Dear Rich: I have a question. I want to trademark a product that I will sell primarily in gay catalogs and I want to use the word “queer” as part of my trademark. I’ve heard that I’ll have trouble if I try to register it. Since registration costs $325, I’d like to know if that’s true before I file. I’m so glad you asked. There are dozens of trademarks with the word “queer” that have qualified for federal registration including Queer Beer, Queer Channel, Queer Duck, Queer Eye for the Straight Guy, and my personal favorite, The Coast is Queer. So it’s unlikely that the USPTO will hassle you based on that term alone. It’s true that the USPTO can reject marks that are scandalous and twice rejected the “Dykes on Bikes” trademark. However, that mark eventually achieved registration after the organization sponsoring the registration demonstrated that the term “dyke” was not disparaging to lesbians. (The trademark also survived a legal attack by a lawyer who claimed that the term denigrated men.) It’s true that some terms are still considered as scandalous and derogatory but, assuming nobody is using a similar mark on related goods, you won’t end up donating $325 to the feds. P.S. Did you know you can save $50 by filing your trademark as a TEAS PLUS application?
Dear Rich: I have a question. My boyfriend has a company that sells tea. I thought up a name for one of the teas — Serendipi-Tea — and he used it without asking me. He even filed a trademark application without naming me! Doesn’t he have to get my permission? I’m so glad you asked. No, your boyfriend does not need to ask your permission to use the name you created for a trademark (although it might have been polite). Trademark rights are granted to the first person to use the term in commerce, not the person who thinks up the name. Hence the legal motto: No trade — no trademark. Your clever wordplay is also not protected under copyright law because copyright does not protect names and short phrases. You may wonder how those high-priced naming gurus get paid when they think up names for big companies — they have written contracts that require payment for the work. So unless your boyfriend had an agreement with you, you’re not entitled to anything. Perhaps the deeper and more meaningful question is whether intellectual property issues will drive a permanent wedge between you and your boyfriend. I would like to think not. Remember, your boyfriend only acquires rights to use the term in regards to tea. You’re alway free to use the name as the title of your tell-all memoir.
Dear Rich: I have a question. I’m in charge of a website for our local elementary school. We have a program where students can upload their drawings. Someone told me that I have to get permission from the parents or else I am in violation of the law. Is that true? I’m so glad you asked. The law that you are probably referring to is the Children’s Online Privacy Protection Act (COPPA). You need to be concerned about COPPA if your website is directed at children (under 13 years of age) and it collects information “that would allow someone to identify or contact the child,” — for example, names, addresses, phone numbers, email addresses, and similar information. COPPA also applies if you’re using cookies (no, not the chewable kind) to track the child’s activity. So, in the case of your website, you would want to be sure that the drawings that are uploaded do not contain personally identifiable information — for example, the child’s address is written on the drawing of a house, a license plate is written on a drawing of a car, or names are used to identify family members . If you are collecting personally identifiable information, you’ll need to comply with the Act’s requirement for parental permission. What’s the biggest fine so far for violation of COPPA? $1 million.
Dear Rich: I have a question. I’m starting a literary website and I’d like to put up a lot of book covers. Do I have to get permission from the book publishers? I’m so glad you asked. Chances are you won’t have to ask for permission because of an exception under copyright law (17 USC Sec. 113(c)) that permits you to display pictures of product packaging “in connection with advertisements or commentaries” related to distribution or sales of those products. So, for example, if you provide links to an online retailer like Amazon where the books can be purchased, you will qualify under this exception. Ditto if you’re acting as a journalist and commenting on the book. By the way, this exception applies for any “useful article,” not just books. So it also applies to the cover of the “Crunch: Belly Butt and Thighs Bootcamp” DVD, the Pizza Party Elmo toy, and my super favorite new album.
Dear Rich: I have a question. Is it true that our church can’t show sporting events like football games on our big screen TV? I’m so glad you asked. Rather than give you a lot of legal backstory about non-musical works and copyright legislation (you can read about that stuff in this Slate article), the bottom line is that you’ll likely run afoul of the law if your church uses a TV screen larger than 55 inches. If you do “Drive 55″ you’ll need a public performance license. Of course, if your flock doesn’t mind mixing with infidels, you can move services down the street to a tavern with the appropriate licenses. Or you could just wear your fan gear to church and schedule services an hour later. I wish I had time to go into the relationship between contact sports and salvation — remember the first time an NFL player kneeled in prayer in the end zone? — but let’s save that discussion for our Sunday blog. P.S. Click here for information on how to measure your TV screen size.
