Intel on when to draw the line on infringement suits – guest post by Cheryl Hodgson
Attorney Cheryl Hodgson has done several Art Licensing Info Ask Calls with our community and has agreed to do another on August 18, 2010. You can submit your question anything at www.AskCherylHodgson.com.
Trademarks have been a topic of conversation and will be well into the future, I’m sure. They are much more complicated than copyrighting your art and harder to police and enforce. Cheryl recently posted a great example on her blog and has given me permission to post part of it here too. There is a link at the end if you want to get the full story.
It is not unusual for companies with famous marks such as “eBay” or “McDonalds” to file trademark infringement suits against competitors, especially when trying to avoid confusion in the marketplace. But the number and nature of suits filed by Intel, the world’s largest semiconductor company, leaves the impression that it is an overprotective bully, without knowledge that “intel” is common shorthand for the word “intelligence.”
Since 2008, Intel has filed infringement and dilution suits against at least 20 other companies (mostly small ones) for using the word “intel” in names and domains, even when there is obviously no similarity in goods or services or any possibility of consumer confusion.
Examples of recent suits include Intel’s infringement case against a jeans company with “intel” in its name and a travel agency by the name of Intellife Travel. Trademarks only cover specific areas of business, and because Intel sells microprocessors, not clothes or travel services, both of these suits were filed without consideration of basic trademark interpretation.
Click here to read the full article…
Here’s to your creative and legally protected success!
– Tara Reed
Branding the Artist: Added Protection to Copyright for Art?
This is another guest blog post by attorney Cheryl Hodgson, one of the Art Licensing Info experts and Ask Call participants.
While a copyright is valid without registration, the very statement is misleading. Copyright registration is essential to preserve key remedies for infringement. Unless registered prior to infringement, attorney’s fees and statutory damages are not available. It is often difficult, if not impossible, to prove actual damages or profits attributable to theft of a copyrighted work. Moreover, without the threat of having to pay attorney’s fees to the copyright owner, there is little, if any, chance of finding counsel to bring a costly and drawn out infringement action on a speculative basis. Establishing a strong brand identity for a particular character or product line can serve as an added source of protection and increase the value of the Intellectual Property beyond mere copyright.
An artist’s name, as well as names and logos for particular product lines, can also be protected as trademarks for the goods on which they are licensed. For example, characters from Star Wars have been on bedding, toys, and just about everything else. While the artistic expression of a character remains protectible by copyright, registration of the character and/or its name on the various products as a trademark has been a strategy of film studios for many years. The character becomes part of the “branded entertainment” package that not only brings in additional revenues but helps create wide spread exposure and recognition of the character as a trademark.
Trade Dress protection offers tremendous opportunities to expand IP protection beyond copyright, especially where artists develop a unique use of color combinations and/or designs which become identified with them. Developing protectible trade dress requires advance planning since use must be more than “just another pretty picture.”
Product packaging and designs, including color combinations and artistic images, can function as trade dress, provided they are not used in a merely ornamental manner. To be an inherently distinctive aspect of trade dress, a design should “come out into the spotlight of real trademark significance” and ‘hit the buyer in the eye.” See 1 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition §7:28 (4th ed. 2000). “Use of distinctive design elements must be in a manner so unusual, unique, or unexpected as to be “automatically perceived by customers as an indicator of origin – a trademark.” Id. §8:13. One case example was the use of a rose design as background on a CLARINS product packaging. Registration of the rose background was refused since use was only as decorative background, not as a mark signifying the source of the products.
With proper counsel, visual artists could well do both, namely maintaining the artist aspect of the use, but also creating an additional use consistent across many design groups that come to signify the artist’s work.
Here’s to your creative and defendable success!
