As more trademark owners use the Madrid Protocol to extend their rights into foreign territories, the Protocol’s advantages and shortcomings are coming to light. One potential pitfall of particular note for owners of registered extensions of protection to the United States is beginning to take form on the horizon.

The United States imposes strict use requirements in connection with the maintenance and renewal of trademark registrations. These requirements differ greatly between registrations resulting from applications under §1 and §44 of the Trademark Act, and those resulting from Extensions of Protection under the Madrid Protocol (§66A).

Trademark practitioners are well aware of the requirements for filing Section 8 affidavits. Generally, the owner of a U.S. trademark registration must file a affidavit or declaration of continued use or excusable nonuse (Section 8 affidavit), on or after the fifth anniversary and no later than the sixth anniversary of the date of registration, and within the year before the end of every ten-year period after the date of registration. The registrant may also file the Section 8 affidavit within a grace period of six months after the expiration of the deadline, provided a surcharge is paid.

However, the above requirements do not apply to registered extensions of protection issued by the United States Patent and Trademark Office (“USPTO”) pursuant to the Madrid Protocol. The requirements for such registered extensions are very different than the requirements for registrations under §1 and §44, and merit close attention.

Under §71 of the Trademark Act, a registered extension of protection to the United States will be cancelled, unless the holder of the international registration periodically files affidavits of use in commerce or excusable nonuse (”§71 affidavits”) with the USPTO. 37 C.F.R. §7.37 sets forth the requirements for a §71 affidavit. These affidavits must be filed:

(1) Between the fifth and sixth year after the date on which the USPTO issues the certificate of extension of protection; and

(2) Within the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a three-month grace period with an additional surcharge.

Section 71 provides a three-month grace period for filing the ten-year §71 affidavit with an additional surcharge, but there is no grace period for filing the six-year §71 affidavit.

Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period.

Section 71 affidavits cannot be filed until five years after the USPTO registers an extension of protection. Consequently, the USPTO will not accept these affidavits until after November 2, 2008, due to the timing of the adoption of the Protocol by the United States.

Normally, trademark owners or practitioners can reliably turn to the Trademark Manual of Examining Procedure (TMEP) for guidance with respect to maintenance and renewal requirements. But a close look at Section 1613 of the TMEP reveals a significant inconsistency.

TMEP 1613(2) states that the ten-year §71 affidavit is due “[w]ithin the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a 3-month grace period with an additional surcharge.”

The next sentence reads: “Section 71 provides a six-month grace period for filing the ten-year §71 affidavit with an additional surcharge. There is no grace period for filing the six-year §71 affidavit. Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period. The requirements for a §71 affidavit are set forth in 37 C.F.R. §7.37.” [Emphasis added]

This is incorrect. The grace period for the ten-year §71 affidavit is three months, not six.

Holders of extensions of protection need to be vigilant with respect to §71 requirements. Our firm is aware of a number of trademark law practice guides that either have incorrect information regarding §71 or simply do not mention §71 at all. Even the International Trademark Association’s own Practitioner’s Guide to the Madrid Protocol and Madrid Agreement errs by omission. The Guide contains no reference to the six-year §71 filing requirement. Moreover, we are aware that some trademark docketing software packages do not generate the correct deadlines for §71 filings.

What’s a holder of an extension of protection to do? Well…

· Be vigilant! Holders of extensions of protection in the U.S. under the Madrid Protocol are not only required to renew their International Registrations with the International Bureau, but they must also file §71 affidavits with the USPTO at specified times.

· File the six-year §71 affidavit between the fifth and sixth year after the extension of protection issued (Remember: No grace period!).

· File the ten-year §71 affidavit in the window of time beginning six-months preceding the end of every ten-year period after the date of issuance of the extension of protection, or within the three-month grace period.

· Renew the International Registration with the International Bureau

· And please don’t forget to actually use the mark in the United States.

Great thanks to William J. Morris III for first pointing out the pitfalls of §71 and encouraging the writing of this post.

UPDATE: Trademark prosecution guru, John Welch, has pointed out that although the USPTO will not accept §71 affidavits until after November 2, 2008, the first Section 66 extension of protection in the US was issued on Feb 1, 2005, and so the earliest date that a filing of a six-year §71 affidavit can occur is February 1, 2010. This does not diminish the importance of paying very close attention to these deadlines.

A sad day for anyone interested in copyright law.

Y Combinator, the startup seed funder based in Mountain View, California and Cambridge, Massachusetts, has posted a list of the sorts of ideas Y Combinator would like to see startups tackle. It’s an eclectic list, ranging from web office applications to a better dating site, and sure to spark discussion and thought.

