Not all trademarks are created equal.  Some trademarks are ‘stronger’ in the legal sense than others, meaning that some marks are easier to register and enforce than other marks.  Trademarks need to be unique, distinctive, and not easily confused with other existing trademarks when they are applied to a product or service in order to be registerable with the United States Patent and Trademark Office (“USPTO”).

Trademarks are intellectual property that are classified into one of four categories of marks, based on how legally strong they are. The categories, listed in increasing strength, include: generic marks, descriptive marks, suggestive marks and fanciful or arbitrary marks.

Generic Marks

Generic marks are the weakest category of marks, and are not registerable or enforceable against others who use them. Generic marks are commonly used phrases associated with goods or services. Generic marks can either be generic at the outset of their use or become generic through improper use over a prolonged period of time. For example, using the mark SODA for sweet carbonated beverages would be a generic mark as the public associates the term “soda” with sweet carbonated beverages; the mark is considered generic at the outset of its use in this situation.

Marks that were once valid trademarks can further be reduced to a generic mark if the unauthorized use of the mark goes unpoliced. Distinctive, suggestive or fanciful or arbitrary marks can turn into unenforceable generic marks if the public commonly uses the mark in association with a particular good or service, and the trademark holder fails to police the use of its mark for an extended period of time. Common examples of once valid trademarks turning into generic marks include ZIPPER, ESCALATOR and ASPIRIN.

Descriptive Marks

Registerability and enforceability of descriptive marks is hit-or-miss, and that is why they are considered to be fairly weak marks. These types of marks describe some aspect of the product or service that the mark is being applied to. Descriptive marks fall into two subclasses: merely descriptive, and distinctive. Merely descriptive marks are not registerable, as they merely describe the product or services that the mark applies to (i.e., an image of brooms, vacuums and dusters for a cleaning service). However, a notable exemption allows descriptive marks that acquire distinctiveness to gain trademark protection. Distinctive marks can gain distinctiveness through extensive use in commerce for a period of 5 years or more.

Suggestive Marks

Suggestive marks are fairly strong marks, as they suggest something about the product or service to which they are applied, but do not describe the product or service. Some examples of suggestive marks include RAVISHING for a cosmetic line (suggesting that the make-up will make the user look ravishing).

Fanciful or Arbitrary Marks

The strongest marks are ones that are fanciful or arbitrary. These types of marks are easy to register and enforce based on their uniqueness.

• Fanciful marks are marks that are created from imagination. They have no definition in the dictionary, are completely unique, and are unusual. An example of a fanciful marks would be CHEMZA for use with selling hats. It is a made up word, with no significance other than being used as a trademark for selling hats.
• Arbitrary marks are marks that generally are a known thing applied to a completely different thing or service. Good examples of arbitrary marks include the mark KITTENS for use with hair accessories or MAJESTIC for weight loss management services.

For more information on the strength/distinctiveness of your mark, how to register a trademark or should you need advisement in an intellectual property matter, please reach out to our office.

Recently, Total Recall Technologies, a Hawaii-based company, filed a lawsuit in a California U.S. District Court claiming fraud, breach, and other allegations against Oculus VR Inc. The lawsuit involves reality glasses, a product that has been touted by Oculus VR over the past three years, according to news reports. In 2014, social media giant Facebook purchased Oculus for a reported $2 billion. Now, Total Recall Technologies alleges that patented information from the company was taken by Oculus founder Palmer Luckey during the time he was employed by the company to develop a prototype head-mounted display product.

Luckey signed a confidentiality agreement, according to the complaint which requests punitive and compensatory damages from Oculus. The lawsuit also alleges that Luckey developed the converted information in order to market the Oculus Rift, his own virtual reality headset, violating agreements with Total Recall Technologies. While Luckey may argue that he used his own plans and knowledge in the development of the virtual reality headset, news article say the dispute is quite complex and highly fact-specific, entailing a thorough discovery process in order to learn what Luckey knew and whether he did actually breach or violate any specific provisions in the contracts between the two companies.

Did Luckey develop his product in a way that is different and unique from the products he may have worked on when associated with TRT, based on his own knowledge and plans, or were the agreements of any contracts between the two companies violated? A Reuters article states that Luckey was hired in 2011 by TRT to build a prototype head mounted display; at that time, he signed a confidentiality agreement, however the founder of Oculus is accused of using information he learned from his partnership when launching the Facebook Oculus Rift VR (virtual reality) headset.

