Category: Arts Law

Trademark and Domain Names:

To dispute a domain name, one must file a complaint in hard copy, and electronically with a dispute resolution service provider approved by ICANN and the person filing the claim must prove three things:

Trademark and Domain Names:

I’m always being asked about domain name issues, so I thought it was time to post a quick primer on the intersection of domain names and Trademark.

The Internet Corporation for Assigned Names and Numbers (ICANN) oversees the domain name system and is charged with the duties of assigning names and numbers (which it delegates to companies like Network Solutions), and developing procedures to resolve disputes of the registration of domain names. Under the current system, the initial registration of very similar domain names to wholly unrelated entities is permitted. It’s a first-come, first-served system, so if a search shows that nobody else has registered the EXACT string of letters and numbers being requested as a domain name, then the domain issues. This domain registration process ignores any trademark issues.

The United States Patent and Trademark Office (USPTO) will register a domain name as a trademark ONLY IF the domain name IS the trademark. For instance, “amazon.com” IS THE NAME of the company – the indicator of source – the trademark: and is thus eligible for registration with the USPTO. By contrast “houchinlaw.com” is just the location on the Web to find information about my practice, not the NAME of my practice, so my domain is NOT eligible for registration with the USPTO.

To dispute a domain name, one must file a complaint in hard copy, and electronically with a dispute resolution service provider approved by ICANN and the person filing the claim must prove three things:
1. The domain name is identical or confusing ly similar to a trademark or service mark in which the complainant has rights;
2. The domain name holder has no rights or legitimate interests in respect of the domain name in question; AND
3. The domain name has been registered AND IS BEING USED in bad faith.

The remedies for the situation include:
1. transferring the domain name to the complaining TM owner;
2. leaving things as they were with the domain name controlled by the respondent; OR
3. canceling the domain name altogether.

The Anticybersquatting Consumer Protection Act (ACPA) of 1999 was created to respond to the e-savvy entrepreneurs who amassed domain names incorporating protected trademarks for their own exploitation via sale or use (holding a famous domain hostage until the corporate owner figured out they needed to register their brands’ domains…). The requirements for protection under this law include:
1. a bad-faith intent to profit from the mark;
2. the mark is distinctive of famous at the time of registration of the domain name; and
3. the domain name is identical or confusingly similar to (in the case of a famous mark, it may alternatively be proved dilutive of) the mark..

Remedies for these actions (which have pretty much shaken out by now because brand marketers are savvy enough to register the domain names BEFORE investing in huge branding campaigns…) include:
1. cancellation of the domain name;
2. transfer of the domain name;
3. injunctions;
4. profits;
5. statutory damages between $1,000 and $100,000 per domain.

In addition to these actions, one can also pursue standard trademark infringement theories including normal consumer confusion factors, initial interest confusion (especially in infringing use of metatags, pop-ups, and banner advertising), and dilution in the case of well-known trademarks.

Artocracy

‘artocracy,’ an elite based on mastery of visual arts, music, and drama.

Another quote in the March issue of Fast Company Magazine got me thinking this weekend. Fast Company says it’s a “good call.” Here’s the quote:

“First came the aristocracy, an elite based on bloodline. Then came the meritocracy, an elite based on academic achievement. Next will be what I’d call an ‘artocracy,’ an elite based on mastery of visual arts, music, and drama.” The person cited as the author of the quote is Daniel H. Pink (author of the books A Whole New Mind: Moving from the Information age to the Conceptual Age, and Free Agent Nation. www.danpink.com).

I have not read those books, but I’m going to do so as soon as I can.

While I believe that education must return to more of a liberal arts/problem-solving focus, I have a hard time with the concept of any sort of “cracy” – an elite of any kind really kind of bothers me. Maybe that feeling comes from being raised on a hog farm in Iowa. My background is far from “elite” – at least in my mind. While we didn’t have a lot of money, I went to a good public school (47 people in my graduating class – 25 of us went to kindergarden together), and I was never hungry. I have to recognize that there are milllions of people in the world that would consider my childhood “elite”… While elitism bothers me, I’m not an advocate of forced mediocracy – kids should get graded on tests.

The problem I have with this quote is that in order to become elite based on a mastery of the visual arts, music, and drama a person probably has to have time to practice. Time to practice means time away from earning money to pay the rent – at least until the practice has paid off and the arts in question bring in enough money to pay the bills that add up while the person is off practicing.

