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

Dear Rich: I have a coffee business and called it 'espresso pronto.' I failed to get a trademark for it. But I did get a domain name associated with it (the dot com version). A couple of years ago McDonald's decided to get into coffee and chose my business name and got a trademark for it. I changed my business name but kept the domain name. Now I have received a letter from McDonalds stating that not only do they want me to stop promoting my domain but they want ownership of it. Can they do this? Frankly, as much as we'd hate to get involved in a dispute with the folks who invented the "Happy Meal," we're not clear who has the rights to the domain. You'll need to go through the long answer (below). 

Dear Rich: I did a photo shoot for a pin up site where I dressed as a stormtrooper and took the costume off in pieces throughout the shoot. I am a girl, so clearly not one of George Lucas's original stormtroopers, just a girl dressed as one. However, I know that George Lucas has the copyright on stormtroopers, so I was wondering how the law stands. The short answer to your question is that you probably won't run into a problem. Your use is an infringement -- Lucas controls the exclusive right to reproduce the stormtrooper imagery. But if we were a betting blog, we'd bet that Lucas' lawyers probably won't notice (or care about your use). The Lucas legal team is tolerant of many personal uses of stormtrooper costumes and is more likely to take action if the infringement has a damaging impact on their properties. For example, Lucasfilm has gone after those who made unauthorized stormtrooper costumes, and sellers of knock-off light sabers. Even if the lawyers decide to go after your use, it will likely be done in stages -- that is, you'll be given the opportunity to remove the infringing material first and if you don't, then the legal team may bring out the proton torpedoes. Of course, you can always try the novel fair use argument that removing a character's clothing is ultimately a transformative use. (Just as many have argued that nude dancing is a form of free speech.) As for whether anyone's contemplated female stormtroopers, the Dear Rich staff is informed and believes that there is a  battalion of Femtroopers ready to battle for (or is it against?) the Empire.

Dear Rich: My wife sells hand-made jewelry and recently started putting it up for sale in a local shop and asked me to help her get an e-mail address. Knowing a bit or two about the Internet I decided the best way to do this was to register a domain name and then setup a Google Apps account to host the mail. Everything was set up and fine and then last week I received an  e-mail from a law firm saying that the domain I had registered was an "infringing domain" and that the use of such a domain name that incorporates their trademark yadda yadda. Now they say that I have 7 days to respond and transfer the domain name to them and provide a sworn affidavit attesting that I ceased selling any goods that infringe on their trademark. If my wife's little side business is not related to anything that the other company sells, do they have any right to order me to turn over my domain name etc.? I didn't think that anyone could come after you for just requesting a domain name. I'm so glad you asked. The short answer to your question is "More information is needed." You're correct about the basic trademark principles -- if you're not likely to confuse consumers, then there's no trademark infringement. That's why, for example, different companies can use Arrow as a trademark for shirts and staplers and electronics (although only one company can have the domain name, www.arrow.com). Under another theory (dilution), a company with a  famous trademark can stop you from using a similar trademark even if the goods or services are not related -- for example, Microsoft could stop a company from selling Microsoft Vista dog food.

A note to our readers: Thanks so much for all the questions. The Dear Rich staff is currently experiencing delays of two to three weeks. Our most recent entry about paintings and posters triggered some followup questions, so we'd  like to get those out of the way.

Question #1: Dear Rich: You said that painters control the right to make posters from their  paintings. How hard is it for the painter to enforce? How often does it get enforced? I'm so glad you asked. The chances of enforcement usually depend on the ability of the copyright owner to attract and pay an attorney, which in turn depends on the lawyer's assessment of the odds for victory and the depth of the infringer's pockets.

Question #2: Dear Rich: It seems like a painting is the result of many contributions and elements. Someone creates the pigment, someone manufactures the paint, someone makes the brushes. Why do the rights end with the artist? Why should the artist's rights be any different than the rights of a house painter? I'm so glad you asked. Assuming you're asking the question, "Why does our government reward artists with copyright?" the answer is because the wealth of a nation is sometimes measured by its patents, copyrights, and trademarks (intellectual property). These products of the mind bring in (and lose) big bucks, and so government grants a limited monopoly to encourage their creation. By the way, those who create tools for artists can patent their ideas as well -- for example, the invention of the collapsible tube is credited with the birth of Impressionism.

Question #3: Dear Rich: I have a friend who is a patent attorney who said it isn't necessary to copyright my paintings or place a small letter "C" at the bottom of my painting. He claims that if I have signed the painting and someone copies it and then sells it on the open market that they are open for a lawsuit. If, however, he copies the painting and gives it to friends there is no problem. I think the copyright thing is just another lawyer scam, or a small "c" at the bottom of the painting is like a sign saying "beware of the dog." I'm so glad you asked (though the Dear Rich staff is unsure if there is a question here). Your patent attorney friend is correct that you do not need to register a copyright (though there are benefits for doing so), and since March 1989, you don't need to  include copyright notice (though it's a good idea to do so). As for copying the painting and giving it to your friends, we're not clear as to your friend's source. Although there are rules regarding "limited publications,"  there is no "friends" exemption for reproducing visual images. Finally, as much as we like your "beware of the dog" analogy, we think you are incorrect that copyright is a "lawyer scam" -- and we think Charles Dickens and Eminem would both agree with our conclusion.

Dear Rich: I have a question. My cousin is working on a little book for high school students planning to go to college. She wants to use the clip art from Microsoft Word. Do you know if there is a copyright problem in doing so? I'm so glad you asked. Unfortunately, there is a problem. According to Microsoft's official permission statement, "You may not use clip art to illustrate the chapters of a book." The Dear Rich staff believes that if your publication is limited to a group of local high school students, there is unlikely  to be an issue (unless the students have relatives on the Microsoft legal team). However, if your cousin seeks to sign a publishing deal, there will be an issue when the publisher seeks clearance. 