Total Recall Technologies is seeking an unspecified amount in compensatory and punitive damages in the lawsuit against Luckey and Oculus.

Strangely, it is a bit curious as to why TRT has waited so long to bring a lawsuit against Oculus VR and Luckey. Perhaps the company decided to go forward at a point when Facebook became the owner of Oculus? A representative for the company says that the case is “meritless,” and that Oculus will be vigorous in its defense against TRT.

The lawsuit claims, according to Polygon, that “Without informing TRT, Luckey took the information he learned from the partnership, as well as the prototype that he built for the TRT using design features and other confidential information and materials supplied by the partnership, and passed it off to others as his own.”

Of the current modern virtual reality headsets, the Oculus Rift is the most widely known according to a Forbes article, and is scheduled to become available in the market during the first quarter of 2016 following a hugely successful Kickstarter campaign that resulted in raising $2.4 million, a drop in the bucket when compared to the $2 billion Facebook invested.

As highly experienced Los Angeles business attorneys and intellectual property attorneys, we understand that working with new technological advances may complicate already complex industries. Yet the huge majority of costly lawsuits and conflicts such as these are avoidable with the help of an experienced legal professional. If you are a former employee or an employer facing similar circumstances, contact Spotora & Associates, PC for the best way to proceed today.

Today virtually every company, regardless of size, is a “tech” company; nearly every business has some connection to the Internet, and indeed today most have websites.  Social media platforms have become a critical component of online marketing strategies for companies big and small.  Considering the use of logos, images, business names, symbols, copyrights, trademarks, and all that is necessary for businesses to compete today, is cyber liability insurance really necessary?  The short answer – yes.

Think about it for just a moment:  Even companies who do not actually conduct business online, such as perhaps an auto collision repair shop, still use the Internet to interact with insurance providers via web portals.  In a tech-savvy world, much can happen and does on a daily basis.  Defamation, copyright or trademark infringement, data breach, the risks are increasing for not only large corporations, but small companies as well.

Cyber crime is one of the biggest threats today for companies who conduct any business activity at all online.  Unfortunately, many individuals neglect to realize how vulnerable their businesses are to cyber crime, and fail to take action to reduce exposure.  Employee error can result in cyber crime, so staff must be diligently trained on data transmission.  Companies whose websites or other online systems are “hacked” leave their customers’ personal data (such as name, banking information, credit card numbers, etc.) vulnerable, and often in the hands of criminals.

On the Internet, anything can happen.  Many companies do all possible to ensure their websites and other online properties are secure, however many criminals are extremely intelligent.  Data breach is an extremely serious matter, as are intellectual property infringement, defamation, and employee error.

Is cyber liability insurance a good idea?  Absolutely, considering the growing trend of cyber crimes committed upon businesses of every size.

The Internet presents many challenges for businesses today; at Spotora & Associates, our Los Angeles business attorneys assist with all technology related, from licensing agreements to protecting and defending your intellectual property on the Internet.  As seasoned LA business attorneys, we understand the challenges companies face today in a “virtual” world; let us help you with your needs.

In October of 2014, a judge rejected a lawsuit filed by writers Stephanie Counts and Shari Gold claiming copyright infringement of their work by Fox’s ‘New Girl’ television series.

In January of last year, the writers sued William Morris Endeavor (WME) Entertainment, Fox, Liz Meriwether (showrunner of New Girl) and executive producer Peter Chernin for allegedly basing the ‘New Girl’ series on the writers’ own proposals for a movie or television series which they said would have been titled Square One.  As defendants in the suit, Fox demanded a dismissal of the charges saying in court documents that “the only similarities between the works arise from general, non-protectable ideas.”  In October, U.S. District Judge Stephen Wilson rejected the lawsuit against Fox and the other defendants, saying the copyright infringement claims were ambiguous.

The judge ultimately dismissed the claim without prejudice, meaning the writers could bring the claim against the defendants again.  However, after the plaintiffs/writers had rejected a settlement offer of $10,000 allegedly extended by Fox and switched lawyers, the statute of limitations came into play, suggesting that perhaps they did not obtain an explicit tolling agreement in order to extend the time to file the claim.

Ultimately, on June 12 of this year Judge Wilson granted WME (William Morris Endeavor) Entertainment’s motion to dismiss the idea theft claim.  This time the judge dismissed the claim with prejudice, meaning the plaintiffs cannot file a lawsuit against the defendants again.  The Court found that Counts and Gold failed to allege any facts which would excuse the writers from timely filing of the claim.

