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San Francisco California Intellectual Property Law Blog

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

Comic convention lawsuit: 'Genericide' in action?

In our last post, we explored the issue of "genericide." As we discussed, the genericization of a product or a brand is something that attentive business people want to avoid. The risk is that if a trademark isn't defended and the product or service it's associated with becomes commoditized, it can erode the ability to optimize earnings.

So what does defending a trademark look like? The answer to that might be most easily shown through a case that is now headed for trial in Southern California. The focus of the issue centers on something as simple as a hyphen. Specifically, a jury will be asked to decide whether the term Comic Con has lost trademark status and whether the holders of the marks allowed the genericide to occur.

How can I avoid the hazards of 'genericide'?

Some readers with receding hairlines or graying tresses will remember the age of generic products. Back in the 1980s, goods from bleach to spaghetti noodles started appearing in grocery stores. They stood out for what they lacked - specifically colorful labels, company branding and logos. Generics carried minimalist black and white labels; so instead of Budweiser, a person might buy simply Beer.

The trend seemed to have merit in concept. Name branding was thought to add cost and eliminating it would lower prices to consumers. The problem was that many came to believe, wrongly, that generic products were second best. Within a few years, generic labeling disappeared. Today, shoppers enjoy products carrying private store labels such as 365 and Archer Farms. In retrospect, these developments provide a lesson on what is known as "genericide" - the potential loss of commercial value if trademark protections lapse.

4 ways startup founders can prevent trade secret lawsuits

4 ways startup founders can prevent trade secret lawsuits

Lawsuits from an old employer can add up to expensive legal problems for a new business owner. Many startup founders face accusations from their old employers, claiming that they stole trade secrets. Startup owners may fear that they do not have the resources to fight back against these lawsuits.

A trade secret claim is at the heart of a $2.6 billion lawsuit Google filed against Uber for trade secret theft. The problems started when Uber bought Otto, a self-driving car startup founded by a former Google employee.

Following are four steps startup founders can take to help prevent trade secret lawsuits brought by former employers.

Legal options exist for seeking trade secret protection

In May of this year, the country marked the first anniversary of the enactment of the Defend Trade Secrets Act. The intent of the measure was to give companies an expanded menu of ways to protect their secrets against misappropriation by opening the door to federal court.

Prior to the DTSA, companies in California typically had to bring a trade secret claim through state courts under the auspices of the Uniform Trade Secrets Act. Each participating state adopted language based on the UTSA, perhaps tweaking provisions to suit their unique needs. That made it possible to mount a case across state lines, obviously important in our very mobile age, but it also could require going through multiple courts - prompting some legal observers to recall the adage, "Too many cooks in the kitchen." Pressing a case could be time consuming and costly.

Key issues with licensing artwork

There is art for art's sake, and there is art that has marketable value. If you are a creator with a desire to monetize your creations, finding ways to do it and protect your intellectual property rights at the same time can be frustrating. Navigating the choppy waters of copyright law is easier with an experienced pilot, a skilled IP attorney, at the wheel.

One logical way for artists to make money from their work is by leveraging their copyright through licensing. Sales can generate royalties. But what is a good royalty rate? How will payments be made? What will it take to enforce the terms of the agreement? An attorney can help answer these questions, and what follows is some basic information.

What is a work made for hire and why should I care?

Copyright law is not as simple a matter as it was before the digital age. With the arrival of the internet and the explosion of social media outlets, the possibility of copyright infringement is greater than it has ever been, and the need for copyright protection is even more important. Avoiding the first and achieving the second can be a complicated endeavor without skilled legal help.

Nor is this issue one that is restricted to just the for-profit world. It can also have implications in the non-profit realm. Read on to learn more.

"Fair use" doctrine raised in Dr. Phil Show copyright infringement case

Many of our readers are familiar with the television personality, Dr. Phil McGraw, the celebrity psychologist known for his no-nonsense and sometimes hard-line approach to personal, interpersonal and psychological problems. Dr. Phil may have celebrity status, but he certainly isn't everybody's favorite guy. As recent evidence of this, consider a recent lawsuit involving a former CBS director who worked on the show.

Peteski Productions, which owns the rights to Dr. Phil's television show, sued a former CBS director for allegedly accessing a database of the show's video files back in 2015 without authorization, making a video recording on her iPhone, and storing it on her personal computer. Peteski argued that this was a breach of the director's employment and confidentiality agreements, as well as copyright infringement. 

Right of publicity waiver: looking at the issue of consent, P.2

Previously, we began looking at the topic of consent in the context of the right of publicity. As we noted, individuals may waive their publicity rights, allowing another party to make use of their image for commercial purposes.

Again, consent is not a universal requirement for using another person’s image in a commercial context. In addition to the rules for consent in the context of commercial mediums, mentioned last time, consent isn’t required by law when using another person’s image in connection with news, public affairs, or sports broadcasting or political campaigns. 

Someone used my work online without my permission. Now what?

Someone used my work online without my permission. Now what?

In this age of the internet, when even grade school children have instant access to the world online, it seems quite normal for people to share images and words from screen to screen at the touch of a button. It only takes a tap or two to copy articles, download photos and otherwise make use of the vast abundance of material on the Web.

Right of publicity waiver: looking at the issue of consent, P.1

California, like other states, protects the right of individuals to control the use of their image in certain contexts. Under California's right of publicity statute, violation of an individual's right to control the use of his or her name, voice, photograph, signature, or likeness applies under three conditions.

The first condition for violating publicity rights is that the individual's likeness is used in any manner "on or in products, merchandise, or goods," or in advertising, sales, or solicitation of products, merchandise, goods or services. The second condition is that the use of the individual's image or likeness is knowing or intentional. The third condition is that the individual has not provided consent for the commercial uses of their image. An individual may waive his or her publicity rights by providing prior consent. 

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