Author: Gavin Law Offices

Intellectual Property of the Galaxy Far Far Away

Posted on by Gavin Law Offices

May the 4th Be With You

Any casual fan of Star Wars would assume the that the words “Star Wars” are registered trademarks. What many people may not realize is just how much of the galaxy is protected intellectual property.

Lucasfilm, the film and television production company responsible for creating and producing Star Wars, has a long history of protecting its brand and securing its intellectual property. George Lucas himself opted for future merchandising rights over a rise in salary in the 1970s (Fieldfisher). The Star Wars universe has continued to expand and evolve, especially since Walt Disney Studios acquired the production company in 2012.  As of 2019, Lucasfilm has over 1,100 federally registered trademarks and 3,952 federally registered copyrights (Suiter Swantz).

Many people contribute Disney’s and Lucasfilm’s widespread financial success to their merchandising strategy. Their expanding involvement beyond television and movie production leads to an increased need for intellectual property protection. Whether you want Star Wars themed clothing, household goods, games, books, or entire theme park experiences – there’s an officially licensed option for you.

Are these the droids you’re looking for?

It’s no surprise that STAR WARS is trademarked, but what else of the galaxy far far away has been protected? Due in large part to Lucasfilm’s, and now Disney’s, penchant for merchandise, many sayings, slogans, and design elements have been federally registered.  For instance, the cast of recognizable faces may not all be on the same side of the force but they do share this in common: characters like Darth Vader, Chewbacca, Princess Leia, and R2-D2 all have their own trademark registrations. These are used in connection with goods such as toys and costumes.

One registered trademark that may not be as obvious as the protected title or characters is the word “Droid.”  Lucas himself developed the phrase in the original 1977 film.  It refers to the humanized machines such as C-3PO and R2-D2.  Although now a common word, other companies have to pay Lucasfilm to use “droid” due to its trademark status. If other companies avoid this license, they must be prepared for possible legal action. Both Lucasfilm and Disney are no stranger to infringement disputes.

I got a bad feeling about this

While many times a cease-and-desist letter informing the infringer about his or her mistake is all it takes, some other cases require further action.  In 2016, after multiple cease and desist notices, Lucasfilm filed a lawsuit against Michael Brown.  Brown operated multiple businesses such as New York Jedi and the Lightsaber Academy.  His services included training, classes, and even certifications centered on lightsaber combat.  Further, the design of his logo was “confusingly similar” to the trademarked JEDI ORDER logo.

Brown’s webpage did include a disclaimer that his operation had no affiliation with Star Wars, Lucasfilm, or Disney.  However, disclaimers do not protect companies from trademark infringement.  It’s a common misconception that including this type of language will protect you from legal trouble.  Additionally, as Star Wars has become a household name and brand, many of its trademarks have almost certainly risen to a level of fame that protects them from trademark dilution, a claim that can be brought against any infringer of a famous mark, even if the infringer is using the mark with unrelated goods and services.

There are many instances where entities infringe upon Disney’s protected material.  Small businesses and fans often unknowingly use protected IP in unauthorized manners.  Such a large company cannot shut down every case of infringement, but they have an obligation to try. It is intellectual property owners duty to police their trademarks and copyrights.

To be continued…

With a decades long enterprise, thousands of devoted fans, and an ever-expanding universe, it’s likely the number of registered copyrights and trademarks for Star Wars will continue to increase. When it comes to both Star Wars and intellectual property, we have you covered. Rina Van Orden is not only an IP expert, but is also a huge Star Wars fan. If you’re concerned about infringement or curious about protecting your own work, Gavin Law Offices has the answers for you.

May the 4th Be With You!

Earth Day 2021: Protect the Earth, Protect Your Work

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The first Earth Day took place in 1970, with organized groups in Los Angeles, Chicago, and many other American cities. Founded by Wisconsin Senator Gaylord Nelson, this now global event helped launch the modern environmental activism movement. Over the past 51 years the focus has grown from generating environmental awareness to spurring action for our natural resources. An early proponent of environmental care, Nelson paved the way for the widespread environmental protection measures that we see today.