– Tara Reed
P.S. Subscribe to or read Cheryl’s blog to get even more great legal insights – www.BrandAideBlog.com
P.P.S. To register your art with the Library of Congress, start at www.copyright.gov
Oprah’s “aha moment”— Is this your trademark’s “aha moment?” – Guest Post by Cheryl Hodgson
The following blog post has been re-printed with the permission of the author, attorney Cheryl Hodgson who has done two great “Ask” calls, the most recent on January 20, 2010. Read on to get some interesting food for thought about trademarks.
“Aha moment.” What do you think of when you hear that phrase? Or should I ask who do you think of? Oprah Winfrey would like it to be her! However, after her recent settlement with Mutual of Omaha insurance company, she might not be the only one that can use the popular phrase.
Oprah’s production company, Harpo Productions, had originally claimed that “aha moment” was a trademark from her television show. At oprah.com, you will find numerous videos showing the “aha moments” of various celebrity guests. Some of those moments include, “finding a different kind of happiness, learning to prioritize, and the courage to do something new.”
Harpo learned that Mutual of Omaha was using the slogan “official sponsor of the aha moment,” and sent them a letter asking them to stop use. Omaha responded by filing a lawsuit in the U.S. District Court in Omaha arguing that they had already been granted preliminary approval of a federal trademark for the slogan.
Harpo had previously applied for trademark protection of “aha moments” in entertainment services and in magazines, while Omaha applied to register “Proud sponsor of life’s aha moments,” “Official sponsor of life’s aha moments,” and “Celebrating life’s aha moments” in the insurance industry.
In doing a Google search, I found that Omaha also owns the domain <ahamoment.com> where they describe “A moment of clarity, the aha moment is a defining moment where you gain real wisdom—wisdom you can use to change your life.”
Even though Oprah had made the mark famous, Omaha alleged that she failed to police the mark and there was no opposition to its trademark application. The case was settled out of court. This story can be your “aha moment” in brand protection. I’ve written much about the importance of developing and maintaining a trademark monitoring program. Read our earlier post: http://brandaideblog.com. Enforcement means having a watch program in place to monitor new filings and counsel to give prompt notice of potential conflicts. Failure to police can mean complete loss of rights.
This all might not even matter much longer anyway, now that Oprah has officially announced her talk show will end September 9, 2011. Aha…
For more information on the importance of policing and monitoring your trademarks in the digital age, sign up for our blog and we’ll send you a free chapter from the Guide to Building and Protecting a Valuable Brand on the Internet, based upon the INSURE™ Brand Protect Sequence.
The lesson I learned? If you register a trademark, you better watch and enforce your rights because the “You Snooze, You Lose” rule applies!
Learn more about and from Cheryl Hodgson on her blog at www.BrandAideBlog.com. Watch for new art licensing information products from her in the near future!
– Tara
P.S. Get your free copy of Cheryl’s first “Art Licensing Info Monthly Ask Call” July 2009 mp3 replay if you haven’t already. The January 20, 2010 audio replay (1 hour long) is available for $15 thru 1/31 and $25 after that.
January "Ask" Call: Attorney Cheryl Hodgson, Wednesday, January 20, 2010
I’m excited to announce (or remind you) that Attorney Cheryl Hodgson will be joining me for this month’s “Art Licensing Monthly Ask Call”. She did her first call in July and over 700 people have downloaded the free mp3 full of valuable information. If you didn’t get your copy – you will receive a download link when you register for the January call.
These calls are made great by artists like you who submit their questions… so what do you want to know? Are you confused about copyrights, trademarks or art licensing contracts? What to do to protect your work? Think about it, then head to www.AskCherylHodgson.com and give us your thoughts! We will choose 10-15 to answer in the hour – based on overall results and applicability to the most people. (And if we didn’t already answer it on the first call of course!)
Cheryl was kind enough to send me a really cool and artsy Christmas gift – so watch my video thank you and learn a little bit more about her. Hope you can join us on January 20th!
Here’s to your creative success!
– Tara
P.S. Be sure to check out Cheryl’s blog for lots of interesting branding, copyright, trademark and other legal issues… www.BrandAideBlog.com
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