Category Archives: Intellectual Property Law

Have You Been Contacted by the BSA? Don’t Wait to Contact an Attorney.

In past articles, we have discussed what to do if you have been contacted by the Business Software Alliance (“BSA”) regarding potentially unlicensed software. See Driving Your Computer without a License: Beware the Wrath of the BSA and Software Audit Demand from the BSA.

This article, however, will focus on the importance of getting an attorney involved early in the process. Recently, a potential client contacted the firm who was in the middle of negotiations with the BSA over alleged unlicensed software. By the time we were contacted, the company had already conducted an audit, without any limitations, and provided the results to the BSA. The company had subsequently received a settlement offer from the BSA and was looking for legal advice regarding the offer.

While it is smart to seek out legal representation, by this point almost all the leverage the company had to negotiate was gone. The company had given the BSA everything they had asked for and provided the BSA with evidence, evidence the company itself created, of the infringing software.

Had the company sought legal representation as soon as it received the first demand from the BSA, it would have had significantly more leverage to negotiate and would have likely not sent the BSA evidence that incriminated itself.

The BSA conducts fishing expeditions. The BSA takes some evidence of infringing software (e.g., a former employee reports a company to the BSA for having unlicensed copies of Microsoft Office) and attempts to use that information to “fish” for other potentially unlicensed software belonging to any of their member companies, which include Adobe, ANSYS, Apple, Autodesk, Bentley Systems, CA Technologies, CNC/Mastercam, DataStax, Dell, IBM, Intuit, Microsoft, Minitab, Oracle, salesforce.com, SAS, Siemens PLM, Splunk, Symantec, The MathWorks, Trend Micro, Trimble and Workday.

Essentially, the BSA will request that an audit of all software belonging to any of its member companies be conducted and a report furnished to it, despite only having information to support infringement of one product belonging to only one member company. If a company blindly follows this request, it could be turning over evidence to the BSA that the BSA will turn around and use against it for significant monetary damages (up to $150,000 per infringing work).

Involving an attorney early in the process will help ensure that any audit is limited only to the software for which the BSA has credible evidence of infringement and that any incriminating evidence is not disclosed to the BSA.

By doing this, the company can limit its exposure and keep significant leverage in negotiating any settlement. Once the cat is out of the bag, however, it is too late and the BSA will hold all the cards.

If you have received a demand letter from the BSA, you should contact an attorney at Smith & Associates to discuss your rights.

BMI Copyright Infringement Lawsuits

Yesterday, BMI filed two copyright infringement lawsuits against area restaurants. In these lawsuits, BMI maintains that these restaurants allowed the unauthorized public performance of songs to which it holds the copyright. In layman’s terms, this means that the restaurant played the radio over the speakers without first purchasing a license from BMI.

Many restaurant owners are not aware that the simple act of playing songs over the speakers can constitute copyright infringement if the appropriate license is not purchased. This simple act can have large consequences. For each unauthorized song played, the restaurant can be liable for up to $150,000.00 in statutory damages plus attorney’s fees and costs. All of this just by turning on the radio.

If you or your company have been contacted by BMI regarding unauthorized performance of songs, you mast act quickly to protect your rights. At Smith & Associates, we not understand litigation and copyright law. If you need help addressing this or any other copyright issue, please contact us for a free consultation.

Can I get a U.S. Trademark Registration to Protect My Brand?

While there are many factors that determine whether or not a particular brand or mark can be registered with the U.S. Patent and Trademark Office, the three most important factors are distinctiveness, likelihood of confusion, and use in interstate commerce. Your brand must be distinctive, this is a legal term of art that will be described later. Also, your brand must not confuse consumers into thinking your brand is represents some other entities goods or services. And finally, you must actually be using your mark in commerce.

Distinctiveness

It is generally accepted that there are five levels of distinctiveness. They are listed below from most distinctive to least distinctive.

Artful/Fanciful: This level is the most distinctive. They are words that were invented to represent the product or service. The words have no meaning other than the invented meaning. Examples include: Xerox, Google, Kodak, Bidzuku.
Arbitrary: These are words that have a dictionary meaning, but that meaning does not relate to the product or service. The most notable example of this is ‘Apple’ for a computer company.
Suggestive: These are marks that ‘suggest’ what a product is by the name. These marks are more than just ‘merely descriptive’ of the product and are considered distinctive by the Trademark Office. Be careful because these levels are subjective and what may be suggestive to you could be merely descriptive to the Trademark Office. Examples include: Citibank, Playboy, and Mustang.
Descriptive: These are marks that merely describe the product or service. While there are methods for registering descriptive marks, for all intents and purposes, these marks are not distinct enough to be registered with the Trademark Office. Also note that surnames usually fall within this level. Examples include: Qik Print, Eyeglass Superstore, Chinese Restaurant.
Generic: These marks merely describes the category of goods or services. These marks are not protected. E.g. Food, Restaurant, Computer.

For you to register your mark, the United States Patent and Trademark Office (USPTO) must determine that your mark is at least suggestive. While there are ways to register a descriptive mark, that is outside of the scope of this post.