Dear Rich: I have a question. Would I be allowed to have an image of a licenced character -- let's say Homer Simpson -- as an example on my website? The site will have Google's Adsense on it, so technically I will be commercially exploiting a licensed character even if the revenue will be quite small. What sort of copyright info would I need to display on my website as not to be in breach of any copyright rules and regs? I'm so glad you asked. Regardless of how little money you make at your site, using a character like Homer Simpson without permission will violate copyright laws and most likely violate trademark laws. That said, 20th Century Fox (Homer's "owner") appears to be somewhat tolerant of website reproductions of "stationary-frame" images -- at least they were ten years ago, based on this letter from Fox's lawyers). That letter also provides proprietary and disclaimer language that you can add at your site. Fox obviously polices unauthorized Simpsons uses (including infringements by the U.S.  government). But Fox's hesitancy to go after single-image reproductions of Simpsons characters may have something to do with angering fans, as well as the huge task of going after the large volume of unauthorized images of Homer on the web. (Our last Google image search showed 586,000 results. D'oh!). Nevertheless, the Dear Rich staff believes that if you wish to stay below Fox's radar, one way would be to avoid providing audio or video clips, or any other downloadable Simpsons materials.

Dear Rich: I have a question. My business partner and I have acquired trademark registration for the name of our business. We bought the domain name (.com), as well as about nine different extensions (.net, .org, etc.), and plural versions in nine extensions as well. We also have registered copyright protection on the name. I was going to use the name for a blog at the Blogspot domain -- but it is already taken. (The person who had it is no longer using it and has started a different blog.) Do we have any legal rights to the name when it is used as part of the domain name at Blogspot. If so, can we ask a confusingly similar website/blog to cease and desist? I'm so glad you asked. The short answer to your questions is, "Probably."

In your case, you registered in two classes and one of them included "On-line journals, namely, blogs featuring self-help, personal growth, and gratitude." So, you'll have a good basis to stop a blog that offers information or commentary under a confusingly similar name. That is, if you went to court, you would have a good chance of prevailing.

However, you will have difficulty asserting your rights against the blogger under international cybersquatting rules, even if the blogger acted in bad faith, since all Blogspot.com blogs are subdomains. In other words, bloggers at Blogspot.com don't "own" domains; they've acquired limited rights to post under Blogger's (that's the company that runs the service) terms of service. However, if the blog's name is misleading or confusing people as to its source, you may be able to appeal to Blogger (owned by Google, Inc., btw) based on a violation of its blog content rules. Write to them and explain the situation; they may be able to help you out.

The Dear Rich staff admires your diligence in acquiring all these forms of protection, but the staff is confused about your statement that you have acquired copyright protection in the name, since copyright does not extend to names

Dear Rich: Is it possible to patent a method of sale for a product component? For example, let's say cigarettes existed but nobody had ever separately sold cigarette filters and papers. Would a system for selling such product components be patentable? This may be a bad example, but what I'm trying to find out is whether I could patent the way a particular product is sold by breaking it into separate parts and giving the consumer a more tailored choice. I'm so glad you asked. The short answer is 'probably not,' and yes, your analogy as to the novelty of component sales of filters and cigarette papers may not be a good one.The Dear Rich staff consulted with patent attorney David Pressman, who said that since the method doesn't transform physically and is not tied to technology, it would not qualify as patentable subject matter. The Federal Circuit, a federal appeals court for patents, is currently considering In re Bilski, a case that could affect your situation. Bilski is a dispute over whether a computer model that assesses risks for hedge funds (how timely) is patentable. The USPTO held that the process was not patentable because it is not tied to a particular machine, nor does it transform a tangible article to a different state. If the Federal Circuit upholds this standard, your process claim (and many other business methods) will not be considered as patentable subject matter. If the Bilski case is reversed (it can be appealed to the Supreme Court), your process is novel, and it provides a new and unexpected result, it may be patentable.

Dear Rich: I have a question. Why should I care about the Harry Potter case? Isn't it just another example of a huge megacorp using copyright law to crush the little guy? I'm so glad you asked. I don't know why you should care about the Harry Potter case. And I don't know why you should care enough to ask me why you should care about it. I don't even know why you should care about reading the answer to your question. What people care about and why they care about it is a mystery to me.

The Harry Potter lawsuit -- in which a publisher and author are attempting to stop publication of a Harry Potter lexicon -- is not an unusual copyright dispute. Maybe you're too young to remember when J.D. Salinger successfully stopped a biographer from using his unpublished letters, or when ex-president Ford stopped The Nation from printing excerpts from his unpublished memoir. But you must be old enough to remember when the producers of the television show Twin Peaks stopped publication of a Twin Peaks guide, or when the producers of Seinfeld stopped a company from publishing a book of trivia questions about the Seinfeld television series. (Talk about being re-gifted!) In these situations, the courts have done a pretty decent job of separating those cases in which the author is being exploited (not a fair use) from those cases in which the author is being explained (fair use).

As for using copyright law to crush the little guy, that knee-jerk characterization may apply in cases of RIAA smackdowns but misses the boat here. (If anything, the little guy, armed with high-tech copying tricks, has collectively done more to crush copyright than any megacorp -- check out the many illegal Potters and the frivolous Muggles-related lawsuit.) The lexicon's author knew what was at stake when he proceeded and even insisted on an indemnity clause -- a provision that saved him from having to pay any attorney fees, damages, or court costs. (Kudos to his attorney.) Time-Warner and Rowling have been reasonable in permitting the free web-based version of the lexicon for years. The lexicon's publisher understood the realities -- the real money is made selling copyrighted units of content.

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.