Branding Sustainably

On almost any store shelf, there are trademarked goods related to Earth Day causes. There are several brands that dedicate their mission to being environmentally conscious. Patagonia and Seventh Generation are great examples of these types of brands. Interestingly, there are also a variety of protected labels, certifications, and other groups that promote sustainability.

Business and Planet

For instance, the movement “1% For the Planet” is a protected mark. The entity behind the mark works to connect businesses and environmental nonprofits to bring awareness and funding to protect natural resources. The name originates from businesses’ commitment to give 1% of gross sales each year to support the partner nonprofits. Many of these businesses are then able to use the 1% For the Planet mark to help strengthen their identity as an environmentally caring brand. The model is a win-win for business and the planet! Another example is Sustainable Forestry Initiative. The organization certifies sustainable foresting practices, which include biodiversity programs, water use measures, and forest health. Products such as paper bags and lumber use the protected mark.

Reforestation

Lastly, a popular nonprofit engaging with several businesses around the world is One Tree Planted. With a focus on global reforestation, the group makes partnership opportunities easy with different models centered on planting trees. Businesses can adopt the “One for One” where a chosen action, such as product sold, represents a tree. Individuals, teachers, and students, can also participate in tree planting opportunities on a smaller level. One Tree Planted is an internationally recognized organization with a large list of dedicated partners. Reforestation efforts significantly protect air, water, and climate, as well as improve social and health related concerns. One Tree Planted’s trademarked text and design represents their dedication to reforestation. Moreover, the mark’s placement on partnered organizations signifies a concrete promise to dedicate time and resources to planting trees.

“Greenwashing”: How does it affect me?

The increase of “green” and environmentally conscious protected intellectual property has gone hand-in-hand with the rise of the practice known as greenwashing. This is often seen when brands make misleading or false claims that their product or service is eco-friendly. Greenwashing is not only questionable from an environmental protection perspective, but it has grown into a major consumer protection concern. The U.S. Trademark Office has increasingly refused to grant registration to “green” trademarks. Marks like these originally faced hurdles to registration based on descriptiveness grounds but more recently are facing refusal on the basis of deceptiveness.  These objections can be especially difficult to overcome when applicants do not fully think these issues through in the initial filing strategy for a trademark application.

When it comes to deceptiveness considerations, brands can refer to the FTC’s Green Guides. Titled “Guides For The Use Of Environmental Marketing Claims” in 1992, the updated versions provide guidelines on how to market environmental claims and how to “avoid consumer deception” [Federal Trade Commission, 75 Fed. Reg. 63,552 (Oct. 15, 2010) (codified at 16 C.F.R. pt. 260)]. Over the past several years, the issues of greenwashing and ethical environmental marketing claims have grown into a substantial topic within the intellectual property community. Brand owners must always be aware of any possible sustainable implications in their mark and communicate to consumers properly. More importantly, those seeking environmental claims should be prepared to provide substantiation of any environmental claims that their marks and/or branding imply.

2020 marked an impressive fifty years of Earth Day. Each year it becomes even more imperative to include sustainability in our lives. Whether through economic partnerships or individual lifestyles, we hope to continue protecting and enjoying our great earth.

– Rina Van Orden, Esq. & Lily Taggart

IP Strategies for Your Online Business

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Transitioning into an online business may feel daunting. From operations to technology, there are so many potentially new processes. Business owners currently operating online can also benefit from a review of their operations and how they can best protect their work. Don’t let your intellectual property strategy hinder your success! Here are five perspectives of what you need to consider when engaging online:

Advertising and Marketing 

  1. Marketing your product or service is an integral part of any business, especially when operating online. Creating an advertising strategy that abides by legal guidelines may sound confusing but there are a few easy tips.
  2. Firstly, make sure that all claims are truthful and substantiated. If you’re selling socks, don’t say that they can fix a broken bone.
  3. Don’t forget that this also applies to social media. Not only you and/or your business, but anyone you may work with such as content influencers, with must adhere to these rules.

