Women in Food Networking Social

Rina and Elizabeth had a great time at The Savory Grain thanks to CreativeMktGroup and their partners, Real Local RVA, By Jacqui Photography, and The Apple Cart. The Women in Food Networking Social was a hit and it’s been amazing to re-connect with the Richmond business community. We can’t wait for more fun events this summer!

Richmond business owners with Gavin Law attorneys Rina Van Orden and Elizabeth Sewell


Protecting Your Business’s Various Assets

Businesses today have more types of informational assets than they may initially realize.  These assets include company data, intellectual property, confidential information, and personally identifiable information.  While these categories are related, and in many cases overlap (for example, client lists, know-how, etc.), businesses should consider important distinctions between such assets that require different handling and protections.  These issues are particularly relevant in relationships between your business and a third party, for example:

  • Employee and independent contractor agreements that address access and use of such assets
  • Contracts with vendors (such as creative, technology, and manufacturing providers)
  • Business arrangements such as joint venture, investor, and profit-sharing agreements
  • Policies and agreements addressing privacy and data security

To ensure your assets are properly protected, your business needs written documents that clearly address ownership of each type of asset, and the rights and obligations of each party.  Our goal is to help your business obtain the desired outcome in any given relationship, and we can help you carefully consider how to treat certain types of information/assets and recognize aspects that may require they are handled differently.

Company Data

During the course of business, you may share certain company data with vendors, business partners, etc., that does not necessarily fall under the definition of PII, Confidential Information, or Intellectual Property.  However, it is important that businesses still protect such data, and we can assist by ensuring that language addressing your business’s ownership of company data, the retention and return/deletion of such data, etc., is included in all relevant contracts.  If your company follows a data management policy that mentions security and retention of data, that policy may be something you ask third parties you contract with/that you will be sharing data with to follow as well.  Including an overarching term for your company’s data/assets can help ensure that any information not otherwise defined does not slip through the cracks.

Intellectual Property

Intellectual Property generally refers to a company’s patents, trademarks, copyrights, and trade secrets.  Intellectual Property is a huge value to a business and should be treated by companies as a distinct asset whereby ownership, liability, and indemnity of the same is carefully considered when entering into agreements with third parties.  Businesses may wish to clearly address Intellectual Property in any internal data management and security policies as well.

Confidential Information

The term “Confidential Information” broadly refers to a business’s proprietary information and is commonly defined in agreements.  However, many contractual provisions covering parties’ treatment of Confidential Information are bilateral, meaning that the same obligations are placed on both parties to the agreement.  Thus, companies should be aware of the responsibilities they are agreeing to take on regarding their treatment of the other party’s Confidential Information.  An attorney can also assist you with drafting contractual language that addresses unintended disclosures of Confidential Information.

Personally Identifiable Information (PII)

Several U.S. states have enacted data privacy laws that place requirements on covered businesses regarding their treatment of consumers’ PII.  Further, all U.S. states have passed some type of legislation that addresses data breaches involving PII.  Because PII is becoming more and more regulated, businesses should ensure that their internal data management/security programs, as well as their contracts with third parties, clearly define PII and set out requirements regarding the treatment of this type of information.  Best practices also require that businesses protect consumers’ PII via reasonable security measures considering the nature of the information.


The different types of data and assets mentioned above all provide unique value, but also present discrete threats to your company if not treated distinctly and properly.  We recommend having an attorney draft or review your business’s contracts with third parties to ensure that your assets are properly considered and protected, and that you have minimized legal risks as much as reasonably possible.

Rina Van Orden, Esq. and Courtney Reigel, Esq.


(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Domain Names Disputes and Delays at WIPO

Last month, attorney Courtney Reigel attended a webinar addressing ongoing delays at the World Intellectual Property Organization (WIPO).  Specifically, the webinar discussed the increase in the overall number of Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints WIPO has received since the beginning of the pandemic.

