn’t sue over that cause it was one minor scene. But I think when he saw James Cameron’s movie Avatar, he saw that movie and said, “Well this whole movie is my artwork.” And I think that inspired the lawsuit. Because I’ve met, as an aside, I’d met Roger Dean several times. He doesn’t know me, don’t get me wrong, but I’ve met him. Because, there  used to be this thing called the Northeastern Heart Rock festival. That was an annual thing for about 12, 13 years in Lehigh county, Pennsylvania that I went to every single year practically. And he was almost always the artist in residence. So, , every year I come in with my truckload of stuff for him to sign and he graciously would. He sold me some artwork, which is now hanging in my law office.

Anthony Verna:
Right. Excellent. Your wife wouldn’t let you hang it at home, would she?

Jim Cushing:
What’s that?

Anthony Verna:
Your wife wouldn’t let you hang it at home, would she?

Jim Cushing:
No, no. So the spare artwork is sort of, you know, lodged somewhere in an attic somewhere. But the rest of it is here in my office. And so, I talked to him about his artwork being used in media and I think Avatar’s what he said that was just too much for him to take, I think.
Anthony Verna:
I hear you well. By the way, as an aside, did you know that Phil Hartman started as a record album cover designer?
Jim Cushing:
From Saturday Night Live?

Anthony Verna:
Yeah. Yeah. His probably most famous one is the Crosby, Stills and Nash cover with the Celtic knot.

Jim Cushing:
I had no idea. I’m in front of a computer, so I’m going to Google that to make sure.

Anthony Verna:
You’re allowed. You’re absolutely allowed. I’m in front of the computer too. So, Roger Dean’s sued James Cameron, 20th Century Fox, and basically all the companies that put money into Avatar and his basic theory or his lawyer’s basic theory… Cause let’s be honest, this isn’t his theory, right? Jim and I both know, we tell our clients what the legal theory is. The clients don’t make it up themselves. And by the way, I’m sure Jim understands that those who do make it up themselves are generally pretty wrong.
Jim Cushing: (
That’s exactly right. And there’s a reason why, we studied the law, right?

Anthony Verna:
In this particular case, what you said I think comes through in the complaint and in then the amended complaint. Roger Dean had to amend his complaint in this particular suit. And the overall theory is that he is suing because this planet in the movie Avatar looked a lot like his paintings. And that’s really what he was going at. That there were… I had it right up here. I’m trying to…Oh, I had it up and now I’ve lost it. But talking about floating islands, talking abou the mountains, the arches, what the trees look like and from that particular…
Jim Cushing:
Is the dragon in there too?

Anthony Verna:
Okay. And so the thinking is that, and there are pictures and I don’t know that we can… Maybe I can link to these pictures somehow when I post this, but…
 

Jim Cushing::
Yeah, Anthony, one of my blog posts, I think you’ve got it. I have a series of pictures of them comparing right next to each other. Of the movie and Dean’s stuff.

Anthony Verna:
I have it up because it’s in the final order of the case. So, I see a floating mountain and I see floating trees and I see a lot of that as well. And I see the dragons as well. And in this particular case, the theory is that I did floating mountains, I did dragons, I did trees. And I’m looking at this movie that says floating mountains, floating trees, dragons, and it has to be infringing upon my particular copyright. And I can certainly, from an artist’s standpoint, see that. The one thing that I thought that just popped into my mind, and it reminds me a little bit, but I’ll show you why it’s not quite analogous later on to the George Harrison suit. Are you familiar with the George Harrison copyright infringement suit from the 70s?

Jim Cushing:
I don’t think so, but maybe. I just im’d you some photos on your Facebook, by the way.

Anthony Verna:
Perfect. Thank you. And George Harrison was sued by the copyright holder at the time of a song called “He So Fine”. And it was for “My Sweet Lord”. And at the time, George Harrison’s lawyers argued when… I mean this got to the Supreme Court. George Harrison’s lawyers argued, well, he grew up in the 50s, the song probably was on the radio when he grew up and I shouldn’t say grew up in the 50s but he was listening obviously to the radio in the 50s. He was performing in the 50s. The song, “He’s So Fine” was popular then and he probably heard it. And at that point, he didn’t know he was copying. And the Supreme Court basically said that your mental state is not really a reason to avoid copyright infringement. In this particular case, they lined up the chords, they lined up the structure, they lined up the melody and the music and musicologist after musicologists. Then, of course,  expert witnesses are paid by each side to say what they are saying in court. So, there is always a little distrust of an expert witness, but still the expert witnesses lined everything up and said, look at how similar it is. It has to be because of the chord structure, because of the melody, because of the harmony. It’s so much like the original song that he copied.  

Jim Cushing:
I’m sure the opposing experts said, “I don’t know what you’re talking about. These two things cannot be more dissimilar.”

Anthony Verna:
Of course. But here in this particular case, the Supreme Court said there’s no mental aspect of copyright law. You either copy it or you don’t. And whether or not you meant to copy something doesn’t excuse you from infringing upon somebody else’s copyright. And so, we have this amorphous idea in copyright law. And it’s something that a lot of people come up to me and ask me about, do you need 10%, do you need 5%? What point is there copyright infringement? And we have another series of cases that the Supreme Court kind of shrugged their shoulders and says, every case is different. It’s based upon facts. And I don’t know. And isn’t that lovely? The Supreme Court saying, I don’t know.

Jim Cushing:
Well, doesn’t give us a whole lot of guidance, I guess.

Anthony Verna:
No. And so, we don’t have a lot of guidance. There are times when an infinite amount of a use of a senior work is acceptable. And there are times when an infinitesimal, minimal amount of as senior work is not acceptable. So, it’s about the originality. It’s about if something else is used, it’s about mental state. And we kind of take all this when we put it in a blender.

Jim Cushing:
And their defense though, how do you put into words or quantify similarity in a piece of artwork, for example? How do you do that besides saying, “Well, I know when I see it.” to quote another famous Supreme Court phrase.