Who’s to pay the bills in the interim? The patron of the artist is still the elite until the artist makes the “big time”. Who is that patron, in this age, probably someone from the aristocracy (who made their money the old-fashioned way – inhertance) or from the mertitocracy. And, when you really think about it, isn’t becoming an elite artists really just a form of merit-based respect.

No, I don’t think “meritocracy” will be REPLACED by “artocracy” – it will simply be (and is already) subdivided into different categories of earned, merit-based, respect.

Ongoing Copyright Infringement

It happened again last week. I received a call from a Web designer (let’s call her “Jill”) who said her work had been ripped off. Jill had created a Web site (call it “site 1”) for an organization. This organization then needed another site with similar functionality, but instead of hiring Jill to do the second site (“site 2”), another person (let’s call him “Ted”) volunteered to build site 2.

Turns out Ted just copied Jill’s images and code (not even changing the file names) to make site 2.

Then I asked Jill the big question, “have you registered the copyright for the image and the code?” “No,” she answered in a dejected tone. I told her it was time to get that done and that she’s actually still in pretty good shape.

Now, many of you might be wondering why I would say that – especially if you’ve read my earlier post “$30 Insurance Policy.” One would think that since site 2 (the infringement) was posted before she registered her work, she not be eligible for statutory damages and attorney fees and be limited only to actual damages. In this case actual damages would probably have been a maximum of the fee Jill charged to create the first site – under $5,000.00.

The kicker is that an infringement occurs EVERY TIME someone loads site 2 into the RAM of their computer. Simply viewing the infringing site creates a copy and thus counts as an infringement.

The ACTION PLAN:

I told Jill to register her image and the code for the site right away. A copyright registration is valid from the day it’s received at the copyright office (assuming it’s a valid registration – but that’s another issue…). Any infringement that happens after the date of registration is eligible for an award of statutory damages and attorney fees.

As long as Site 2 (the infringing site) is live after the date of registration, thus infringing Jill’s registered copyright, she has the pieces in place to file a copyright infringement suit in Federal Court and if she wins (which is very likely in this case), she could be award enough money to make the whole process worth her while. Of course, the odds are that the organization, which is liable with the actual designer, and Ted would both remove the infringing site and pay Jill a reasonable sum before this ever hit a court room.

$45 Insurance Policy

$45 Creative Insurance Policy

Creative people are always trying to save a buck. That’s not a bad thing unless it’s in the situation of deciding to save the $45 fee to register a copyright. If you think your song, art, design, or other creative expression is going to be exposed to the public in some form – and that your work is good enough that someone might “accidentally” be a little too “inspired” by your work (in other words: rip it off) – then the $45 is the best money you’ll ever spend.

Here’s why:

1. All copyright infringement litigation must be conducted in Federal Court – and to get into Federal Court you have to have a valid registration before you can even file. In other words, to enforce your rights, you have to file anyway – so you should file right after you’ve created the work in question.

2. If you file BEFORE the infringing action (before your work gets ripped off) then you are eligible to receive both “statutory damages” of anywhere between $750 and $30,000 per infringement (each song on a CD, each photo, etc. produced is an infringement) – and up to $150,000 per infringement if the infringement was “willfully committed.” Additionally, if the valid registration was filed before the infringing act, you can also collect your attorney fees.

3. If you DO NOT file before the action, then you have to prove your “actual” damages (which can be hard in many cases) and you have to pay your own attorney fees.

What does this really mean? Let’s say you would sell the rights to use a photo in a magazine for $5,000. Now, let’s say the magazine prints the photo without your permission or paying you anything in a run of 100,000 copies – willfully ripping you off. If you filed the registration before the infringement, then you could collect somewhere between $750 and $150,000 for each of the photo they used without permission (NOT for each copy produced) – plus your attorney fees. This is strong incentive for the magazine to settle with you before trial. If you had not filed the registration before the infringement, then you will have to prove the actual damages (in this case probably a max of $5,000) in Federal Court. You’ll have to pay your own attorney fees – probably at least $10,000 to take a copyright case through trial in Federal Court. So, they may have ripped you off, but you’ll be at least $5,000 out of pocket to enforce your rights.

Registering your work is easy. Just go to www.copyright.gov and download the appropriate form and follow the instructions. If you need help, call me.