Domain name registrars such as GoDaddy are required to follow the UDRP. The UDRP establishes an expedited administrative process for resolving disputes involving the registration of internet domain names.  While other trademark-related legal matters must often be resolved through arbitration or litigation in federal court (which can be costly and time consuming), holders of trademark rights may file UDRP complaints with WIPO or another approved dispute resolution service provider to resolve issues involving abusive registrations of domain names (e.g., “cybersquatting”).  UDRP complaints generally offer an affordable, efficient, and straightforward option for us to resolve domain disputes for clients.

While UDRP complaints remain a useful tool for addressing domain name matters such as cybersquatting and “typo-squatting,” WIPO is currently experiencing delays in processing times for reviewing such complaints and issuing decisions.

Generally, the cause for the delay is the increase in overall number of UDRP complaints being filed with WIPO.  2020 was a record-breaking year for the number of domain name disputes filed with the organization.  However, this year is already on track to surpass 2020 in number of domain name disputes filed.  The increase in complaints is due to several factors, including the fact that there has generally been more internet activity as people shopped and worked from home during the pandemic. Additionally, the pandemic created new opportunities for cybersquatters to register and use domain names that contain a trademark plus the terms “coronavirus,” “covid,” or “vaccine,” for example.  The ICANN WHOIS service used to investigate registrant information for potentially infringing domain names no longer offers the same information it used to.  Due to privacy laws such as Europe’s General Data Protection Regulation, as well as the increase in number of privacy and proxy services registrants can use, registrant information (an individual or business’s name, address, and contact information) is no longer readily available.  In some instances, the only way for trademark holders to determine who is responsible for registering a domain that appears to infringe their intellectual property rights is to actually file a UDRP complaint and wait for the domain’s registrar to provide such information.  Further, the lack of registrant information makes it difficult to combine complaints involving several domain names that have the same registrant together into a single complaint (previously a common practice), which is also driving up the number of overall complaints.

Attorneys can help trademark holders monitor for potentially infringing domain names and enforce their rights, which often includes preparing and filing a UDRP complaint.  In light of the increase of bad actors online, such monitoring can be critical for preventing trademark dilution and avoiding the harm that can be caused by infringing domain names.  We can also draft complaints that clearly articulate trademark holders’ rights and address key issues to assist WIPO with reviewing complaints and issuing decisions as quickly as possible. The pandemic and changing laws compel a more strategic approach for handling domain name disputes, and we continue to monitor developments and are readily available to help clients with these matters.

Rina Van Orden, Esq. & Courtney Reigel, Esq.

Copyright Fair Use Cases that aren’t Google v. Oracle

Fair use is a common yet complicated defense against copyright infringement. And it can be difficult to predict the outcome. Content creators often creatively transform existing copyrighted material for purposes like commentary, criticism, research, or education. Because such use of copyrighted material is ultimately in furtherance of the overall objective of copyrights, would-be infringers can evoke the fair use defense to avoid liability in certain narrow instances. What is and isn’t covered under fair use is often confusing and involves defining “transformative use” for different situations. This can be complex, albeit interesting due to the people and works involved. A roundup of cases sheds some light on recent developments in this area of copyright.

Dr. Seuss Enterprises, L.P. v. ComicMix, LLC

An unlicensed book titled Oh the Places You’ll Boldly Go! (“Boldly”) drew Dr. Seuss Enterprises to take action in 2016. The book was a mash-up of the popular Dr. Suess work Oh the Places You’ll Go! and science-fiction material from the Star Trek universe.

A trial judge initially ruled that due to the “highly transformative” nature of the work, the mash-up was allowed under fair use. However, on appeal to the Ninth Circuit, Dr. Suess Enterprises prevailed on its copyright infringement claim. ComicMix, LLC, the entity behind Boldly, argued that the work was a parody, i.e. commentary and criticism of Dr. Suess’s original work. The Ninth Circuit rejected this defense finding that Boldly was not a transformative use, but merely a “repackaging” of the Dr. Suess world for commercial gain.

This case drew attention from those in the copyright arena since it helps clarify the Ninth Circuit’s views on protection of mash-ups. While ComicMix argued that the combination of elements from the two distinct creative works was inherently transformative, the Ninth Circuit strongly disagreed, finding that all four factors of the fair use test weighed in favor of Dr. Suess Enterprises.  This is a notable decision and content creators in the mash-up space should proceed with caution.