Anthony Verna:
Well since that particular phrase isn’t going to work its way in here, thankfully, but the idea in copyright law and the court’s final decision, cause the court dismissed this case, hits the nail on the head, which is that there are ideas and there are expressions of ideas. And the idea itself, and I think this is probably where the pleading really did lack, even in the amended pleading, the pleading really talks about things like the floating mountains, the floating trees, the dragons. And it really gave the court a lot of leeway to come out and say, well, floating mountains are not all that original. And it allowed the court to say a tree that’s growing up in the sky is not all that original. So, you’re able to take this idea. So, an idea itself is not protectable. And that we know. It’s the expression of the idea. And so, the question is, does the expression… Does this, as the court says, mise en scene of Avatar take from the original work.

Jim Cushing:
Maybe you could help explain the difference between idea and expression. So, if I were an artist and I came up with the idea of arches coming out of the ceiling or the floating in the sky, that’s my idea. So, with that, I can’t copyright that is what you’re saying.

Anthony Verna:
Well, exactly. When you have this particular idea, you can take it and put it on a medium. And I don’t care if the medium is a computer file, a canvas, a piece of paper, or your wall and there’s an expression that can fall under copyright law.

 Jim Cushing::
Because I think most people would put more value on the idea[KR2] . Maybe that’s where the confusion lies. In all the responses I’ve seen on the Yes websites to this. It was his idea.

Anthony Verna: (
Sure. It certainly was his idea to take a mountain and have it floating in there. However, the other issue is who else is making this? And this was something that the court also discusses. The court discusses works that are similar to Roger Dean’s work and that it’s really the ability to show that this floating island is similar to the plaintiff’s floating island for example. So you’d have to show that the color is the same and ultimately the court is saying that you have to plead this, that you have to plead that the colors are the same, that the angle’s the same, that the overall look is taken from the original work. And the court’s basically saying there are so many ideas of things like dinosaurs on a prehistoric island, far from the mainland. I mean, that’s nothing new and that can be found in many fantasy stories. So the court is breaking it down and showing the difference between, okay, you have a dragon and these guys have a dragon, but how can you say that this particular dragon design is taken from your design when we have dragon designs all throughout history.

Jim Cushing:
So what then becomes the value of the copyright? If it’s that specific design, then the copyright seems to be extremely narrow.

Anthony Verna:
Sometimes it is. And I think that’s part of, I would say the flexibility of copyright law. On one hand, we’re protecting art, so somebody creates a visual work and we’re able to protect it. And if somebody creates something new, like maybe a new robot or maybe there’s something special about a dragon… I don’t know what would be special about a dragon in today’s world also because we’ve seen dragons with wings, dragons without wings, dragons that fly, dragons that don’t, a three horned dragon. Is that going to be special enough? I don’t really know. I think we’ve seen a dragon that looks like Sean Connery in a terrible fantasy movie, but, it’s hard to say what’s going to make something special. Maybe it’s a special robot design. You know, there’s something that I think maybe we can be very flexible about because we’ve seen robots that look human, robots that don’t look human. We can talk about Rosie from the Jetsons. We can talk about your typical 50s sci-fi robot. We can talk about the terminator, and/or terminator two, we can talk about how you know something mechanical looks and what those particular differences are. So, from that standpoint, I think the look is the expression, whereas for settings in a fantasy world, we’re probably not looking at stuff that’s all that original in its expression.

And that’s really something like, for example, the court here says stone arches and most of the plaintiff’s artworks are relatively smooth and set in barren land or seascapes, you know. And so we’re looking at stuff that I think we’ve seen before but then it actually makes the comparison that stuff in Avatar is jagged, uneven overgrowth with trees and moss…

Jim Cushing:
You went in and out there a couple times there.

Anthony Verna:
Okay. Sorry about that. I’m just saying…

Jim Cushing:
The last bit, two minutes.

Anthony Verna:
Sure, sure. Not a problem, but really what I was saying is that the particular ideas themselves are not all that protectable unlike if we’re trying to look at robots. But then the court decides to drill down a little bit and say, all right, so all you did was you pleaded that your ideas are copied and not your particular expression. And then the court said, let me look at your expression. And when the court looked at the actual expression, the court found plenty of differences. For example, the stone arches and the plaintiff’s artworks are smooth, whereas in the movie Avatar, it’s jagged and uneven. And any of the trees found on a plaintiff’s artwork don’t look like the trees in Avatar. So, they took the drilling down at least one level to say, look, even if you’re to sit there and replead this again, the court didn’t see any way of showing that the expressions are similar. So, the key here, I think, in copyright law, is that the idea is again, not necessarily protectable, it’s about the expression. And then, if you’re going into court, you really need to sit there and in your pleadings discuss the expressions and how they’re similar.

Jim Cushing:
I saw on the reg in the first complaint, there were many more defendants and many more claims, but most of those sort of fell by the wayside when he amended it. I guess that the copyright was the strongest of the weak claims that he had.

Anthony Verna:
I think that’s an accurate statement. Absolutely. I think that’s accurate.

Jim Cushing:
Now, I don’t know if this is directly relevant, but you know, is there a time when you can protect an idea? I mean, is that a concept of intellectual property? You know, at some point you have an idea that this thing is my idea and I want to keep this. Sort of like a patent or something?

Anthony Verna:
Well, patents protect an invention. And while I know that we’ve probably read plenty of ridiculous stories about patents that have been granted, if you’re not able to make a prototype at the very least then a patent isn’t going to be protecting too much. Even though I haven’t touched patent law in many years, that certainly is still a key to patent law. You have to be able to show it’s an invention. So, you have to be able to make it. In this particular instance with your question, I would say the answer is no. Now I will say that contract law is probably going to help you here. So, if you have an idea like maybe a new business idea or a new process for creating something, if there’s something there that’s nebulous that doesn’t fit any other kind of intellectual property law, if you’re going to disclose it to other people, I’d say your best bet there is to get a nondisclosure agreement because that confidentiality is going to help you treat it as what we’d call a trade secret.

So, you have to set up that confidentiality. But more importantly actually then setting up the confidentiality is setting up how it’s a secret. So, whether it’s something that’s password protected on one computer or it’s sitting in a safe or only two people know about it and there are high penalties for disclosing it if there’s an idea that can’t be substantiated otherwise, then I would say that’s how you have to do it. You really have to do it as a trade secret, but you start it by contract and making parties agree to behavior to not disclose the secret.

