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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Category Archives: Trademark

A Legal Primer for Bloggers – Intellectual Property

11 Friday Sep 2009

Posted by Kenan Farrell in Authors, Bloggers, Copyright, Intellectual Property, Social Media, Tech Developments, Trademark

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A Legal Primer for Bloggers, Part 2 – Intellectual Property

This post continues a series dealing specifically with the legal issues that bloggers should be thinking about.  Part 2 will help you understand your rights to link to information or graphics from other sources, quote from articles and blogs, or otherwise use someone else’s copyrighted works.  It will also discuss the appropriate use of trademarks in blogs (both your marks and those of others).

I. Overview of Intellectual Property

What is copyright?

Copyright gives a creative person control over the use of an original work of authorship.  A copyright owner has the exclusive right to reproduce a work, prepare derivative works, distribute copies or perform a work publicly.  In the world of bloggers, original works of authorship can include text, images, audio or video creations (and a whole host of other things).

What is trademark?

A trademark is a distinctive sign or indicator used to identify that the products or services with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.

So think:

Pepsi®, McDonalds®, Apple®

Or:

pepsi logo mcdonalds apple logo

When you either hear/read the word mark or see the logo mark, you immediately associate that trademark with a particular product or service.  Obviously, these are examples of very strong trademarks.

II.  Copyright

Copyright issues start to come into play when you publish material created by others on your blog or, conversely, when someone else republishes material that you posted on your blog or website.

Copyright law applies to the reposting of text, images, audio and video.  If you’re posting somebody else’s original work, you’re likely violating one of the exclusive rights mentioned above. But as you, me and anyone else on the Internet knows, people are copy/pasting, hyperlinking and cross-referencing all over the world, all the time.  Are they all liable for copyright infringement? Luckily, the Copyright Act has a built-in exception called “fair use” that allows you to use other people’s copyrighted works for certain, enumerated purposes.  These include criticism, comment, news reporting, teaching, scholarship or research.  So, for example, if you are commenting on or criticizing an item that someone else has posted, and use a quote from that source, that’s probably fair use.

The following factors are considered in a fair use analysis:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

Keep in mind that the law favors “transformative” use.  In other words, if you’re reposting another person’s original work, it’s more likely to be fair use if you’re using that work in a different manner or for a different purpose than the original.  While you may borrow directly from another source, adding your own commentary and content is better than strict copying.  Likewise, it’s better to repost only a small portion of someone else’s work than the work in its entirety.

If you feel that you’ve gone too far in your copying, you probably have.  Consider whether you’re able to share the same information but in a different way (i.e. your own words).  If you can’t, that’s strong evidence it’s a fair use.  Don’t worry if you’re confused…this is a gray area in copyright law that isn’t totally clear to anyone at the moment.  If you have specific questions about your use of someone else’s creative works or someone else is using your works, contact a copyright professional (who should be well-versed on legal developments and what typically constitutes fair use) to provide a more detailed analysis.

Also, on a practical note, if you’re using someone else’s text or images and they contact you to ask you to remove them, you probably just want to go ahead and do it.  After all, there are lots of different ways to express an idea and usually hundreds of equally wonderful pictures to adorn your blog.  On the other side, if you find someone else using your text or images, take a deep breath before contacting them and remember what Barney says about sharing:

III. Trademark

Let’s talk first about your own trademarks.  Often you’ll have spent good time and money developing and protecting your trademarks.  It would be a shame to lose your rights through improper use.  Proper use enhances a mark’s ability to identify the origin of products or services, and minimizes the likelihood that a mark will become generic, or be abandoned unintentionally.  Make sure you always use a proper trademark notice (™ for common law rights, ® if you’ve obtained registration) and remember to use your trademark as an adjective. Escalator was once a registered trademark but rights were lost when everyone started using the term as a noun to describe just any ol’ moving stairway.  The mark no longer brought to mind its owner as the single origin of the product.

It’s probably just as common that you’ll post someone else’s trademark…I know this blog, as a news and information source, posts 3rd-party trademarks fairly regularly.  This is typically permissible, because while trademark law prevents you from using someone else’s trademark to sell your competing products, it doesn’t stop you from using the trademark to refer to the trademark owner or its products. That is called “nominative fair use,” and is permitted if using the trademark is necessary to identify the products, services, or company you’re talking about, and you don’t use the mark to suggest the company endorses you.  Again, bloggers get by on an exception to the rule…we are living in a gray legal realm.  Consult a trademark professional if you’re concerned about your use of somebody else’s trademark.

trademarknotice

The next post in the series will be A Legal Primer for Bloggers: Defamation.  The post will explore your options when somebody has posted something false and damaging about you, including some common defenses.  Until next time, sticks and stones, my friends!