As Los Angeles business attorneys specializing in entertainment law, we know these types of copyright infringement claims are made frequently in the entertainment industry.  Writers, designers, and other artists or “creatives” often feel that their ideas and works have effectively been stolen.  In some situations this is indeed the case, in others it may not be.  Do not allow the statute of limitations to dictate the outcome of your claim. For copyright infringement and other entertainment issues, trust the team at Spotora & Associates for unparalleled legal guidance and support.

Recently, Cupertino-based Apple Inc. has been hit with a slew of new patent infringement lawsuits after the company was ordered last week to pay more than $530 million for infringing on the patents of a Texas company, according to an article at the LA Times.

Texas-based Smartflash was awarded $532.9 million by a jury, then filed an additional lawsuit on February 25 alleging that Apple violated the company’s patents in relation to devices that debuted after the original lawsuit was already in court. In the midst of all this, Ericsson, a pioneer in the Swedish mobile phone industry, hit Apple hard when the company filed seven federal lawsuits against Apple in an ongoing patent dispute, along with two complaints filed with the U.S. International Trade commission alleging that Apple had infringed on more than 40 patents in relation to various technologies relevant to iPads and iPhones.

In January of this year, a licensing agreement between Apple and Ericsson regarding royalties to be paid to the Swedish technology company for its mobile technology expired. Since that time, the companies have traded lawsuits, with Apple filing a suit against Ericsson in January regarding a fair rate for the rights to Ericsson’s patents. A spokeswoman for Apple revealed a statement made by Apple saying, “We’ve always been willing to pay a fair price to secure the rights to standards essential patents covering technology in our products. Unfortunately, we have not been able to agree with Ericsson on a fair rate for their patents so, as a last resort, we are asking the courts for help.”

Some of the patents Ericsson is taking legal action against Apple for include 2G, 3G, and 4G/LTE high-speed wireless technology; complaints filed in federal court also indicate Ericsson has taken legal action in regards to GPS technology.

While the initial lawsuit filed by Smartflash against Apple claimed infringement on three patents including devices that use iTunes and iTunes software, the new lawsuit filed by Smartflash LLC accused Apple of continuing to infringe on patents such as those for payment for songs, games, and other data in addition to methods utilized to manage digital rights. Apple denies the allegations, saying that the company manufactures no products, has no presence in the U.S., creates no jobs, and has no employees, and that Smartflash is exploiting Apple’s patent system in order to claim royalties for technology that Apple actually invented.

Spotora & Associates is a skilled team of Los Angeles intellectual property attorneys highly experienced and knowledgeable in the areas of patents, trademarks, copyright, trade secrets, and other areas of Internet law. Contact us today for unsurpassed legal guidance, support, and representation in matters regarding intangible rights.

If you are serious about the music you create as a composer, you should be serious about music licensing.

Music is everywhere in the world of entertainment: Movies, television, radio advertisements and commercials. There is always a need for top-notch songs and artists.

“For an upcoming composer, licensing music is a vital step in growing a career,” said Anthony Spotora, a Los Angeles-based entertainment and business lawyer. “Licensing music means that your creation is not only protected from illegal use but can also bring a source of income and bigger name recognition. If the people behind a commercial or feature film like your composition, for instance, they will request a music license for the piece.”

While music licensing can be lucrative, it is important to become educated about the process and to receive adequate representation to secure the best deals for oneself.

There are several options for music licensing. One of the best-known options is to register and become a member of ASCAP, BMI or SESAC, which are also known as performing rights organizations (“PRO”).

Such companies collect millions of dollars annually for composers and publishers for so-called performance royalties, but you must be registered as a member to see this income.

“Performing rights organizations act as middlemen, essentially,” Spotora said. “When a song is  ‘performed’ – this includes usage in commercials, airplay, etc. – the user pays the PRO rather than the copyright holder directly. The copyright holder is then paid a royalty by the PRO.”

A separate option is to connect with a publishing company. The publisher will handle issues such as music licensing, collecting royalties and negotiating licensing figures. If your publisher works hard and is well-connected, it can generate serious income for you as a composer and catapult your career to new heights.

If you are a composer, it is important you understand how to properly protect your music as well as secure the most desirable music licensing deals. For questions about legal matters pertaining to music licensing, contact an experienced entertainment attorney.

Anthony Spotora is a Los Angeles entertainment lawyer and Los Angeles business attorney. To learn more, visit Spotoralaw.com.