Jim Cushing:
Now, I saw in the judge’s opinion, I mean as I don’t practice copyright law, so I’m sort of reading it as a  semi-intelligent person. But, I was looking at it that he made some comment about Roger Dean presenting evidence of people’s impressions of the movie as evidence that there was ideas stolen, but the judge didn’t seem to think that was particularly persuasive. Cause I will tell you that when the movie came out, when I was at prog rock festivals and the various websites like Peruse and Facebook pages I look at, I mean there was a car of Yes fans  saying, “Oh, this is clearly ripping off Roger Dean. This is a huge injustice to the prog rock community.” or whatever and but the judge doesn’t seem to think  that other people’s impressions of the work are that dispositive.

Anthony Verna:
Yeah. I’m not really surprised that the judge shrugged that off. From an evidentiary standpoint, it feels a little like hearsay to me. So, I don’t know that it would be necessarily admitted unless there was some kind of scientific poll of Yes fans that was taken. Does that make any sense to you?

Jim Cushing:
Yeah, I mean right. I mean you can’t just have random people’s opinions as evidence.

Anthony Verna:
Exactly. And  so I think that’s one particular issue but, from another standpoint, if the judge is looking at the pleadings and then looks at the evidence and has already, made up his or her mind, I don’t know what necessarily your experience is but, my experience is that when it comes to intellectual property, a lot of judges have made up their minds pretty quickly and don’t really want to look at everything particularly. But I find with intellectual property law, not that not the cases are more simple cause I think the concepts are more foreign to people who don’t work in intellectual property all the time. But sometimes it’s maybe a wish to get a complex case out of here. If I can be a little cynical about going into the courtroom…

Jim Cushing:
I don’t think that’s all together on inaccurate. The judges often try to find the, the path of least resistance, right. In deciding a case.

Anthony Verna:
And I think here it’s really self-serving to have a bunch of fan say, “Well, of course it’s ripped off.” and, and I’m not surprised that a judge would just kind of ignore that. I probably would too, and I probably wouldn’t of have even mentioned it to be honest with you, but…

Jim Cushing:
take advice, right, I guess.
[KR3] 
Anthony Verna:
Yeah, exactly. Exactly. But, I’ll tell you, I was in federal court earlier this year on a trademark infringement suit and sitting in mediation to hopefully settle the case. The magistrate judge says to me, “It’s not that I find your motion to dismiss frivolous, but I really don’t like it. And I don’t really think that you guys have a defense here.”

Jim Cushing:
At least he’s honest and straight forward, right?

Anthony Verna:
Very honest and straight forward. Exactly correct. Look, I’m in mediation to settle a case. And that’s why I agreed to mediation because I figured that settling the case and believe it or not, the plaintiff did not want to mediate and plaintiff wanted to keep plugging forward and I insisted, not a letter to the judge, but in a required pre-hearing filing that mediation would be proper and it would help settle the case and sitting in the in the first hearing, the judge says, “Mr. Verna, stand up.” “Yes, your honor.” “You look like a person who would like settle this case.” I said, “Yes, your honor. I would.” “Good, we’re going to have mediation.”

Jim Cushing:
 What a coincidence.

Anthony Verna:
What’d you say?

Jim Cushing:
I said, “What a coincidence. That is exactly the kind of person I am.”

Anthony Verna:
Exactly. So, I, I’m not surprised, getting back to your question, that the judge kind of shoved it aside for various reasons, whether it’s legal or practical or cynical, you know?

Jim Cushing:
Right. I’m assuming that the judge was doing you something of a favor saying, I don’t know how far this will go in trial, let’s see if we can fix it. You know, avoid needless litigation by mediation. And sometimes the clients don’t necessarily appreciate that favor they’re doing it as opposed to just dismissing your client, calling them out. Right?

Anthony Verna:
Well, I wasn’t out to… How can I say this without without giving away anything that might be confidential. I wasn’t being a bulldog just to be a bulldog. I did it thinking that there would be a chance of having the plaintiff file new pleadings in this particular case. But ultimately, if it’s going to cost you x to settle the case and it’s going to cost you 20 x or 40 x to to take this all the way, well why wouldn’t you just pay x? And that’s  kind of the thinking that I had was that I wanted to try to get into the mediation. That was really my goal from the beginning with that particular case. And so, we settled. But if we had to litigate, I was going to do it with the motion to dismiss.

One case that my partner discovered in writing was that motion to dismiss was a case by a Judge Sweet, I believe was his name. And he still is sitting in the southern district of New York and at this point he’s in his eighties. So, he’s in that judicial part time program. And he talks about intellectual property, you really need to discuss the plaintiff’s intellectual property, the defendant’s intellectual property, the infringement, the similarities, and the harm. And you need to link it all together and you really need to be complete about it. And that’s going to be true regardless if you’re in a patent case, a trademark case, a copyright case or some other form of intellectual property, you really need to discuss yours, theirs,  the copying, the harm, and the damages and you got to link it all together.

And I think in this particular case, getting back to the reason why we’re talking here, the pleadings don’t necessarily do that. And if you’re in a copyright infringement case, I really think you need to say, here’s the plaintiff’s work, here’s the defendant’s work, and here’s where the similarities lie. And another case that just popped into my head that I remember reading years ago, although I haven’t picked it up in a long time, is one that was filed against George Lucas but I forget if at the time it was Lucas Arts or Lucas film, and it was against the producers of the original Battlestar Galactica and talking about the similarities between Star Wars and Battlestar Galactica and the court in its final opinion, cause it went to federal appeals court. I think it was the Ninth Circuit in California. And in it, that’s exactly how the court wrote its opinion. Here are all the similarities and it went one, two, three, four and it just listed them all. And it got from the general to the specific. And so, I think in dealing with intellectual property lawsuits, that’s where the beginning has to lie, tie everything together and be as specific as you can in the complaint. For people who practice law, That might sound maybe a little too specific in your pleadings when you filed the complaint in the lawsuit. But I think that’s really good advice.

Jim Cushing:
Well I wonder in this case, presuming that Roger Dean, he’s a somewhat of a celebrity so I’m sure he can afford a decent lawyer and I wonder if they did the best they could with the material that they had. I mean you can’t turn a pleading into something that you don’t have. Right?