Dear Rich: I have a question. I love movies but I hate all the sexy stuff — same with my friends. We have a movie club and before I show a movie, I make a copy in which I cut out all that stuff. Is that illegal? I’m so glad you asked. You are likely violating copyright laws. Of course, whether anyone will find out — another good reason not to ask Dear Rich questions — is a matter of conjecture. But should the owners of the films learn of your amateur editing, they could attempt to prevent your handiwork. At least, that’s our reading of a 2006 federal court decision. In that case, Marty Scorsese, Stephen Soderbergh, and Sydney Pollak (among other class-A directors) successfully sued Clean Flix, a company that edited films and then re-rented them. Even though the company purchased a separate copy so that studios didn’t lose any revenue in the process, a judge ruled that this practice was illegal. Currently, some companies are performing an end-run around this precedent by having a third party edit the copies. (Keep in mind, alas, that some companies who claim to rent “clean” movies, might not be so clean.) It is not illegal, however, under a recent law, to buy and sell a DVD player that filters the movie for you. In other words, you put your movie in the player and voila! No embarrassing shots of Jessica Alba! BTW, in addition to the legal issues mentioned, the showing of films for more than a small gathering of family and friends requires a public performance license. Anyway, if you can’t afford to buy a filtering DVD player, may we suggest you distribute these during those unpleasant moments?
Dear Rich: I have a question. I’ve been buying domain names that are common misspellings of well-known online retailers and then setting up websites with Google Ads. So when someone types in the wrong spelling, they arrive at my site. Then, they can then click through to the correct company’s site using a Google Ad. I got a letter from one of the companies telling me to take down my site and give up my domain name. Why? Sure, I make some money, but aren’t I doing a good thing by leading people who misspell domain names to the right company? I’m so glad you asked. I can’t tell you whether what you’re doing is a ‘good’ thing or a ‘bad’ thing — let’s leave that up to the Dalai Lama — but I can tell you that what you’re doing is called typosquatting.
A typosquatter purchases misspellings of domain name in the hopes of catching and exploiting traffic intended for another website. (It’s been a lucrative source of income for many years.) Typosquatting is a variation of cybersquatting and if the company whose name you’re exploiting takes you to arbitration under international domain name arbitration rules and proves you’re acting in bad faith, you’ll have to give up the domain name. If the company takes you to court in the U.S. instead, you’ll have to give up the name, and perhaps pay damages. Some companies guard against this practice by purchasing the misspellings, such as www.amzaon.com (sic). Others have to chase down violators and either buy the name back from the squatter or go after them with lawyers — for example, Land’s End went after a typosquatter who purchased domain names such as www.lnadsend.com and www.landswnd.com and then demanded money for referring customers under the Land’s End affiliate program. Nice scheme. (Land’s End prevailed in the early stages of litigation, but so far, the company hasn’t managed to acquire the domains.) Another unfortunate problem — some unscrupulous typosquatters trigger malware. Arrivederci!
Dear Rich: I have a question. I’ll be using a lot of screenshots from different websites in my book. Do I need to get permission for that or is it a fair use? I’m so glad you asked. Conventional wisdom (and the Electronic Frontier Foundation) says that an unauthorized screenshot is an infringement. That said, the use of screenshots rarely triggers a complaint because either: (1) the copyright owners don’t want to complain about something that promotes their company — for example, an online tutorial about using Microsoft Word, or a book about starting an eBay business, or (2) the copyright owners believe the use is likely to be excused as a fair use. Although issues don’t often arise, occasionally copyright owners do complain — for example, Apple complained about pre-release screenshots of the iPhone. Some sites place limits on your use of screenshots in their user agreements.
Keep in mind that if the copyright owners do complain, the results can be unfortunate–it may disrupt publication of a book or other product. Perhaps a more important issue to consider is whether what you are doing is likely to anger or annoy the copyright owner. If it is, proceed with caution and review your use of the company’s trademarks so that your use doesn’t imply an association or endorsement.
P.S. In the future, sites will be able to block screenshots.
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.