The Andy Warhol Foundation v. Goldsmith

What do Andy Warhol, Prince, and a 1984 issue of Vanity Fair have to do with intellectual property in 2021? A whole lot more than you might expect. These were the subject of a recent ruling by the U.S. Court of Appeals for the Second Circuit that, like the Dr. Suess case above, drew a narrow boundary around transformative use. In this case, the court determined that Warhol’s use of a famous photograph in his artwork did not meet criteria for a fair use defense.

Lynn Goldsmith is a prolific professional photographer known primarily for her work with celebrities and musicians, among other achievements. In 1981, she took a series of portrait photographs of Prince in her studio. Vanity Fair legally used one of these photographs as an artist reference in 1984, and that artist happened to be Andy Warhol. Warhol subsequently made several more works from the photograph without Goldsmith’s knowledge.

After Prince’s passing in 2016, Goldsmith learned about Warhol’s unlicensed use of her work. Soon after, she asserted a copyright claim. The Andy Warhol Foundation contended that the works were not infringement, and the district court agreed. The court reasoned that Warhol’s works constituted transformative use of Goldsmith’s photographs in part due to their immediate recognizability as a ‘Warhol.’  Upon appeal, the Second Circuit reversed the original decision, reasoning that the work did not constitute transformative use. Notably, the opinion included the distinction that if they were to uphold this ruling based on Warhol’s recognizability that it may create a “celebrity-plagiarist privilege.” Like the Dr. Seuss case, this decisions narrows the availability of a fair use defense.

Georgia v. Public.Resource

Public.Resource is a nonprofit advocacy group that focuses on making public domain content accessible to everyone. The group is particularly invested in making United States Federal Government documents accessible, often through digitizing records. Generally speaking, government produced materials are in the public domain. However, Georgia v. Public.Resource brought to light questions surrounding how states should use copyright. The State of Georgia published some state code online, but annotated versions were only available to paying users. Public.Resource spread these annotated – and copyrighted – versions online without permission, which led Georgia to sue them in 2015.

The Eleventh Circuit ruled in favor of Public.Resource, reasoning that the codes were part of state law and therefore could not be copyrighted. The state assembly of Georgia appealed this decision to the Supreme Court. In April 2020, the Court ruled in agreement with the Eleventh Circuit that Georgia does not have copyright over its legal code. The majority opinion held that copyrighting official works of the Georgia legislature could deprive citizens the full knowledge of the laws.

Do these recent rulings change the nature of Fair Use?

Many in the field are looking to these and other relevant rulings to see what can be garnered about the nature of fair use. Unfortunately, as can be seen here, there isn’t a one-size-fits-all approach to determining what is and is not fair use. With factors that must be analyzed on a case-by-case basis, fair use defenses are difficult to assess and content creators should not assume they have a viable defense when using another party’s content. If you’re concerned about infringement, contact Gavin Law Offices today.


Interested in copyright? Read here!


Hidden Risks of the Side Hustle

If you’ve ever searched online for ways to make extra money, you’ve likely come across a multitude of “side-hustles.” The side hustle has become an increasingly trendy topic, especially with the recent changes in remote work. These ways of increasing your cashflow can be benign, but several popular avenues come with hidden risks.

Domain Name Marketplace

You may be thinking that it’s profitable to buy and sell domain names. That can be true! But you face risks in that process that you need to be aware of. Namely, if you are purchasing a domain name that is valuable specifically because it trades on the brand of a well-known company, you could be infringing someone’s trademark, violating anti-cybersquatting laws, and generally making a lot of people really angry.

Buying and selling domain names is also referred to as domain flipping. This is a side hustle because people can buy domain names from registrars such as GoDaddy and attempt to later resell them for a profit. Whether the flipper builds an actual website with the domain is up to them. “Domain parking” refers to flippers that do not build a site tied to the purchased domain(s). Another strategy is to invest in the site and increase traffic to make it more valuable. This practice can be lucrative – investing.com was sold for $2.45 million in 2012. But like most headline grabbing stories, it’s not as safe or simple as it sounds.