Anthony Verna:
I agree with you.
Jim Cushing: (35:26)
And what you’re saying, or at least it seems like you were saying is that even though the court did it, gave them the benefit of doubt and actually did look at the pictures and compared them for him and said, even if you were to amend this complaint, you could not amend it in such a way that would even lead to a cognizable case as it is.

Anthony Verna:
Absolutely.

Jim Cushing:
Cause I guess the other alternative oftentimes for motions to dismiss or summary judgment is that the court will say, you know, and I don’t know if it’s like this always in copyright, but it certainly in civil law where the court will sometimes say, you burn a pretty bad complaint here, but there’s nuggets of something in there you could turn into something. So, we’ll let you have an opportunity to amend it one more time, because you might be able to turn it into something. And the judge does seem to say in this case, you know, there’s no sense in that because no matter what you do, there’s still nothing here.

Anthony Verna:
I agree with you. Yeah, I agree with you. Yeah. I was just trying to think of getting to the bigger ideas here, but I do agree with you on that.

Jim Cushing:
Although yeah, it seems sort of accurate. It seems sort of obvious that part of the job of the attorney, is to connect dots. Right. The dots are out there. And I think, part of our job is to say, here’s how you get from point a, which is what I believe to be something that damaged me, to point b, which is this is how much it damaged me, to point c and now it’s this person’s fault or whatever it is. You know, it’s part of our job is to link those things together in a story that’s sensible and cognizable in some way, generally speaking. So, I think in this case you’re saying, the the complaint that Roger Dean filed was somewhat deficient in one of those ways. And perhaps he couldn’t have been, I don’t know if you could’ve done it better or not, but that’s the way it goes.

Anthony Verna:
Well, they already filed their amendment as well. So you get…

Jim Cushing:
You mean what they thought? I mean, after the motion to dismiss was done.

Anthony Verna:
Well, they filed a complaint and then they filed an amended complaint. Yeah. So, they already had their second chance. And, and I’m never in State Court and certainly you and I are licensed in radically different states, so I don’t ever sit in state courts, so I’m not too familiar with how it feels in state court, but in federal court I will tell you if you don’t get it right the second time you’re out the door.

Jim Cushing:
Yeah, I’m not sure in state courts. So at least in Pennsylvania it’s a little different. I mean it all depends on whether an answer was filed and whether some re-judgement was filed and so on. But you know, in Pennsylvania at least if someone files a complaint in the state court in descent, if I was preliminary objections, you know, you can file an amended complaint. I’ve done it several times and at some point, the defendant can simply file to request the final form of the complaint because you can’t do that. You can’t have that dance forever.

Anthony Verna:
Exactly. Exactly. I will never forget my first time in federal court here in the southern district of New York where Judge Berman looked at both sides and said, “This is America. Everybody gets a motion to dismiss, but if you’re going to be amending, this is your second time. So, if the motion to dismiss is granted, you’re out the door.” So, because the party was voluntarily amending, he basically said, when you file that amendment, that’s it. You’ve given up the right for them to complain. It’s already your second chance. If they’re still right, you’re out the door. So, it’s federal court. I will say what I’ve liked about my federal court practice is that it’s no nonsense, as opposed to what I hear from my New Jersey colleagues, my New York colleagues I think hear a lot of no nonsense, except for the people who do criminal law over all. I hear about his motions and filings and delays and, and all sorts of…

Jim Cushing:
Well, I do family work, so it’s all nonsense.

Anthony Verna:
Sorry.

Jim Cushing:
Motion practice and pleadings is the secondary to whether you can make someone cry, I guess.
Anthony Verna:
Yeah.

Jim Cushing:
You know, being an adult for one day though, adults cannot be adults.

Anthony Verna:
I’m gonna keep my mouth shut on that particular comment. Anyway, Jim, I hope that I was able to shed some light on this particular case and I know that you’ve got work to do. I’ve got work to do, so I don’t want to take up more of your time.

Jim Cushing:
I appreciate the opportunity to discuss it. It’s a Yes, so it’s always something I like to talk about. I’ve seen artists pretty close.

Anthony Verna:
 I’ve noticed that.

Jim Cushing:
Yeah. So onwards and upwards and we’ll see.

Anthony Verna:
All Right Jim. Sounds good. You have a wonderful afternoon. And how can people get in touch with you if they want to.

Jim Cushing:
Oh, just so we know, Roger Dean has another 25 or whatever days to appeal this, so this might not be the end.

Anthony Verna:
Yeah, obviously that’s his choice. If, he would like to appeal or not. And I’m sure he has enough money to do that, so I wouldn’t be all that surprised. I’m not too sure that it would be all that successful. So maybe he won’t, I don’t know. But it doesn’t, to me, it doesn’t feel like it’s all that egregious of a decision to be honest with you.

Jim Cushing:
No. Right. But, you know, it’s like he’s there, he’s probably has enough money and retainer to file a notice and at least give it a go. Right.
Anthony Verna:
Absolutely. And, it certainly depends  what circuit court you get to go to, and in this particular case you’re going from New York to the Second Circuit may influence that particular decision. The Second Circuit is a highly regarded circuit with judges that handle complex intellectual property all the time. I’m sure you’re familiar with the Christian Louboutin trademark case with the red soles and whether or not it’s an acceptable trademark or not. And it’s sitting in the Second Circuit and it’s something that my partner and I argue about often because I say it should be a valid trademark and she disagrees. But anyway, the Second Circuit is known for handling complex intellectual property. So maybe, the lawyers are saying, “Hey, let’s go for it.” So yeah, there’s still plenty of time to appeal.

Jim Cushing:
To answer your question, how to find me, as you said at the beginning, my name is James W. Cushing, although my friends call me Jim and you can email me at [email protected] or find me at www.fayerivacohen.com. It’s f a y e r i v a c o h e n.com. And uh, of course I keep a blog where I talk about Roger Dean.
Anthony Verna:
I never would have guessed.
Jim Cushing:
That’s right. And that’s at judicialsupport.wordpress.com and the if he filed some appeal, that will be on my blog. So be on the lookout.

Anthony Verna:
Alrighty, sir, thanks very much for coming. And I know that everybody listening knows I’m Anthony Verna. I’m a partner at Kravitz and Verna, PLLC. And you can reach me either at Kravitzverna.com. Spell it like Lenny Kravitz Since we’re on the musical team, or you can reach me at vernalaw.com. Thanks very much.