Funny they should mention simplified browsing - i.e., a web browser for little kids and grandparents - as I was just thinking about how it’s about time for my daughter (age three and a half) to start imitating Mom and Dad with a real computer rather than her pretend one, and how we might make that work. Get to it, brilliant developers!

The Chronicle of Higher Education delves into a dispute between two economists who released a study in 2004 that showed file sharing had no impact on CD sales, and another economist who believes that study was flawed. Part of the argument is a bit of inside baseball regarding potential conflicts of interest in the process of approving “comments” on (i.e. criticism of) research papers. Get past that, however, and there is some interesting debate over the methodology and data used in the study.

I would like to see a study that tracks the impact of file sharing based not solely on CD sales, but on artist income more generally. That is, what effect does file sharing have on an artist’s overall financial success?

Mark Hurst, author Bit Literacy (which I hadn’t heard of but am now very interested in), discusses various aspects of the book publishing world that he was surprised to discover as he was seeking publishers for the book. Discouraged by the situation, he went the self-publishing route instead. It’s a worst-case-scenario take on the industry, but not entirely inaccurate. I would of course highlight this particular bit:

If you do find an interested publisher, they’ll hand you a contract. Read every word of the publisher’s contract, and get your lawyer to do the same. Many things in the contract are negotiable, though the publisher won’t tell you that upfront. But you’d be a sucker to sign the first draft of the contract.

Can’t argue with that. And I also concur with the one commentor who said “You could replace the word ‘publishing’ with ‘music industry’/'film industry’ and ‘book’ with ‘album’/'movie’, and you’d have two more essays on the same essential idea…”

But as other commentors, including Paul Mikos of Cumberland Publishing, pointed out, Hurst may be overstating the “in it for the cash” mentality of the average publisher, and understating the risk publishers take on even smaller titles. At the end of the day, however, books are a business, and all parties involved, author and publisher alike, should treat it that way - just not to the exclusion of considerations of art and love.

Last month, a federal judge ruled that fashion designer Joseph Abboud could no longer use his own name to promote his wares, thanks to a provision in the contract he entered into when he sold the company to JA Apparel Corp. (for $65+ million, mind you). Readers of our former blog, Legal Fixation, may recall that this has happened before to yet another iconic name in the world of fashion, Paul Frank. Vanity Fair has the details of that sad story. Yet another cautionary tale for those who would consider using their name as a trademark.

Nice article in BusinessWeek on the process of selecting a name for your business venture, including conducting a search for existing trademarks that might pose a problem for your branding efforts. A choice excerpt:

The game isn’t over when you find a name you like. You have to make sure you have the right to call it your own. To avoid potentially costly missteps, hire an intellectual-property lawyer. Expect to pay your attorney up to $10,000 for all the searches and filings. That might seem like a lot, but according to Ilene Tannen, partner at New York law firm Jones Day, the costs of disputing a lawsuit for trademark infringement, along with lost goodwill, advertising, and packaging costs if you have to change your name, can run to tens of thousands of dollars.

After narrowing the field to half a dozen names, see whether any have been trademarked. Start with the Patent & Trademark Office database, which lists all names filed with the federal government for the purpose of doing business. The owner of a name registered with the PTO trumps anyone who comes afterward, as a federal trademark holds throughout the country. You can search this database yourself at no cost, but an intellectual-property lawyer can do a better job. Inexperienced searchers, for example, won’t know to search the different product classes. An expert can also help you find names that sound like yours, which may take precedence even if they are spelled differently.

If that ten thousand dollar estimate makes you gulp, bear in mind the author is getting information from the Jones Days of the world. I’d more realistically project about a third of that on average from a firm such as ours for search, results analysis, application preparation, and filing.

Still, good article, and good advice overall.

Trademark owners take notice: ICANN will be introducing new gTLDs in the near future. We will report on the sunrise periods as they are announced.

Out-Law, among other outlets, has reported that Google has changed its trademark ad purchasing policy in the UK and Ireland. Previously, owners of trademarks in the UK and Ireland could prevent third parties from purchasing their trademarks as keywords that would trigger third party advertisements. This is no longer the case under the new policy. The new policy reflects the system currently in place in the US. For the rest of Europe, Google still employs a policy of banning the purchase of trademarks as keywords by third parties.

