Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Dear Rich: I have a question. I got a cease and desist letter from a law firm and I'd like to post it on my website so the world can see what a jerk this guy is. Is that legal? I'm so glad you asked. Publishing cease and desist letters on the Internet is not uncommon and there are even searchable C&D databases (in case you need help writing one). Lawyers rarely object to the practice either because they don't want more attention, or because they're aware that they're on tenuous first amendment or fair use grounds. However, some lawyers throw caution to the wind and plunge ahead with attempts to stop republication of their C&D letters. (You can read this lawyer's original cease and desist letter (.pdf) and a well-reasoned response to it by Public Citizen (.pdf).) If faced with an overly assertive law firm, keep the following in mind:

1. Getting a certificate of copyright registration for a cease and desist letter is not very hard. The hurdles for federal registration are fairly low and a cease and desist letter may meet those standards.

2. Enforcing copyright in C&D letters is difficult because of the merger doctrine. Copyright law will not protect a work if there are a limited number of ways of expressing the underlying idea. (And how many ways are there to say cease and desist?)

3. Reproduction of letters may be permitted under fair use principles. Infringing activity is often permitted for the sake of commentary and/or criticism.

Anyway, I certainly hope nobody puts a chill on republication of C&D letters. They are a great source of amusement and sometimes a matter of national security. And, for lawyers like me, it's often the only way to get published.

Dear Rich: I have a question. I would like to create an online game that is similar to a popular board game. How I can do this without getting sued? I'm so glad you asked. Initially, I must remind you that there is no sue-free solution to anything. Anyone who can afford a few hours of a lawyer's time and some filing fees can sue you. However, what I think you're asking is: How do I lower the odds of being sued and reinforce the chances of victory in that lawsuit?

Start with the principle that the underlying ideas for games are usually not protected. For example, many companies have created online games based on hangman, but you'll run into a problem if your hangman game is expressed in the same way as Wheel of Fortune. To lower the odds of becoming a defendant in a lawsuit, do the following:

Don't use a name that's similar to a popular game. Stepping on the trademark of a game (particularly a famous one) is a surefire way to get dragged into court (although, occasionally the results are suprising).

Avoid copying the appearance of the packaging. Game companies feel the same way about their trade dress as they do about their trademarks (Just ask the makers of Sexual Pursuit).

Don't copy text or artwork from the game. In that case you'll be stepping on someone's copyright and unless your use is excusable under fair use or similar principles, judges may not be sympathetic. However, the copyright in some board games, such as Scrabble, may be 'thin' and harder to protect.

Check to see whether the game is patented. Yes, some games are protected under utility patent and design patent laws. Patent infringement lawsuits are a real drag, so check it out before your game goes live.

Move to a country where it's unlikely the game company will want to sue you. Unfortunately, in today's global village, that's becoming harder and harder to do.

Dear Rich: I have a question. I get a lot of emails that have disclaimers at the end like "This email and any files transmitted with it are confidential, etc. ... " Should my business include one of those disclaimers to protect our trade secrets? I'm so glad you asked. Feel free to use disclaimers but don't count on them to protect anything. Although there are no court cases to point to, the general consensus is that email disclaimers don't create a legally binding arrangement because the other party never agreed to the terms. (That's true even if you are a big megacorp like Time, Inc.) If something confidential is accidentally transmitted, a court will be more concerned with the contents of the email, the choice of recipient (that is, your existing relationship with the recipient), and the circumstances of the transmission. If you're concerned about protecting business trade secrets, avoid sending them in emails and take the time to create a basic trade secret protection program. Finally, the common placement of the disclaimer (at the end of the email) works against enforcement since disclaimers must be prominent (at the top of the email) to have any effect at all.

So why bother including one? It's mostly a matter of wishful thinking--that is, making a statement that an email is confidential may trick the recipient into believing it is confidential. (Another reason to use them is in the hope that yours will enter the Stupid Email Disclaimer hall of fame.)

Dear Rich: I have a question. I use a generic term as the name for my business. The U.S. Patent and Trademark Office refused my trademark registration. Can I register the initials instead? I'm so glad you asked. As you noted, the USPTO won't register a generic term as a trademark, and it uses a two-pronged test to make that determination. (Keep in mind, of course, that some terms can be generic in one field of goods but not in another -- for example, 'arrow' for archery equipment versus for men's shirts.) Using initials instead of the generic term will not guarantee you registration unless you can prove that -- in the public's mind -- the abbreviation has a meaning distinct from the underlying generic terms. So, for example, Welding Services, Inc., a company that offers welding services, will have a hard time registering 'WSI' if customers associate those initials with welding services. And as WSI recently learned in a court battle, even if the company could get protection for a stylized version of WSI, it can't stop a competitor, Welding Technology, from using its WTI logo (above). Sound complicated? Hey, when it comes to generics, even lawyers get confused.