Jim Cushing:
Thanks, Anthony.

Anthony Verna:
Talk to you later, Jim.

In this episode, guest Michelle Carter joins me to talk about trademark licenses and a basic idea of what a likelihood of confusion is.

In trademark licenses, it is imperative that the licensor insists upon having standards in the product and intellectual property in order to have the trademark license stand for goods or services.  In the meanwhile, it is incumbent upon the trademark licensee to meet those standards lest there be liability for trademark infringement and breach of contract.

Speaking of trademark infringement, we discuss a couple basic cases of what a likelihood of confusion is between trademark owners.  Then I discuss the need for a trademark search and due diligence before use of a trademark.

Here is a lightly-edited transcript of the discussion:

Anthony Verna:

Michelle Carter:

Indeed. We are.

Anthony Verna:

Welcome to episode one, not zero of the Law & Business Podcast. I’m Anthony Vernon. I have a special guest with me. Say Hi.

Michelle:

Hello, listeners!

Anthony:

With me is Michelle Carter. What business are you in, Michelle?

Michelle:

I do public relations for select clients.

Anthony:

Yes. Very good. Welcome. Thank you. Of course. I’ve known you for a long time now. It is a pleasure to be here.

For those of you who forget who I am, I’m Anthony Verna. I’m a managing partner at Verna Law, PC where we do intellectual property, patent, trademark, copyright and advertising and promotion law. That’s a mouthful.

I am also going to be speaking at the Small Business Albany Exposition. October 1st I’m doing the opening remarks and I’m doing a seminar on trademark and copyright law for the small business owner. Although I never really liked the idea of being just a small business attorney, but, this is a small business exposition, isn’t it?

Michelle:

And it’s a good thing you’re not just for small business, but in all seriousness, it is a wonderful event. If you have a chance to check it out, you really should.

Anthony:

It’s October 1st in Latham New York. Did I pronounce it correctly? Okay, very good. And you can go to smallbusinessalbany.com if you want to register. Excellent.

This is the Law & Business Podcast.

It’s, what I find interesting is this intersection that a lot of people find that sometimes maybe law stifles their business. Sometimes they find that law helps their business and sometimes people are just confused because all they want to do is business and not worry about, what laws do you have any confusion in, in these particular areas?

I would say that, , I have seen with, with multiple clients that their, their ignorance of the law can certainly come back and bite them. So I always advise people to do the legal on the front end. You will thank yourself later. I promise.

Michelle:

That almost sounds like: you should hire an expert as well.

Anthony:

It does because experts have the, the, uh, ability to be expert in their field and actually know what they’re talking about.

Hmm. Now, now let’s go to people who, who sound as if they don’t know what they’re talking about. Because I heard, I have, you and I were talking earlier about Donald Trump obviously before we were recording, and he has sued Trump entertainment, which he doesn’t own. And part of, part of the issue is that he’s, he’s only minority shareholder of Trump entertainment. What he says doesn’t go, however, because it’s still called Trump Entertainment. It’s a license for the name Trump. And Trump is, has many federally registered trademarks. You can find “Trump” for the casinos, obviously for real estate. And, I’m sure for, I forget the Trump board game.

Do you remember? Do you remember Trump airlines?

Michelle:

I do. Yeah.

Anthony:

He was trying to set up something like a semiprivate charter starting out of Atlantic City to luxury spots, although I guess that didn’t really stick well. Did it?

Michelle:

Apparel.

Anthony:

I know there’s, there’s Trump apparel out there. It might be a picture of Donald Trump saying you’re fired. So it might be through like NBC or something like that. But so, so Trump is associated with many different industries and he has sued Trump entertainment because they built the Taj Mahal is, I think threatening to close if it isn’t close, I forget which casinos in Atlantic city or closing, but there’s the Trump Marina, there’s the Trump Taj Mahal, the Trump plaza, I forget which one is closing.

So he has sued for trademark infringement and a breach of contract. And he has said that the reason that the suit is in existence is because he wants to take the name Trump back out of the licensing agreement because Trump entertainment has not held, , his name to the standard that’s required of luxury standard of luxury that the Trump name requires.

Michelle:

Right. Well, I’ve read that his complaint is that the casinos as a whole really failed to meet industry standards, across the board, whether it’s services, food, operations, cleanliness.

Anthony:

Is it, is it industry standards or is it Donald J. Trump standards?

Michelle:

I think that’s a fair question. He says the problem is industry standards.

Anthony:

On one hand there’s a federally registered trademark here and Trump is a federally registered trademark.

Especially in real estate and in the gambling industry, however you define the gambling industry. In this particular case we’re dealing with casinos because obviously gambling can be state lottery, gambling can be horse tracks. Here we’re dealing with casinos and hotels as well. It could be the hotel industry as well.

But I know that Trump is a federally registered mark.

When you’re, when, when a business owner is doing a licensing agreement, so we have the license or is the trademark owner and the licensee is the company that is paying for the license to use the mark. And this happens of course on all sorts of industries. And I always talk to clients and I always say: If you’re doing a registered trade marketing, you have a product that you think could be licensed or you think could take a license.

You need to think about this in both directions. for example, I have a client and, and I wanted the client to take the product and put it on apparel or find a company that would want to put it on apparel and kind of turn it into its own personality. And I can’t really go into more last night, lest I divulge attorney client privilege. But if you have something that, that, that can be put into other industries and maybe you’re just not the person who wants to be in the t shirt business, you can take your, your mark and license it to, , another company that would be able to do that. And in this particular industry, in this particular instance, Donald Trump is not an owner in Trump entertainment. So as a part of booting him out, when they did put him out as a majority shareholder, there was a licensing agreement for not just the name, but also the federally registered trademarks.

Now do those license agreements have requirements that the business be conducted at a certain level? Does he have any remedy there that in short, since I haven’t seen them, I don’t really know the answer to that question, but, but , they should and I don’t really care if I’m really care what the level of businesses like Trump is sitting here talking about the Trump luxury level.

We know that if you’re buying real estate in a Trump building is going to cost a lot more than, than what’s next door just because one building has the word Trump on it. , so yeah, there’s a level of luxury associated with the Trump name, but this should be true for every single license agreement. Licensed agreement needs to be thought of in several parts. One, the intellectual property to the actual product.