Trademarks

  1. Select a strong name and/or logo for your business. What is a strong name? A good rule of thumb is, if it describes what you’re selling, it’s probably not distinct enough.
  2. Make sure you take steps to decrease the likelihood of infringement. Before committing to a name to use commercially, consult with a legal team to search existing marks and assess potential risks.
  3. Will you conduct business in multiple countries? Keep up to date with individual country’s trademark requirements so you understand how to file.
  4. Lastly, make sure to review your contracts to be aware of which rights you have and which rights you are granting. You cannot grant any rights that you don’t have! If you need help deciphering a contract, reach out.

Copyright

  1. Is there content that you use on your website, social media, or mobile apps? Make sure you know whether you can use media like music, text, photos, art, video, or other content in various ways- personally, commercially, within whatever geographic restrictions. Additionally, follow “proper credit and/or attribution” requirements for the content.
  2. Are third-parties able to post content on your website? You may want to limit your liability against their potential copyright infringement by taking advantage of the Digital Millennium Copyright Act (DMCA)’s Safe Harbor. Let us know if you need help navigating these requirements.
  3. Is there a person whose name, likeness, or image you are using in connection with your business? There are right of publicity laws that you must follow as well as applicable state laws.
  4. An online entrepreneurs’ website is like their online storefront. Do you have a clear agreement with your website or software developer? Make sure any other tools created for the operation of your business, like mobile apps, are included in your strategy. A well-written contract is a good way to take preventative measures before the work is done to avoid later infringement or theft.

Privacy and Other Legal Considerations

  1. Be in the know when it comes to changing data privacy and internet laws. Specific state laws may apply to your business even if you are not physically located there.
  2. The California Consumer Privacy Act (CCPA) and Californica Public Records Act (CPRA) grants California residents greater control over their personal data and how businesses use that information. If you want to prepare your businesses for CPRA compliance, start by reviewing how your company collects data, and then contact a professional about how to make sure everything is above board and complies with the new laws.
  3. Virginia recently passed similar legislation known as the Consumer Data Privacy Act (CDPA). There are some differences compared to California’s legislation such as which businesses apply to the regulations.
  4. Finally, set up your online presence to comply with other regulations such as the Americans with Disability Act (ADA). For example, make online offerings available to those with disabilities. Other important legislation includes the Children’s Online Privacy Protection Act (COPPA) and the Communications Decency Act (CDA).

Protection Strategies

  1. Last but certainly not least, educate yourself and pursue all routes to protect your content.
  2. Seeking registration with the Copyright Office and/or the USPTO is a great first step in protecting your business and intellectual property.
  3. Another strategy which helps to prevent improper use is to include notices on your website, social media, and /or mobile applications.
  4. If you are concerned about improper use, explore all monitoring tools and consult with your legal team.

Whether you already conduct business online or not, the internet is here to stay. It’s become an invaluable economic resource, especially with the need for remote options in the past year. As such a fast and accessible way to work, make sure you take into account all your legal and commercial options as an intellectual property owner.

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

Protect Your Brew: National Beer Day and IP

Posted on by Gavin Law Offices

It’s no secret that Virginia loves a good brew. Virginia boasts an impressive selection of craft breweries and cideries, with more than 30 breweries in Richmond alone! But, did you know that several other states have an even higher proportion of breweries per capita? Vermont, Maine, and much of the Pacific Northwest carry an even denser selection of craft beer.  With so many small and mid-size independent brewers emerging in Virginia and across the country, it’s important for those in this increasingly competitive industry to understand their intellectual property rights. This National Beer Day, we wanted to share important legal considerations for those in the industry.

Our legal team tailors our established expertise in the field of intellectual property to assist in the protection and success of brewery-specific concerns.  From business formation to naming your brews, to protecting specialty artwork and maintaining local partnerships we offer assistance so you can focus on your craft.

Trademark Law:

How much have you attached to your brand’s name and logo? A trademark represents all the hard work you have put into your business and sets you apart in the field.  We can assist you with protecting your business/brewery name, beverage names, and taglines or slogans and enforce your rights in the same.  It is important to take steps to solidify your brand and ensure that your product is not confused with others.  Additionally, working with counsel prior to using a new trademark can help protect you from infringing upon others’ rights, and could avoid a costly infringement scenario.