Likelihood of Confusion

Your brand cannot mislead or confuse consumers. This usually occurs when your mark is the same or similar to existing trademarks. For example, it might be possible for two companies to use the mark ‘Apple’ if one was selling computers and the other was selling teaching supplies. Conversely, even if the mark is different, if it is similar enough and in the same or similar class, consumers may still be confused. For example ‘Teachbook’ may infringe on ‘Facebook’s’ mark. Even if there is not a similar mark registered with the U.S. Trademark Office, there may still be uses of your mark that will affect your rights. Trademarks can also be filed with a state or acquired through use (this is called a common law trademark). While these marks may not preclude you from registering with the U.S. Trademark Office, they can prevent you from using your mark where they have priority over your mark. This is why a good trademark search is vital before attempting to register your mark.

Use In Commerce

This is another term of art, but it basically means that the mark is actually being used to sell goods or services. Thus if you are still in the planning phase of your project, you cannot get a trademark. You must actually be using the mark. However, there is an ‘Intent to Use’ application that can be filed when you know you want to use a mark, but are not yet using it. This does not grant you any actual protection, but it will provide a record of your use of the mark if you are worried someone might try to steal your brand. If you do file an Intent to Use application, you will still be required to file an actual registration to obtain any rights.

Conclusion

This is just a general overview of some of the key issues when it comes to eligibility to receive a U.S. Trademark Registration. Your specific situation will affect if your mark can be registered. If you have any questions, please feel free to contact us here.

Protecting Your Online Brand

To compete in today’s online world, most companies need to have an online presence. Beyond just having a company web page, many companies choose to engage with their customers and potential customers via social media, as well. And while the Internet has created new avenues for these companies to generate business, they have also created new ways for competitors to deceive and mislead consumers. While false advertising by competitors has always been around, the Internet has allowed businesses to cheaply reach large audiences with their misleading advertisements. These false and misleading advertisements can damage a company’s brand and cause them to lose serious revenue.

One of the quickest and easiest ways for a competitor to damage a brand online is for it to scam review sites. Websites like Yelp allow customers to rate their experience for everyone on the Internet to see. In certain industries, like the restaurant industry, these reviews have a massive impact on a consumer’s decision to patronize the business. While honest reviews are good for consumers, false reviews can hurt consumers and the businesses that play by the rules. Companies have found they can scam these sites by posting fake, positive reviews about themselves or by posting fake, negative reviews about their competitors. Some companies take it upon themselves to do the hard work and to actually post the fake reviews themselves like in Yelp, Inc. v. McMillan Law Group, Inc. In that case, Yelp accused McMillan of using his employees to set up fake Yelp accounts to post fake, positive reviews of his own law-firm in an effort to overshadow one negative review he had received. However, if the company is too busy to do it itself, there are entire businesses set up that do nothing but post fake reviews on review sites (see Edmunds v. Humankind Designs, Ltd.). All a company needs to do is pay some money and watch the positive reviews roll in. While review sites seem to be aggressive in stopping these fake, positive reviews, they are much more protective of the negative reviews. In Yelp, Inc. v. Hadeed Carpet Cleaning, Hadeed believed that many of the negative comments on Yelp about its business were fake and from a competing business. Hadeed attempted to get the identities of the reviewers from Yelp and Yelp refused to disclose them. Hadeed had to fight all the way to the Virginia Supreme Court just to get the names of the anonymous reviewers revealed.

While scamming online reviews requires little effort, some companies have taken deception to a whole new level. In Avepoint, Inc. v. Power Tools, Inc. d/b/a Axceler, Avepoint accused Axceler of creating a fake LinkedIn profile that purported to be an employee Avepoint. The LinkedIn profile stated that the fake employee was based in China and used this to mislead consumers into believing that Avepoint was a Chinese company that produced its software in China. An Axceler sales executive even went so far as to tweet about meeting this fake employee – “Just ran into Jim Chung from Avepoint, Good guy.” Keep in mind, Jim Chung doesn’t actually exist. Avepoint claims that these actions, along with other deceptive and misleading claims, caused consumers to leave them for Axceler.

With all of the opportunities for a competitor to scam the system, how can a company protect itself? Fortunately, there are numerous causes of action that can protect a company from false, deceptive, and defamatory comments and advertisements online. For example, in the Avepoint case, the Court refused to dismiss Avepoint’s trademark infringement, defamation, and deceptive and unfair trade practices claims against Axceler. However, to stop these illegal actions, a company needs to be aware that they are happening. Companies should regularly monitor their online presence by keeping tabs on the reviews being posted about it, Googling the company name, and searching Twitter and Facebook for the company name. That way, the company sees its brand the way consumers see its brand and, if there is false or deceptive content online, the company will become aware of it and can take action.

Social media and review sites are the norm for customers and businesses. Customers rely on these sites when deciding where to spend their money. Sadly, due to this opportunity to make money, less than ethical companies have found ways to scam the system. To stay competitive, ethical companies need to monitor their online brand and be prepared to take action to protect it from fake, online content.

If you have been a victim of online trademark infringement or false advertising or need help determining if you have been a victim, contact us at Smith & Associates at 321-676-5555 for a free consultation.