What are the standards of the product? And three, the cashflow. And for a lot of companies, the license agreement is not really a flat rate or it might be a flat rate per dollar amount. But for many license agreements, if you’re dealing with a product rather than services, because a tee shirt is going to be calculated radically different than services, than restaurant surfaces or casino services. I mean, how you count the money matters for a lot of products, they’re going to be things like returns. And so how you calculate the money or shipping, a contract is going to have those monetary considerations, but there needs to be an IP standard and there needs to be a product standard.

So for example, Trump isn’t going to put his name to , slumlord apartment at that point.

Okay, I’m being silly about that. I’m being totally silly about that.

It’s totally different than the Trump buildings, and on the Upper West Side of Manhattan or on the Jersey City waterfront, those are luxurious buildings. So the level in your license agreement of standard of quality has to be stated out in a license agreement. Because at that point, if the licensee fails to maintain the level under the contract, the licensee is able to be sued for breach of contract with, they’re not following the contract, but also for trademark infringement. Because one of the things that I harp about, and I know you’ve heard me harp about this, Michelle, is that trademark comes with a product and whether that product is good or a service, that’s what matters. And in this particular instance, the level comes with the trademark. And so if it’s a casino but it’s not a casino that’s making enough money or it’s not a casino that’s decorated properly or it’s not a casino that just attracts the right clientele.

It sounds a little ridiculous. I mean, what’s the actual quote in there? I know it’s, it’s sitting here. Oh, here it is. The license entities have allowed the casino properties to fall into an utter state of disrepair and have otherwise failed to operate and manage the casino properties in accordance with the high standards of quality. And luxury required under the license agreement. And, and while a lot of people , might laugh at such a statement, one of the issues here is, is just that that’s what’s in the license agreement. I don’t necessarily know that. And other state of disrepair is the proper, uh, phrase, , because I sure that’s not quite right, but I’ll just, all that has to happen is that’s not maintained to the proper level that was agreed to.

Michelle:

Now what if the licensee said, “Atlantic city is a failing city where we’re lucky that we have the doors open and we are maintaining this at a level that’s higher than some of the other casinos. Maybe not what it was, but it’s certainly a higher level of experience than you would experience somewhere else.” Does that meet the threshold?

Anthony:

I would say that’s an interesting argument. I don’t know that it really is going to pass, again, when it comes to a license agreement, the agreement is the law of the case. We’re going to be determining what the standard is by what the agreement states and how specific the agreement is.

We’re not going to change the standard just because it’s in a certain particular city. We’re going to be dealing with the agreement. And so we’ll be looking at that. I mean, if, if a licensee or license or excuse me, wanting to license a product and the licensee was making a product that children could swallow, , I mean, do you think, do you think MLB or, or a team would love a product that children that wound up breaking in children were swallowing it?

I highly doubt. Yeah, I highly doubt that. So I would say that that those particular standards are not going to be because we’re in one particular position versus the other. It’s going to be just what is the standard of the agreement. I am, I’m sure that the analogy I gave isn’t perfect because we have inherent federal standards that a lot of us have grown up on, so from that particular standpoint, I don’t know if the analogy I made is completely perfect.

Michelle:

It makes sense.

Anhtony:

All right, good. I’m glad. I’m glad you think it makes sense. I mean I’m a lawyer, I tend to ramble about law and, and, and I’m here to keep you on track. Oh good. I’m glad somebody, yes, I’m sure. I’m sure anybody listening is probably glad that somebody is.

Michelle:

All right. So what’s next?

Anthony

Whatever you’d like to talk about is next. I have some, cases that I wanted to talk about as well because a lot of people don’t quite understand.

In trademark law that you can be sued for filing a trademark or that there’s a process for determining one trademark versus another trademark and how they get confused with each other.

Michelle:

Are you saying that when people try to file their own trademarks, they can get themselves into legal hot water?

Anthony:

Yes, I am. And I, love how the sarcasm comes dripping off of your tongue, but yes.

I’m not being sarcastic when I tell you that many of the clients I’ve had who have run into legal trouble is because they tried to do it themselves of course.

Michelle:

There’s a reason why we’re not specialists in law because we specialize in our own industries.

Anthony

And I’ll tell you sometimes, sometimes lawyers who focus on trademark law will in their exuberance for billable hours probably file cases that go a little far as well and, sometimes file a trademark application that absolutely conflicts with what else is out there. And we’ll look at a couple of those cases. But to take a step back, the first thing that, that any business should be doing when it comes to trademark law is due diligence and doing a trademark search and seeing what else is out there.

Let me give you an example here. Here’s a, here’s a trademark called Uncle Giuseppe’s Marketplace.

Michelle:

It rolls off the tongue. I would like some, some uncle Giuseppe’s today.

Anthony:

I’m very glad they didn’t use the Italian word, although I forget what the Italian word for uncle is.

It’s for, of course, sauces.

You can get your uncle Giuseppe’s sauce.  But there was an uncle Giuseppe’s already a registered trademark for prepackaged frozen entrees consisting primarily of pasta and sauces for sale in food stores.

So you detect any conflicts there?

Maybe a little one.

Your competitor will notice the application? Or forget that it exists?

That’s not how it worked out. No, that’s generally not how it works out in this case as well. Would you like to guess what happened in this case?

Michelle:

I’m guessing someone had to withdraw their mark.

Anthony:

Yes. The petitioner who filed, I believe. Yes, it was uncle Giuseppe’s marketplace had the application canceled because there was already a previous one there. This was not a lawsuit as in two parties going head to head. This was an appeal. When you file a trademark somebody can, the examining attorney at the patent and trademark office, either gives you a thumbs up or thumbs down and there are reasons why you would get a thumbs down. In this particular case, the examining attorney said there’s already uncle Giuseppe in pasta.

Pre packaged frozen entrees consisting primarily of pasta and sauces for sale and food stores and, and basically said that’s really much like ready-made sauces.

I don’t know if this really feels common sense to me. I feel like I’m not talking a lot about law here. To me this feels like it’s common sense, same trademark, same goods and services.

Michelle:

It is common sense, but we all know in business,

Anthony:

Ooh, somebody cynical side’s coming out.

Michelle:

That’s an issue that could have been resolved with just a Google search.