It will still be the case that advertisers are not allowed to use a trade marked term in the actual advert itself under the new rules. Advertisers will be able to buy the right to display their ad when a trade marked term is used by the searcher, but will not be able to use that term in the advert. “The change of policy seems to be the inevitable consequence of a series of court decisions in the UK, the latest being the Mr Spicy decision, which seem to suggest that the use of a registered trade mark as an AdWords trigger would not constitute trade mark infringement, unless the registered trade mark concerned appeared in the visible text of the sponsored link or on the website linked to the advert and directly lead to confusion in the marketplace,” said Lee Curtis, a trade mark attorney at Pinsent Masons, the law firm behind OUT-LAW.COM.

“However, Google needs to be careful in this new policy in that even in the UK and US, it would appear that if the use of a registered trade mark in an AdWords advert causes confusion in the marketplace in the words of the UK courts as to ‘trade origin’ then it is still possible that a court could come to an decision against the defendant,” he said. “The jury, as they say, is still out on that matter.”

Michelle Vranizan Rafter at WordCount has compiled a master list of blogs geared providing guiding freelance, newspaper and magazine writers with tips on the mechanics of writing and of marketing their services. Definitely worthy of a bookmark. (h/t Erik Sherman)

Thirty years ago, Wal-Mart entered into a handshake deal with a video production company to producer and record manager and shareholder events. In 2006, Wal-Mart ended its relationship with the company. Now, the production company is making its catalog of 15,000 tapes available to anyone who comes calling.

How can the production company get away with this? Doesn’t Wal-Mart own the tapes and, more importantly, the copyright in the tapes’ content?

Wal-Mart might have some claim of ownership in the tapes (though for some reason they offered to buy them after this all happened), but they almost certainly don’t own the copyright in the content of the tapes. Why? Because whether you’re Wal-Mart or Joe’s local convenience store, without a written agreement to the contrary the independent contractor owns the copyright in the works he, she or it creates. So if you’re contemplating paying an independent contractor to design your company’s website, or write an article for your publication, or take photos for your marketing materials, you’ll want to present that contractor with a written contract spelling out the ownership issues, e.g., whether the contractor is assigning the copyright to you, or whether you’re licensing the work from the contractor. If you don’t, you lose the ability to use the materials as you see fit. (We’ve written on this topic previously)

Sarah Bird at SEOmoz uncovered an interesting, and brain-bending, application for federal registration of the term SEO for “Marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers”. SEO generally stands for “search engine optimization,” which Wikipedia defines as both a process and a strategy intended to improve a website’s visibility in search engine results. Frankly, I’m not sure the described services are related to search engine optimization, but then I’m not an SEO professional. Those who are SEO professionals are of course not pleased that the PTO apparently succumbed to the applicant’s Jedi Mind Tricks, and may object.

Frankly, the prosecution history has twisted me around a few times, and I’ll need to read it over a few more to get a grip on the thing.

USPTO Examiners is a new site dedicate to the anonymous evaluation of USPTO trademark and patent examiners. It will be interesting to see how the site develops and if it will reveal discernible trends. (via Securing Innovation)

As usual, John Berryhill is on the cutting edge of all things related to the law and domain names. His latest article is on US domain registrars and sanctions relating to doing business with Sudan.

Nicky Ree designs virtual clothing for users of the online community Second Life. In this post, she recounts her efforts in combating another designer whom she alleges is infringing on her work. While fashion designs in the “real” world generally aren’t protected by copyright (not yet, anyway), these designs are virtual, and hence the digital images of the designs are protected. Ms. Ree supplies some screen shots to illustrate the alleged infringement.

Ms. Ree’s post also illustrates her attempts to use the Digital Millennium Copyright Act’s notice and take down procedure to have Linden Labs remove the allegedly infringing materials from Second Life, and some of the troubles she ran into along the way.

Update to add: Plagiarism Today recently posted an in-depth look at infringement in Second Life.

Does a photograph of a copyrighted work — say, a photo of a sculpture or a painting — constitute a derivative of that underlying work? As William Patry notes, maybe yes, maybe (and perhaps more logically) no.

Stupid, says former MLB commissioner Fay Vincent. The reason for his ire is the stance Major League Baseball is taking with respect to the venerable Cape Cod Baseball League, long a showcase for future MLB players. Jeff Bagwell, Nomar Garciaparra, Mo Vaugh, Jason Veritek,and Frank Thomas are just a few MLB stars who put in some time in the Cape League. It’s classic, competitive, wooden bat baseball, and if you’re spending any time on Cape Cod this summer you owe it to yourself to go to a game.

