© 2011 Knobbe Martens Olson & Bear LLP1

© 2011 Knobbe Martens Olson & Bear LLP2

Planned Business Launch Online retail site that will sell environmentally friendly products

Branding (both Offensive and Defensive)

Branding for the site

Using Other’s Brands (e.g., branded sub-stores, Sponsored Links)

Site Content

Jingle

Images and graphics

Text

Web Design

Spokesperson selected

Audiovisual works using spokesperson/Look-alike

© 2011 Knobbe Martens Olson & Bear LLP3

Branding for the Site

Possible Names for the Site

ECOWARES

GREEN SIGHT

YAZZLE

Logo

Slogans

“KEEP OUR WORLD TWIRLING” (overall identifier)

“FAUX & FABULOUS” (Fall Season - clothing sub-store)

© 2011 Knobbe Martens Olson & Bear LLP4

Branding for the Site

Appropriate

Credible Appealing Relevant Memorable Enduring Easy to Pronounce

Business and LEGAL Attributes of a Good Brand

PROTECTABLE AVAILABLE

© 2011 Knobbe Martens Olson & Bear LLP5

Clearing Brands – Protectable? Legal categories of trademarks

ArbitraryFanciful SuggestiveDescriptiveGeneric

Capable of BecomingProtectable

No Protection

InherentlyProtectable

Avoid Choose

ECOWARES GREEN SIGHTYAZZLE

© 2011 Knobbe Martens Olson & Bear LLP6

Clearing Brands – Available?

Clearance Searching Considerations Geographic Scope (short + long term)

U.S. Foreign Jurisdictions

Goods/Services (short + long term) Retail Services Private Label Goods Certification Mark

Temporal (Shelf-Life) Seasonal v. Long Term

Domain Name Availability gTLDs and country specific domain names

I’ve selected an “Inherently Strong” Mark, but is it available?

© 2011 Knobbe Martens Olson & Bear LLP7

Clearance & Filing Provides Comfort to Expand

Region Budweiser (U.S.)

U.S.

Europe

Geographic Expansion

*Czech beer company owns Budweiser brand in Europe

© 2011 Knobbe Martens Olson & Bear LLP8

Company Computers Music

Apple, Inc. 1976 → Computers

Apple, Inc. purchases

rights to APPLE mark in music space (with

license back to original owner) for

$500+ Million

Apple, Inc. Expands to Music Space1986 → Audio Functions

2003 → iTunes

Product Expansion

*Another company owns rights to APPLE in

connection with music

Clearance & Filing Provides Comfort to Expand

© 2011 Knobbe Martens Olson & Bear LLP9

Now What?

Secure Domain Names (gTLDs, ccTLDs, typos)

Secure Trademark Registrations

Think short term and long term plans

Use Your Brand Properly – Build Brand Equity proper notice

Police and Enforce Your Trademark Rights Monitor third-party use and filings Avoid infringement, dilution and abandonment

Quality control Distributors/licensees/certification programs

© 2011 Knobbe Martens Olson & Bear LLP10

Business wants to:

Use third party branded sub-stores

Use Sponsored Links triggered by third party marks

Use third party certification marks for its private label goods (at least until its owns certification program gets off the ground)

Using Other’s Brands

© 2011 Knobbe Martens Olson & Bear LLP11

“I want to use other’s brands on the site”

DO

Only use so much of the brand as necessary

Nothing to suggest sponsorship

Reference the trademark only as part of a complete sentence (not as a stand alone element)

Use proper trademark notice

or

Obtain permission if use beyond the above

Using Other’s Brands

© 2011 Knobbe Martens Olson & Bear LLP12

Using Other’s Brands - Branded Sub-stores

PERMISSION NEEDEDNO PERMISSION NEEDED

© 2011 Knobbe Martens Olson & Bear LLP13

Using Other’s Brands – Sponsored Links

© 2011 Knobbe Martens Olson & Bear LLP14

Website’s Content – Copyright Issues

Jingle: Employee created (outside the scope of her normal employment) with husband

Images: Created in-house and taken from Internet

Text: Created solely in-house

Logo: Created solely in-house

Software: Web developer next door

© 2011 Knobbe Martens Olson & Bear LLP15

• Copyright Ownership

• Copyright Registration

• Copyright Notice

How Do I Clear and Protect the Content?

© 2011 Knobbe Martens Olson & Bear LLP16

Website Content Clearance Issues

Content:

Jingle

Images and Logo

Text

Software

Creation:

Employee?

Independent Contractor?

Joint Authors?

Public Domain?

© 2011 Knobbe Martens Olson & Bear LLP17

Clearing Content - Ownership Copyright law presumes that the author or artist of the work is the

owner of the copyright in the work

Employer/Employee relationship

scope of employment

independent contractor

“Works Made For Hire” (handout)

commissioned from category

written agreement

Joint Authorship

Public Domain (handout)

© 2011 Knobbe Martens Olson & Bear LLP18

“Work Made for Hire” A work specially ordered or commissioned for use as:

1) a contribution to a collective work

2) a part of a motion picture or other audiovisual work

3) a translation

4) a supplementary work

5) a compilation

6) an instructional text

7) a test

8) answer material for a test

9) an atlas

Parties agree in a signed writing that work is made for hire

© 2011 Knobbe Martens Olson & Bear LLP19

Copyright Term and Public Domain

• Post-1978 works:

• Life + 70 years

• "Work for Hire" the shorter of:

• 95 years from date of first publication

• 120 years from creation date

• Works published pre-1978 and renewed:

• 28 years + 67 years (renewal) = 95 years

© 2011 Knobbe Martens Olson & Bear LLP20

Website Content Clearance

Jingle – Need written assignments from each of the two Joint Authors

Images – Need to either remove all Internet material or obtain permission/license to use; Company owns images (Logo) created by employee

Text – Company owns

Software – Need written “work for hire” agreement

© 2011 Knobbe Martens Olson & Bear LLP21

Copyright Registration

• Registration is not required for copyright

• Registration does provide presumption of validity

• Registration a pre-requisite to enforcing copyright

• 9th Circuit – application rule

• Registering prior to infringement or within 3 months of publication - statutory damages and attorney fees

• www.loc.gov – online registration available

© 2011 Knobbe Martens Olson & Bear LLP22

Copyright Notice

• Notice no longer required - incentive to use:

• Rebut claim of innocent infringement

• Deters potential infringers

• Elements of proper notice:

• Use © (copyright or copr.)

• Year of publication

• Owner name

• “All Rights Reserved” (optional)

© 2011 Knobbe Martens Olson & Bear LLP23

Rights of Publicity

© 2011 Knobbe Martens Olson & Bear LLP24

Rights of Publicity Statutory (state) and/or common law Protects the commercial value in an individual’s identity and

reputation Derives from right of privacy

Now generally considered a property or intellectual property right

Claims often combined with claim under Lanham Act Defenses include First Amendment and Fair Use-type defenses

Transformative defense Rogers test Public Interest/Public Affairs

© 2011 Knobbe Martens Olson & Bear LLP25

Rights of Publicity In California, Right of Publicity is both statutory and common

law Knowing use Name, voice, signature, photograph, or likeness For purpose of advertising or selling Without the consent of the celebrity Causes injury/damages

Common law – broader than statutory right Use of identity Appropriation of name or likeness to defendants

advantage, commercial or otherwise Lack of consent Injury

© 2011 Knobbe Martens Olson & Bear LLP26

Rights of Publicity - Examples

© 2011 Knobbe Martens Olson & Bear LLP27