I think that sometimes, especially when we’re starting new businesses, we will get an idea or a concept and we’ll fall in love with it and we will pursue it at all costs, even if it doesn’t necessarily make business sense. And I think this is a perfect example of having your idea and, and needing to be flexible with it so that you can have it continue and grow into a successful product.

Anthony:

I agree with you on that and there have been plenty of times when I have told a client, you need to start over. You need to find something else. You need another trademark.

Michelle:

Does it mean that your frozen food is terrible or that that’s not going to sell? It just means you need to call it something else. And I’m sure it was uncle Giuseppe’s recipe and I’m sure he was someone who was very important to you, but you know what, maybe consumers will identify with uncle g’s better.

Anthony:

I mean that, that’s, that’s possible. That’s an interesting question now. But uncle g’s be different than uncle Giuseppe’s. Now that’s an interesting question. I hadn’t thought about that.

Michelle:

I didn’t even go to law school, but, what else this points to me is that there are issues here such as common words at the moment. I would say that you have to make sure that stuff that is commonly associated with your goods or services are, not really in use. Seeing Giuseppe there reminds me of how stereotypical Sanchez Epi, but just the word Giuseppe in general.  You take a look around at what Italian foods are called and, maybe, avoiding words like Giuseppe or Francesca or things that are already heavily associated with Italian food and Italian culture in the United States might be something to shy away from.

Anthony:

Sure. And, and I think in that particular aspect, when you’re doing branding and you’re a business owner is speaking with a branding company and business owners should be speaking with branding companies. This goes back to hire an expert. India does. And in this particular case, you might want to do your trademark search while you do your branding, so that your branding company and your lawyer work together. Absolutely. And, and you’ll have to, as a business owner, you kind of have to deal with, maybe some confidentiality issues on how your lawyer can work with a branding company, but the need to at least need to speak to each other and say: here’s what we’re thinking of. Here’s what a good trademark is versus here’s what a good brand is. Because sometimes a good brand is, is very descriptive.

And in trademark law, you can’t have a descriptive word or phrase as a registered mark unless it has what we call secondary meetings. So you need to be flexible between what’s a good brand and what’s a good trademark. In this particular case, I probably would’ve just said lucky you’re calling it uncle Giuseppe’s really.  Even if there isn’t an uncle Giuseppe’s out there, is there something that’s less stereotypical that that can put something in the mind? But here the standard is, are the goods and services the same?

Are the goods and the mark not the same, but are they similar, economically related? And is the mark similar enough in sight and sound in meaning? So that in that you put those two together so that consumers get confused when they look at two products and they see the same trademark and they’re very similar.

If a consumer thinks the two products are going to come from the same company, then there’s that likelihood of confusion. We’ll notify the owner of junior trademark.

Michelle:

In this particular case, to help consumers find you either.

Anthony:

That’s very true.

What I like about trademark law is that it’s about helping a business do business. And if, and if a consumer can’t find you, you’re not going to be able to do business. If a consumer thinks that you’re coming from some of the, your product is coming from another company, you’re not going to be able to do business. There’s just going to be confusion. So this area of law helps the businesses actually do business.

The standard just like I had said before, is that the goods need only be sufficiently related that consumers would be likely to assume upon in countering the goods under similar mark that the goods originate from are sponsored or authored by authorized by or otherwise connected to the same source. And in this particular case, the company that was applying for the uncle Giuseppe’s marketplace, showed that the owner tried to argue that there are differences between ready-made sauces and pasta and sauce entrees. However, the examining attorney at the patent and trademark office defended the patent and trademark offices positioned by showing Amy’s.  I know these products quite well.

Michelle:

They’re usually vegetarian, right?

Anthony:

Yes.

Amy’s has an Amy’s brand pasta sauces and Amy’s brand premade entrees composed of macaroni and a creamy cheese sauce.

Now, the one thing I will say is that it’s interesting how the patent and trademark office attorney is using a macaroni and cheese dish. And we’re talking about Italian food. So I’m sure a lot of people listening had red, , tomato sauce, which I grew up calling gravy, uh, stuck in their heads, , so I would say that, , , sauce is sauce regardless of what’s in it under trademark law purposes, sauces, sauce. , also there’s this little brand called Newman zone. I think you’ve heard of Newman’s own?

There’s Newman’s own premade skillet meals comprised of pasta and sauce and of course Newman’s own pasta sauce is also sold separately. And, of course, we can talk about Barilla, Barilla brand pasta and sauce prepared entrees and you can find Barilla brand pasta sauce all by itself.

So as far as the PTO is concerned, the food is food. I don’t know that I would say that food is food. The PTO, and trademark law in general, does believe that apparel is apparel. Because if you’re wearing, , whether you’re wearing say a good suit or you’re wearing underwear or you’re wearing a swimsuit or , clothing is clothing because those machines that are making the really good find suit can be stopped and you can load new patterns into it and that can then be a swimsuit and a new materials. And then you can stop that and you could change the materials and then you can make underwear and , or whatever. So apparel is apparel that I will, that I will grant. I don’t necessarily believe that food is food, but I can see where you’re going with that. But in this particular case, certainly we can see that a pasta and sauce, frozen entree dinner is going to be similar, at least economically related to just a jar of sauce regardless of what the sauce is. So I’m in that particular case, it’s the same trademark, same goods and services. It’s something to be avoided.

Michelle:

Fair enough. Excellent.

Anthony:

We have another case and I’ll go quickly on that one that I wanted to bring up.

As the moral of the story is, speak with your attorney first, do some research before you file your mark. Because unfortunately as far as this case was concerned, I’m sure that filing the mark was not the first step that they took.

Michelle:

Well, it could have packaging, they could have branding, they could have logos. And all of that money is now gone.

Anthony:

And I will tell you that there are attorneys listed in this particular case. So obviously I don’t know what was done beforehand. I’m not going to assume that a trademark was just filed and then let’s, and then they just decided to see what would happen afterwards, but one never knows. , but yes, I would do the research. I would do the due diligence first because if there’s something out there and it’s no, you want to know that of course I’ll tell you what sometimes. , sometimes I will do what is called a quick and dirty search and the quick and dirty search cannot give me a yes, but it can give me a no answer to a client. So yes, if I were to go on Google or the patent and trademark office a website and I were to have typed, , uncle Giuseppe’s, I’m sure I would have found this particular registration. I probably would have had further discussions with my client as to this particular issue because if the applicant were senior to the registration, then that the applicant would have had the ability to cancel the registration. Okay. And that’s not what was argued here.