Dear Rich: I have a question. Yesterday there was a story in the news about the Supreme Court and 'patent exhaustion.' What is patent exhaustion? I'm so glad you asked. Patent exhaustion is a legal doctrine that basically says that once a patent owner sells a product, the patent owner cannot seek further patent payments for that particular product. So, for example, if you buy a patented lawn mower, the patent owner cannot demand further royalties if you resell the mower or if you make your living mowing lawns. The principle is also known as the "first sale doctrine," a term that also applies in copyright law for a similiar principle. For example, if you buy a copyrighted item such as book or DVD, you are free to resell it without paying the copyright owner. Wait, does that rule apply for copyrighted software? Hmm... that depends on where you live. In some states, courts have held that software isn't sold; it's licensed and can only be 'resold' under the terms of an end-user license agreement. But is software protected under copyright or patent law? Actually, it can be protected under both. If software is protected under patent law, does the first sale apply to patented software or is it considered to be under license? Could I answer this some other time? I'm exhausted.

Dear Rich: I have a question. What's a patent troll and why does everybody hate them? I'm so glad you asked. A patent troll, according to Kirk Teska, author of the wonderful book Patent Savvy for Managers: Spot & Protect Valuable Innovations in Your Company (Nolo), is a "derogatory term used to describe a patent owner who sues for patent infringement but who does not make or sell any products using the patent technology." Typically, a patent troll sends many cease and desist letters to companies threatening to sue, but also offering to settle, usually at an amount that is cheaper than proceeding with the litigation. The result is that many companies agree to pay a "license fee" rather than battle what may prove to be a dubious patent. The term was coined in 2001 by an Intel attorney, referring to the original patent trolls -- attorney Raymond Niro and his client, TechSearch LLC. (Presumably, the troll reference had to do with bridge trolls, creatures who hid under bridges and exacted a toll from passers-by -- or ate them. Kids: don't try that at home.) A lot of people don't like patent trolls (and whole blogs are devoted to tracking their whereabouts). But not everybody hates them. Some consider them unfairly labeled and some inventors get rich through their efforts. And we assume that their families like them, too.

Dear Rich: I have a question. I am a romance novelist and occasionally I borrow material from other books for my historical romances. I read yesterday's question discussing cookbooks and I'm still confused about the difference between plagiarism and infringement. I'm so glad you asked. A plagiarist is a person who poses as the originator of words he did not write, ideas he did not conceive, or facts he did not discover. "Plagiarism" is not a legal term; it's an ethical term. You can plagiarize someone without infringing. For example, if a plagiarist only copies public domain materials, he can't be sued for copyright infringement. And you can infringe without plagiarizing. For example, this whole answer is pretty much lifted from chapter 14 of Stephen Fishman's book, The Public Domain. (See ... I've provided attribution; let's hope he doesn't sue-- :-)). Which is worse? A whiff of plagiarism can damage a romance novelist's reputation, while infringement means dealing with lawyers and hefty judgments.

Dear Rich: I have a question. I read that somebody was suing Jerry Seinfeld's wife over her cookbook. That makes me nervous because I wrote a cookbook and borrowed a lot of recipes from other places. Aren't all recipes in the public domain? I'm so glad you asked. As the U.S. Copyright Office explains, individual recipes are hard to protect because no matter how delicious the results, they often lack the necessary literary expression. (An unpublished recipe can be protected under trade secret law but that means all your chefs have to sign NDAs and even then it's not foolproof.) A collection of recipes, as in a cookbook, can be protected. That protection is stronger if the author adds original literary commentary and uses creativity in the selection of recipes. Beware, some cookbooks raise additional legal liability issues.

P.S. For a thorough analysis of the Seinfeld case, check out this article.

And if you want to learn more about what does and doesn't qualify as material in the public domain, pick up a copy of Attorney Stephen Fishman's book The Public Domain: How to Find Copyright-Free Writings, Music, Art & More (Nolo), now in its 3rd edition.

Dear Rich: I have a question. If all works created by the U.S. government are in the public domain, can I reproduce the Copyright Office seal at my website? I'm so glad you asked because I was just looking at the 'rebranded' (.pdf) Copyright Office seal and wondering, what was wrong with the old one? (Branding is so dumb ... even sheep hate it.) You can freely reproduce the Copyright Office seal with one exception; you can't use it in any way that indicates you are associated with or endorsed by the Copyright Office. That's because the seal is a registered trademark (Serial No. 89000946). That's right, federal agencies can own trademarks (and the trademark serial numbers always start with 89).

For more about reproducing works that are in the public domain, see The Public Domain: How to Find Copyright-Free Writings, Music, Art & More, by Attorney Stephen Fishman (Nolo).

Dear Rich: I have a question. I've tried filing a provisional patent application electronically at the patent office but the USPTO refuses to validate my application cover sheet (a PDF form). It's driving me nuts because I can't figure out the problem. I'm so glad you asked. Chances are you're using the wrong version of Adobe Acrobat. Although many people are using Acrobat 8.0 (and higher), the USPTO EFS system currently only accepts forms prepared with Acrobat 7.0.8 which you can obtain using the links on this USPTO page. (You can get all the EFS requirements here.) And of course, if you're interested in the other kind of acrobat...