At issue is the fact that six of the Cape League teams — including the Red Sox, Mariners, Mets, and my team, the Orleans Cardinals — share names with MLB teams. This arrangement has worked well for quite a while, and MLB has provided the Cape League with an annual (and incredibly meager) $100,000 grant in appreciation of its contributions to the game . Now, however, MLB is insisting the Cape League use only MLB-approved vendors for its merchandising, and wants an eleven percent royalty on sales of all existing merchandise. If the Cape League doesn’t comply, they’ll lose that grant, and those six teams will have to change their names. And if it does comply, the current merchandise vendors are going to lose business.

I hope some bad PR, and some pressure from former Cape Leaguers now in the bigs, will bring this to a swift and favorable conclusion. Why MLB, which is reaping huge profits these days — and whose commissioner brings home $14.5 million per year, by the way — would put the squeeze on such a shining example of pure baseball for what all told must be very small dollars, I have no idea. Like Fay Vincent, I have to assume stupidity.

Learn more about the Cape Cod Baseball League by ordering the DVD of the documentary “Touching the Game: The Story of the Cape Cod Baseball League, ” and by visiting the CodBall blog.

Boston Magazine — average subscriber household income $150k — has made overtures toward members of the Boston Photo Mob group on Flickr, looking for photos to accompany an upcoming story on Boston architecture. Sounds great. The catch? “Although our budget cannot accomodate payment for the photo, we can credit the photo to you.” As you might imagine, much indignation ensues.

Well, at least they asked. Given past experiences people have had seeing their photos snagged from Flickr and used commercially without so much as credit, I suppose that’s progress. Still, one gets the sense that the ubiquity of online photo resources like Flickr are giving many businesses the impression that photographers are just happy if people see and enjoy their work. The bottom line is that yes, Flickr has a casual air about it, but that doesn’t necessarily mean the people using it aren’t professionals. They deserve to be treated as such.

The Wall Street Journal reports that the SXSW music festival is crawling with music supervisors searching for artists to license for television shows, commercials, and video games. Choice quote:

“As shrinking record sales and the rising influence of technology force change on the music business, more young bands are choosing to bypass record labels and experiment with methods like online distribution. Even for bands that do sign with record labels, licensing deals and direct partnerships with brands can prove vital to their careers. Placement in a nationally aired TV commercial can introduce an emerging band to a broad base of music fans and earn the act anywhere from $10,000 to $100,000 or more.”

The article goes on to speak with a representative from Electronic Arts, who is looking  to license artists for the soundtracks of about twenty five video games currently in production. What the article doesn’t mention is that, at least where larger scale video game are concerned (e.g, the Madden series), the artist provides the license gratis in return for the potentially wide exposure the artist may get from being on the soundtrack. Not necessarily a bad thing, but worth keeping in mind if video games are on your radar.

Freelance writer Erik Sherman comments on the latest freelance agreement from Real Simple magazine. This is one of a series of posts about the terms of similar agreements from various sources, such as Wired and the New York Times. Interesting to get an experienced writer’s perspective.

This video for the song DVNO from French electro group Justice is chock full of homages to 80’s-era television production company idents. I spot a couple of faux-HBO’s, something that looks like an old ABC Sunday Night Movie, the classic Stephen J. Cannell ident, and a few others that are recognizable but which escape me at the moment. Good song, too.

ArtistHouse Music offers up a great interview with entertainment attorney Jay Cooper of Greenberg Traurig. Each issue he touches on — from his dislike of the 360 deal, to what labels look for in artists, to advice for parents of musicians — is broken out into its own segment. Here’s what Attorney Cooper has to say about the 35 year copyright reversion clause, and why he believes record labels are wrong in believing their artists’ recordings are works-for-hire.

Very much worth your while, whether you’re a musician, an attorney, or neither (or both).

The Imperial Hotel Management College maintains a YouTube channel that serves as a guide to pronunciation of luxury brands. Currently there are pronunciations of 61 brands. via Agenda, Inc.

New York law enforcement shuts down thirty two vendors in the Counterfeit Triangle, netting fake goods purportedly worth one million dollars. “Whoever you are, wherever you are, we are going to shut you down,” quoth the Mayor. Shades of Elliot Ness.

Ars Technica has a fairly succinct explanation of how insecure routing redirected YouTube to a network “black hole” in Pakistan yesterday. Lately I have been ranting about network warfare and the importance of securing vital assets. I do not believe that YouTube is a vital asset, but it is highly visible. Hopefully, events like this will raise awareness of security issues.

This thorough account of one photographer’s successful copyright infringement suit against a financial and real estate agency that used two of his photos in their advertising without authorization illustrates two things: first, that yes, you do need permission to use works you find on the internet, and second, that lying about where you found the work and forging an invoice is a great way to put yourself on the hook for significant statutory damages. If you come across a work you’d like to use for some commercial endeavor, chances are it was created by a hard-working artist who would be more than willing to license it for a fair price.