Michelle:

For those of us who don’t speak legal, what you’re saying is that the person who just got rejected, if they could prove that they’ve been doing business under the, the Uncle Giuseppe name for 50 years and the existing mark was by a company that’s only five years old, they could have challenged that. Yes, exactly. Not the case here or just strictly speaking.

Anthony:

Let me praise Michelle Carter, law-to-English dictionary. We have our translator.

Michelle:

So what’s next?

Anthony:

It’s something that a lot of people like to deal with and that is: recycling.

Here’s a mark called Green Depot and its services are identified as recycling. Do you like that green depot?

Michelle:

Kinda catchy. I guess so.

Anthony:

I mean, you’re not a fan.

Michelle:

I mean, when I hear Green Depot, I’m thinking of a place that I can go and buy solar panel chargers for my laptop and rechargeable batteries and green like Home Depot, except for green, but I can see making it for green products.

Anthony:

So, in this particular case, the examining attorney at the patent trademark office found three separate green depot marks already in existence.

Oops.

One of them represented online retail store services featuring home improvement products, retail stores, featuring home improvement products. There you go. There you got right.

Maybe I have heard of Green Depot biofuel for “public advocacy to promote awareness of biofuel.” That seems to make sense.

There’s Three Green Depo 360 Network and that is for “marketing and advertising, ecologically friendly consumer services and construction and design professionals.”

And then there’s something just called Green Depot. I will tell you that the goods and services description is so long that it is practically obscene. You do want to be careful about your really long goods/services description. It’s a page long.

I will just say it says more about retail store services and everything that, that the retail store should, should sell making it look like a home depot.

Michelle:

Sure.

Anthony:

The applicant, was Green Depot for recycling.  The patent and trademark office attorney said, no, you can’t do it. And then the applicant appealed. And in this particular instance we’re dealing with, marks with designs in them. What happens often is that a trademark attorney is going to say, no, look, there’s a design. No, look, look that word as differently styled than this were,

Michelle:

It’s funny that you point that out because obviously listeners can’t see this, but I can see the logos that are associated with these, these various companies and I might not know that they are different businesses because they are all very similar. They have all in some way taken the o and depo and made a leaf out of it.

Anthony:

Okay. So, so the fact that, and you realize that these are the same company.

Michelle:

Oh, okay.

Anthony:

These are the same company. This is, this is one company and then, and then the others, right. So we only have two companies here, the one that’s applying for it. And all of these other ones are the same company yet. Right. So it’s not like the PTO is letting six companies use “green depot”. Every single one of these previous registrations is from the same company.

That’s why those look the same. I’ll have the same designer. Right, exactly. Now the, as you can see, the applicant looks very different than the registered trademarks. So, the first thing that, that this trademark attorney does is he goes different though. Look there different designs. It’s because, he’s got nothing else right.

He’s got nothing else. Because the words are exactly the same. And even the board discussed the trademark trial and appeal board discussed the fact that the marks look similar. Here it is. Applicant’s mark has the letter o formulated in the shape of a fruit with two leaves on top.

Michelle:

I think that’s supposed to be a globe. Not, not, not a fruit. I don’t think it’s supposed to be like a pineapple.

Anthony:

And the cited registration has the letter o shaped itself as a leaf. I’m going to tell you this right now, that had never ever come to be enough to create a difference because effectively the words matter. Right? Okay. So the words matter, not necessarily the design or the stylization of words that’s not going to matter as much. Then the applicant tried to describe, tried to claim that the terms green and depo themselves are weak so that the registered marks are not protectable in and of themselves.

And that’s an interesting argument except that I would, I would tend to agree that green does go towards recycling or, , environmental consciousness for lack of a better phrase. I think that’s okay. So while the board said the green is highly suggestive or merely descriptive for recycling services, that’s it. It is not necessarily descriptive for the other services that were stated here, such as the retail store or advertising, concern, ecologically friendly consumer services. Right. So while there is some relationship, it’s not necessarily the same, whereas we’re just saying, recycling.

Relationship.

That is where the trademark describes the relationship. So that’s an issue also. These are the only two companies with green and depot in the same mark. So it’s not as if there are a ton of people coming up saying, “Oh, green depot!”

It’s not quite like Walkman, everybody started calling it a Walkman

We were kids and they all had Walkmen.

Michelle:

We would go xerox something.

Anthony:

Well, yes. But that’s now your dating, , and you’re not that old.

Anthony:

You are not old enough to know that without knowing me.

The, the issue of course of how different the goods and services were, , was one that of course does come up. However, uh, the examining attorney from the patent and trademark office had a number of third party websites and other references that referenced the use of recycling with retail home improvement services.

You can probably Google that yourself.

Therefore the board said that recycling in today’s world is a very much related services to home improvement. Okay.

Therefore the marks themselves were disallowed. I don’t think that is quite as clear cut as the last one, but I think that a little bit of work probably would have shown that.

Michelle:

I don’t really think that that’s that big of a leap.

Anthony:

I agree.

I’m, I’m not going to talk about any more cases, but I think we talked about the fact that you need to do the due diligence, right?

In order to create a marketing need to talk to experts, you need to talk to your branding company. Any branding company will do is hire branding company and have the branding company and your IP lawyer work somehow work hand in hand. And remember, if you’re going to license, your mark; frankly I think if you’re going, if your business is going to have a registered mark, it should be stuck somewhere in the back.

Like what else could this mark be used for other than the core business, right.

There are standards in licensing. I’ve done licensing apparel, apparel licensing agreements, and you need to make sure that that standard is there regardless of the license. Makes a lot of sense. Alrighty. I guess we’re going to be finished. How’s that sound?

Michelle:

I think that sounds good.

Anthony:

Wonderful. How can people reach you?

Michelle:

Oh, they can go to my website, Michelle-carter.com.  Michelle with two L’s as it should be spelled.

Anthony:

And of course you found me, so I hope everyone knows how to reach me. But, uh, you can visit my law website at vernalaw.com.