Dear Rich: I have a question. Last week, you talked about trademark logos. How do you search the USPTO database to find conflicting design logos? I'm so glad you asked. You can search design logos as follows:

1. go to the USPTO website


2. under Trademarks (on the left), click "Search TM Database"


3. then click "Free Form Search (Advanced)"


4. enter a word or words in the search box that signify what you're looking for followed by [DE] (which stands for "design element").

For more on trademarks, check out Attorney Stephen Elias' book Trademark: Legal Care for Your Business & Product Name (Nolo), now in its 8th edition.

Dear Rich: My band has been using the same name as a reggae band from the 70s. We even got a federal registration to use the name. Can we go after the original band if they continue to use the name and domain name? I'm so glad you asked. That reminds me of a recent case from the state of Washington involving The Wailers -- a regional rock group from Tacoma, who, among other accomplishments, claim to have inspired the Kingsmen to record "Louie Louie" (though others may disagree). The Tacoma Wailers sued The Wailers from Jamaica -- the reggae band that once backed Bob Marley-- for trademark infringement and cybersquatting. Alas, a court ruled there was no cybersquatting because the reggae band acted in good faith to get the domain name. And the the Tacoma band lost its trademark claim on the basis of laches--a legal principle which basically means the band waited too long (or "slept on its rights," in legal parlance).

To learn more about trademark law and its little nuances, check out Trademark: Legal Care for Your Business & Product Name, by Attorney Stephen R. Elias (Nolo).

Dear Rich: I have a question. I sell karaoke machines. Do I have to pay a separate fee to display the lyrics? Or does the fee I paid for the music cover the lyrics, too? I'm so glad you asked. Yes, you will have to get a separate license for the lyrics even if you paid the compulsory license fee for the music. That's because the display of the lyrics on the screen (in conjunction with the music) is considered an audiovisual work and requires a separate permission. That's the word from the Ninth Circuit in Leadsinger, Inc. v BMG Music Publishing (.pdf) (which harmonized California courts with New York karaoke case law). In Leadsinger, the karaoke company argued that displaying the lyrics was a fair use (claiming it taught users how to sing), but that argument didn't fly with the judges who must have been watching this.

And, to find out how you can license copyrighted materials like this,  see the latest edition of my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off (Nolo).

Dear Rich. I have a question. I'm a dentist and would like to use a crocodile as my logo. Will I get sued by Lacoste? I'm so glad you asked. Your question reminds me of the plight of two British dentists who, in their quest to fix British teeth, used a green crocodile as their logo. Lacoste sued over similarities to its logo but the UK Intellectual Property Office ruled (.pdf) that (1) the marks were distinguishable (partially because the dentists used a composite mark--a mark that combines words and logo), and (2) that consumers were unlikely to confuse polo shirts with root canals. (Click for more information about teeth and crocodiles.)

To learn more about trademark here on this side of the pond, check out the 8th edition of Trademark: Legal Care for Your Business & Product Name, by Attorney Stephen R. Elias (Nolo).

Dear Rich: I have a question. What if I painted a logo for the Stanford football team on some rocks. Could I sell them at Stanford games? I'm so glad you asked. There are two problems with your plan. First, team logos are protected as registered trademarks, so unless you licensed the use, you'd probably get a nasty letter from someone like Heath Price of the Collegiate Licensing Company, who recently announced, "[I]f somebody took a rock, and they painted Michigan Wolverines in blue and gold on that rock and went out to try and sell it as a for-sale product, that's protected." The second problem is that if you sell them at games and some of your customers throw them at competing fans, that could lead to personal liability issues ... although it could also increase the demand for caskets with sports team logos.

To learn more about licensing and how you can legally obtain a logo like the Cardinal's, pick up a copy of my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off (Nolo).

Dear Rich: I have a question. How do I get a patent on a golf club? I'm so glad you asked, because coincidentally I was just reading about a design patent for a one-fingered golf glove. As you may know, there are two types of patents associated with golf products: design patents which give the inventor rights over design; and utility patents which gives the inventor rights over the functioning invention. You can learn how to get both by reviewing the patent information at Nolo. Or if you're just interested in golf patents, check out Dave Dawsey's Golf Patents website. Dave (the "Golf Lawyer with a Grip on the Industry") tees off daily with fresh IP golf news.

And, if you've already decided to go ahead with applying for a patent for your club, you might find Nolo's Patent Pending Now! software useful for filing that all-important provisional patent application, or PPA.

Dear Rich: I have a question. How long does it take to get a certificate of registration after using the Copyright Office's new electronic filing system? I'm so glad you asked, because on December 31, 2007, I received a certificate of registration for a work that I filed on September 27, 2007. So the turnaround is approximately three months. And don't expect the traditional double-sided certificate with the red seal and examiner's initials. The Copyright Office is unveiling some new formats for the certificate including a just-the-facts form and a more detailed, Web 2.0-style form. You can read the whole story on the new forms at the Copyright Office.

Grand total spent on electronic filing: 15 minutes to file; 90 days for receipt of certificate of registration.

To learn more about the process of protecting your works from copycats, pick up a copy of The Copyright Handbook: What Every Writer Needs to Know, by Attorney Stephen Fishman (Nolo).