Trade Secret Law:

How important are your recipes to your business? The recipes for your unique ciders and brews are only as valuable as they are kept in confidence. Trade secrets can be vital to a company’s survival, and are often among a business’s most valuable corporate assets.  Failing to properly protect trade secrets (for example, by filing a patent for a recipe that then discloses the details to the public) can prove disastrous for businesses.  Trade secret law provides an avenue to protect your valuable intellectual property while allowing it to be kept secret and potentially protected forever (while a patent only lasts for 20 years, a trade secret will last for as long as it is kept secret). Fortunately, there are measures you can take as well as policies and contractual provisions we can help you put in place to help protect your trade secrets.

Copyright Law:

Do you have artwork on your label? Did an artist create your logo or website? Alcohol brands dabble in copyright law more than you may expect. Brands should recognize the importance of filing and registering copyrightable subject matter to protect their hard work. Copyright registration and strong contracts and/or copyright assignments when necessary can help avoid preventable issues such as ownership disputes and infringement actions.  For example, under copyright law the author of the artwork, logo, website, etc., could own that material instead of the business unless the business has agreements in place that state otherwise. Our team can help ensure rights to commissioned works are transferred appropriately and provide the best copyright enforcement approach.

Licensing Law:

Do you want to partner with a local bakery for a wheat beer? How about a local coffee place for a stout? These kinds of deals can involve the sharing of proprietary information, and the parties may need to obtain permission to use the other’s trademarks and/or copyrights to market the product. Ensuring that proprietary information is kept confidential, and that certain guidelines are followed by the other business using your trademark, are smart measures to take.

Contract Law:

One of the best ways to safeguard against the various intellectual property issues mentioned above, as well as other legal issues impacting breweries, is a well drafted contract. Do your existing contracts cover all the bases with your vendors, business partners, or other third parties? How about your employment agreements?  Are they protective enough of your company in the event of a disgruntled employee? Thinking through these issues and contacting an attorney for assistance is not cynical – it’s a smart step towards safeguarding your business and ensuring its success.  Companies in the alcohol industry have significant need of contracts due to the many moving components needed to operate, and there is no one-size-fits-all contract.  Notably, brewers conducting business in certain states including California and Virginia should consider whether data privacy laws apply to their businesses that may impact their contractual requirements (The forthcoming  Virginia Consumer Data Protection Act may affect your business, which you can learn more about here.)

Celebration of National Beer Day on a brewery patio in Richmond, VA

This National Beer Day, we would like to raise a glass to the love and dedication that Virginia brewers pour into their craft.  Craft breweries, cideries, and wineries in any state should explore how considering these legal issues and putting protections in place can benefit their business. No matter what your specialty is, we want to help you protect it.

(This blog post is not intended as legal advice.  Please contact us for more information and assistance regarding your particular situation.)

 

 

Are Your Domain Names Protected?

Posted on by Gavin Law Offices

As use of generic top level domain names (gTLDs) grows, so does the risk of trademark infringement. When the original gTLDs were released, one strategy for fighting infringement was the use of domain blocking services. Sunrise B (SRB) refers to the domain name blocking service associated with the .xxx domain name.  SRB service blocks the registration of domain names in the .xxx gTLD that match the participants’ trademark and certain limited variations of those marks.

SRB participants enjoyed a 10-year block on .xxx domain names that matched their trademark. However, this protective service expires in December of 2021 and will be replaced by AdultBlock and AdultBlock+ services, collectively referred to as the “AdultBlock Services.” These services block domain name registration for protected trademarks in the .xxx, .adult, .porn, and .sex gTLDs. SRB registrants have the opportunity to rollover to the new AdultBlock Services with no additional verification.

As the deadline approaches, rights holders will have to decide what strategy is right for their goals. Like SRB, registering for AdultBlock Services provides considerable benefits for maintaining the strength of your trademarks. In doing so, registrants take control of their brand’s reputation and protect against potential damage.

There are some prerequisites to registration with AdultBlock services. Specifically, the participant must have registered their trademark with the Trademark Clearinghouse or be a SRB participant. With so many factors to consider, it’s important for potential participants to create a plan that is right for them. To learn more about how to decide if this is the right choice for your situation, contact Gavin Law Offices, PLC.

 

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

 

–  Elizabeth Sewell and Lily Taggart