NFL reverses position, says churches may host Super Bowl parties.

Speaking, as we were, about graffiti, the National Portait Gallery in Washington D.C. is featuring the “underground street art” as part of its exhibit “Recognize! Hip Hop and Contemporary Portraiture.”

Here are two scenarios we run into from time to time…

Scenario 1: Ted started a web development business, and he’s ready to roll it out and start creating websites for his clients. He wants to make a marketing splash, so he’ll need a nice logo. But Ted’s a business person, not a designer, so he decides to find someone to come up with a design. Since he can’t afford to hire an employee just yet, he locates an experienced independent contractor whom he trusts can do the job. She doesn’t present Ted with a contract, and Ted doesn’t bother giving one to her. This is a handshake deal. Anyway, Ted’s got so much going on, he can’t even think about more paperwork. A few weeks go by, and the designer presents Ted with the perfect logo design. Ted pays her promptly, and in return she gives him the electronic and printed versions of her work. Ted’s ready to put his logo on his business cards, website, and letterhead.

Scenario 2: Ted’s web development business is running smoothly, and he’s entered into a contract to create a website for a client. He decides to subcontract some development work out to another independent contractor. Ted likes this contractor, and he’s afraid the contractor will not agree to do the work if Ted presents him with a contract to sign. They verbally agree on the project, and a few weeks later the contractor delivers exactly what Ted asked for. Ted’s now ready to present the website to his client and collect his fee.

In both of the above scenarios, Ted has paid for the materials produced by an independent contractor. But what does Ted really own?

Without a written agreement to the contrary, the independent contractor, not the client, is the author and copyright owner of all materials she creates.

In both scenarios, because Ted didn’t have the contractor sign an agreement in which he or she assigned ownership (or created the materials as a work made for hire) of the copyright in the materials they produced over to Ted’s business, Ted doesn’t own the copyright in them. The “bundle” of rights provided by copyright – the rights of reproduction, distribution, display, public performance, and making derivatives – remain exclusively with the contractor, notwithstanding the possibility of an implied license to use the works.

What does this mean for Ted’s business? With respect to the first scenario, it means that while Ted may be able to use the design as his logo on business cards, his website and letterhead (under a theory of “implied license”), any use beyond that may result in a copyright infringement claim by the contractor. Furthermore, the contractor remains free to make use of those same materials herself or for her other clients, which certainly won’t help Ted’s attempts to distinguish himself in the marketplace.

In the second scenario, although the website is complete and Ted has conveyed it – including, ostensibly, the copyright in all associated materials – to his client, the copyright in whatever portions of the website were created by the contractor remain owned by him. If your client later finds out Ted’s purported to convey copyright he didn’t have the right to convey, Ted may find yourself facing at least a breach of contract claim. Furthermore, the contract Ted signed with the client likely holds his business liable for any copyright infringement claims brought against the client. For a business just starting out, even the mere threat of litigation can grind the gears of progress to a messy, and often permanent, halt.

The bottom line is this: as a business owner, you want to own all of the property you pay for, both physical and intellectual, so you are free to make whatever use you like of that property. You do not want your business potentially held hostage by a contractor who exploits his or her ownership of the copyright in materials critical to your success.

With all of this in mind, we advise both individuals and businesses that any independent contractor they intend to use must sign a written agreement in which the contractor agrees to assign to the client all copyright ownership in any materials produced under the agreement. These agreements are often known as “work for hire” contracts, and if appropriately drafted they needn’t be burdensome in length or language. Any experienced contractor should not be at all surprised to be presented with such an agreement; if the one you’re talking to balks at the mention of it, find yourself a new contractor.

In addition to copyright ownership, the terms of these agreements also address important issues regarding liability, such as situations where the contractor copies code or a design from someone else and passes it off to you as original work, thereby exposing you to a copyright infringement claim.

While ideally the agreement will be executed prior to the contractor beginning work, it may be possible to have the terms of an agreement apply retroactively. So if you’re in the middle of this scenario now – and if so, you’re not alone – it may not be too late to take remedial action.

For more information about issues to consider when working with independent contractors, send us an email or give us a call at 978-463-9100.

photo: robotswillkill.com

If you’ve traveled on the Amtrak, commuter rail or subway in and around Boston, you’ve likely seen examples of the above graffiti. Now, “Spek” has finally been busted by Boston Police. The Globe has the story, including a nice Usual Suspects reference in the first paragraph.