Intellectual property is a complicated aspect of law, to be sure. It encompasses, among other things, copyrights and trademarks, and is intended to protect a variety of “creations of the brain.”

Copyright does not protect ideas, rather, but original literary and artistic works, musical pieces, discoveries, inventions, logos, designs, architectural creations, photographs and the like. The term “intellectual property” wasn’t used until the 1800s, though the foundation for the legal protection of intellectual property began centuries ago.

Section 106 of the 1976 Copyright Act generally gives the copyright holder the right to the reproduction of his or her work, to distribute copies or recordings for sale to the public, to perform or display the work publicly and to take other similar actions. The law also details “fair use,” which allows the use of copyrighted material for news reporting, criticism and other special cases.

Intellectual property also includes trademarks. Trademarks are protected by a sign or other indicator that can help distinguish one service-provider or goods manufacturer from another. The sign or indicator can include one or more of the following: a logo, a word or phrase and images. They are protected by the Trademark Act of 1946.

A trademark is essential because it serves to identify a particular business as the source of the service or goods. Registration of a trademark provides federal protection and a bundle of rights; however, use alone can establish common law rights. Those who infringe upon these rights can be subject to penalties.

Trademarks are registered in most countries and are also classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes. Numbers 1 to 34 concern goods, while numbers 35 to 45 concern services. For a trademark to be registered, it has to be original and cannot be deceptive or similar to trademarks that have already been registered.

Copyrights and trademarks are an essential part of many businesses. And in today’s world, when the rights of creators are being threatened by so many advances in technology, it is important to protect your creations.

If you are looking to file copyright or trademark papers, or believe that someone else has stolen your work or trademark, it is essential that you hire an experienced attorney.

To learn more, visit https://www.spotoralaw.com/

Does the buying of keyword advertising trigger trademark infringement lawsuits?

The short answer is “yes, it can.” But while there have been many instances of such matters being aired in court, judges across the country have struggled to keep current with the matter and have issued less than uniform guidance. To understand the keyword advertising dilemma, it is important to first understand what keyword advertising is.

Keyword advertising, a multibillion-dollar business, refers to paid advertising on the Internet that links specific keywords or groups of keywords. If you have ever used the Internet search engine Google, you know that typing a phrase such as “sporting goods” into the search area would produce advertising links for sporting goods providers on the side of the screen.

Companies pay for the right to certain words so that customers click on the advertisements that lead to their Web sites. Often, companies pay for each “click-through” that is generated. But the controversy with this type of advertising occurs when companies buy a keyword that is part of a competitor’s trademark, bringing into play the Lanham Act.

In part, the Lanham Act is meant to protect the holder against those who “without the consent of the registrant, use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.”

To establish that keyword advertising violates the Lanham Act, it has to be proven that the trademark was actually used and that the general public would be confused about who is offering the goods or services in question.

Second Circuit courts have often found that the use of a keyword on its own is not a violation of the Lanham Act. Yet outside the Second Circuit, courts have often found the opposite to be true.

For example, in April 2008, the Eleventh Circuit ruled against a company who used a competitor’s trademarks within its invisible meta tags of its website. The court ruled that such practices were in fact trademark infringement.

Microsoft, Google and Yahoo! all sell keyword advertising and have been dragged into some Lanham Act court cases.

When it comes to companies protecting themselves against competitors misusing keyword advertising, it is important to track how your trademarks are being used on the Web. When a violation is suspected to have taken place, one should complain to a search engine, many of who often have their own complaint procedures in place. Experts also recommend that companies make sure they are the highest bidder for their advertising keywords that represent their trademarks to prevent others from using them.

To learn more, visit https://spotoralaw.com/.

Your business has a great name, logo and slogan to stimulate brand recognition. Are those creations copyrightable?

One of the most common questions an intellectual lawyer gets asked relates to copyrighting a brand name, title or a logo. Is it possible to copyright those creations? The short answer is no, and in fact, brand names, short phrases, business names and slogans are explicitly excluded from protection; something that usually comes as a significant disappointment to businesses hoping to protect their identities.

The exclusion is actually quite wide and is applicable to any kind of a title, short ad expression, catch-phrase or name. Let’s say your forte was collecting and writing about recipes the great chefs of the world made famous. There are a lot of people who would copy those recipes and give them a whirl. Isn’t that a copyright violation? In the instance of labels, formulas, recipes and ingredient lists, the answer is they are not protected by copyright. However, the text with the directions, explanations and other descriptions may be eligible for copyright. Tread cautiously.