One of the major risks with purchasing domains is the potential to infringe on someone’s protected intellectual property. Even with research, you could purchase a domain name that is too similar to an existing brand and wind up paying the price. It’s a good idea to consult a lawyer to make sure a domain name doesn’t gain value from an existing source.

Finally, domain flippers must be aware of the dangers of cybersquatting. Although cybersquatting as a practice is often intentional, even unintending flippers can violate anti-cybersquatting policy. The Anticybersquatting Consumer Protection Act covers a range of domain buying and selling practices that could get side hustlers in real trouble.

Options for Trademark Owners

Cybersquatters – and potentially unknowing flippers – commonly obtain exact or confusingly similar domain names to protected marks. Since infringement is so frequent, it’s important to monitor your protected property. An experienced legal team can build the best strategy for your situation and help you keep an eye on the marketplace.

Trademark owners worried about potential infringers or cybersquatters have options. There are different types of actions mark owners can take if they find out a domain registrant is making money off of the owner’s mark. The general first course of action is to send a cease-and-desist letter. This addresses trademark ownership, how the domain name is infringing and causing damage, and your willingness to take the appropriate legal action if the infringement does not stop. If no action results from a cease-and-desist letter, you may wish to involve an attorney who can guide you and implement the correct course of action to stop the infringement.

Side Hustle Risk: Creative Infringement

People can make a lot of money selling and designing creative t-shirts, but you are better safe than sorry when it comes to designing shirts that are valuable because someone else has created the content it is based on. Using online platforms such as Etsy or Instagram means that your activity is subject to federal regulation. Goods that use characters, slogans, or even inspiration from protected works risk both trademark and copyright infringement.

Using the content of businesses commercially without express permission or license is trademark infringement. A common example is personalized goods with college or university logos. These are protected intellectual property so commercial use on your t-shirts without permission is infringement. Another example is fan gear for professional sports teams. A quick search of these online marketplaces shows plenty of stores using infringing material which might make you feel safe. However, just because other stores are selling these doesn’t mean it’s legal. Or the the trademark owner won’t shut that store down. The risk of infringement outweighs any potential gain from unauthorized use.

This type of side hustle also risks copyright infringement. T-shirts with popular tv characters or quotes from a new bestselling movie may fly off your shelves, but remember: their value comes from someone else’s work. And federal copyright infringement claims come with a hefty price tag.

Another common mistake is using pictures from Google. Without checking the source, it’s highly likely that you do not have permission to use that property commercially. No matter what good you’re interested in creating and selling, make sure it’s your original design. If what you’re selling gains value from established content – and you don’t have permission to use it – think twice. Like trademark infringement, copyright infringement can lead you into a mess of legal trouble.

To sell or not to sell

The public domain refers to a collection of works without exclusive intellectual property rights. For instance, the works of William Shakespeare are in the public domain. This means that if someone wanted to do a theater reenactment of Shakespeare’s work, they wouldn’t have to have a license or permission to do so unlike a copyright protected work.

Another type of side hustle involves publishing work from the public domain. There’s always a demand for classics such as Little Women, Treasure Island, or The Great Gatsby, which entered the public domain as of January 1, 2021. Entrepreneurial side hustlers have filled this demand by turning these public domain works into e-books on platforms such as Amazon Kindle. Due to the lack of copyright protection of works in the public domain, infringement can disappear if you are using or inspired by works in the public domain. There are enterprises which have successfully used this hustle – such as the man who sold 64,000 Anne of Green Gables e-books.

However, if you’re thinking this is the new trick for you, don’t dive in too fast. Calculation of the time a copyright is active can be complicated. One version of a work may be in the public domain, but another is not.  It’s important to err on the side of caution and contact a lawyer to be safe if you feel conflicted. No matter what side hustle you’re thinking of pursuing, always do your research and be aware of the hidden risks. If you’re a trademark or copyright owner worried about potential infringers, remember you have options.

(This is not intended as legal advice. Contact a lawyer for assistance in your particular situation.)

Kat Gavin, Esq.