What about a person who wants to use a name in business/commerce? This is different. Business names, brand names and even slogans may be protected. Trademark law says those things are protected if and when they are used in commerce to make a product stand out from someone else’s. Just to throw a spanner into the works, trademark law also says you have exclusive rights to a trademark if you are the first user (under certain conditions). You would need to speak to an intellectual property lawyer about this to find out how it may apply to your circumstances.

In general, there is some trademark protection available automatically if you use your marks in commerce/business. But you still need to register a trademark federally in order to be covered nationwide.

Just to backtrack a bit, that bestselling cookbook about the world’s greatest chefs has recipes and formulas in it, and they aren’t protected by copyright or trademark law. If you want to protect them, you either have to consider that they are trade secrets, or patent them. To that end, you can only patent a recipe or formula if it is new and not just a combo of things already in existence. Drug makers pull that kind of stunt all the time by combining two existing drugs into one and calling it a new drug.

What about the recipe for Pepsi or Dr. Pepper? While these two drinks are recipes, their origin is a formula and is therefore a trade secret. That means they’re protected indefinitely just so long as no one exposes them. A patent would grant up to 20 years protection. If you don’t know if your product or other good may be copyrightable or qualify for a patent, ask an intellectual property attorney. Finding out now saves potential litigation grief later.

Anthony Spotora is a Los Angeles business attorney, intellectual property and entertainment lawyer.  To learn more, visit Spotoralaw.com.

So you’re a talented songwriter and damn it, you deserve a big publishing deal! Now, if only a well-connected, successful, efficient music publisher would listen to your music with the same enthusiasm in which you created it, it’d be a done deal! You’d be set!

So, how-oh-how do you get to that music publisher so he or she can offer you the deal you have worked so hard for and that you most certainly deserve? How do you find that person that will share in your passion that transcends into your music, who really understands each song, who will do everything he or she can to sell and/or license those songs over and over again?

Well, think back for a minute to all of the networking events you’ve attended; to the places where you wrote those songs for countless hours; to the pitch meetings you landed; to those encouraging meetings you held with your manager. Now, think of the one thing each of those places or events had in common → you!

Your publisher is your greatest untapped resource and quite likely, it is you! Who better knows your music? Who better can you entrust it with? Who better to really work hard for the money? Who better to run your business, than you? Likely, nobody!

Upon inspection, you would find that many, if not most successful songwriters in any large publishing company are, more times than not, persons that first became successful music publishers on their own. They simply learned, some for the sake of survival, how to pitch their music; how to develop and manage their catalog; how to secure and protect their copyrights; how to build not only a business plan, but a business team and; how to create a presence or ‘buzz’ for themselves in the infamous ‘industry.’ And, once they had done so and in turn, established for themselves an operable entity, they then also stood in a much greater position to enter into a coventure relationship with a larger, more productive and more lucrative company.

Taking this strategic and time-tested approach to building your career can prove invaluable! It is simply reasonable and not only common but, common sense, that a large publishing company is much more likely to coventure with an established, smaller company than it is to bring on a beginning writer where they would have to assume a greater risk and the consequent burden of making the relationship successful.

Also, you may wish to keep in mind that most publishing deals nowadays are co-publishing deals whereby the writer receives 100% of the writer’s share of income and also a portion of the publisher’s monies. Does this sound like a deal that favors the writer? Well that’s only because it does! Maybe not such a terrible idea after all, this be-your-own-publisher idea, eh!?

If you’re still finding this to be a daunting task and need inspiration, just read the biographies of songwriting legends like Carole King and Jerry Leiber who followed a similar path. You’ll see that it may be more fiction than fact that days existed where songwriters worked in isolation, tapping their foot to the beat of their own drummer while their songs were being shopped all over town. Rather, an aggressive, strategic and well-thought out approach that is focused on shaping those musically-inclined dreams into reality is not only time-tested, but reasonably, provides more probable results.

Are there any guarantees? Well of course not! You don’t need anyone to tell you that. However, while common sense is sometimes not all that common; common sense here will tell you that creating your own publishing company and working hard to develop not only its operations but, its value, stands a much better chance of tendering you the riches and success you seek than does waiting for someone to show up at your door and offer it to you. Don’t get me wrong. . . it can happen; but I might rather choose the former approach . . .at least until someone comes a-knockin’!