A Legal Primer for Bloggers

Part 1: Introduction

Part 2: INTELLECTUAL PROPERTY

Part 3: Defamation

Part 4: Anonymity

Part 5: Privacy

Electronic Arts in Trademark Battle Against John Dillinger’s Estate

03 Thursday Sep 2009

Posted by Kenan Farrell in Indiana, Litigation, Trademark

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Court Case Number: 5:09-cv-03965-HRL

File Date: Thursday, August 27, 2009

Plaintiff: Electronic Arts, Inc.

Plaintiff Counsel: R. Adam Lauridsen, R. James Slaughter of Keker & Van Nest LLP

Defendant: Dillinger, LLC

Cause: Trademark Infringement

Court: California Northern District Court

Judge: Magistrate Judge Howard R. Lloyd

Video game mega-company Electronic Arts filed suit last week in the US District Court of Northern California against Indiana-based Dillinger, LLC, over the in-game use of a pair of weapons bearing the famed criminal’s moniker.  Specifically, the firearms in question are the “Dillinger Tommy Gun” found in The Godfather and the “Modern Dillinger” available in The Godfather II.

dillingerEA is seeking a declaratory judgment that its use of John Dillinger’s name does not violate Dillinger’s rights.  The complaint alleges that on July 22 (exactly 75 years after the bank robber was gunned down by the FBI in Chicago, mind you) Dillinger contacted EA threatening legal action if the publisher did not agree to pay “millions of dollars for the game elements purportedly covered by its publicity rights and trademarks.”

Dillinger’s claim stems from Indiana’s Right of Publicity statute that protects against unauthorized commercial use of a person’s personality for 100 years after his or her death. EA, on the other hand, contends that its use of Dillinger’s name in The Godfather games is protected under the First Amendment, and it does not violate any claimed rights of publicity or trademarks held by Dillinger, LLC.

With a recent Dillinger movie starring Johnny Depp, it’s no shock that Dillinger, LLC would be looking to shore up it’s IP portfolio.  Whether EA’s alleged infringement justifies a demand of “millions of dollars” is questionable.  I doubt Dillinger expected EA to settle for anything near that amount.  Maybe Dillinger’s legal team has just been looking for a good opportunity to test the limits of Indiana’s Right of Publicity law.  The same legal team represents the estates of several prominent deceased celebrities, so the outcome here could have important repercussions in other matters.

Either way, the Indiana Intellectual Property & Technology Blog will keep you updated.

Source: Gamespot

Indiana and Purdue Set Aside Rivalry To Combat Common Enemy – Beer

28 Friday Aug 2009

Posted by Kenan Farrell in Indiana, Litigation, Trademark

≈ Leave a comment

Indiana and Purdue universities have joined a coalition of colleges calling for Anheuser-Busch InBev to stop selling its Bud Light “fan can,” a regular-size aluminum can of beer decked out in school colors, in college towns across the nation.  The schools’ “cease & desist” claims range from trademark infringement to a negative impact on school efforts to curb binge and underage drinking.  The cans have no college logos, names or other identifiers — just 27 color combinations.

Will the King of Beers stand up to the schools?  We’ll see.  Bud seems to be backing down in some situations and removing their cans from surrounding areas.

Can anyone near one of these schools send pictures of these cans?  Thanks!

Go over to Indy Star for the full story.

budlight

Indiana Trademark Litigation Update – Franklin College v. Franklin University SETTLEMENT

21 Tuesday Jul 2009

Posted by Kenan Farrell in Litigation, Trademark

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FranklinCThat didn’t take long.  The Indy Star reports that the Franklin College vs. Franklin University trademark litigation, filed just weeks ago, is already headed for settlement after Ohio-based Franklin University agreed to modify the manner in which it identifies itself in any advertising material sent out to prospective students.

Lawyers for both institutions filed a joint Agreed Judgment today to be approved by the judge.  According to the Agreed Judgment (full images below), Franklin University will have to add the words “of Ohio” or “Columbus, Ohio” to its promotional literature and broadcast advertisements starting Aug. 3.

Additionally, Franklin U. won’t use any variation of the combination of the words “Indianapolis,” “Indiana” or “campus.”

Neither party has admitted liability or fault in connection with the subject matter of the case.

FranklinAgreedJudgment

FranklinAgreedJudgment2

FranklinAgreedJudgment3So that’s it.  Unless there’s another twist, this should be the end of this trademark litigation.  The terms of settlement come so quickly after filing that it makes one wonder whether this could have been settled without filing a lawsuit.  But perhaps putting this matter in the public eye is what drove one or both of the parties to settle.  Nice work all around.

Indiana Trademark Litigation Update – Franklin College v. Franklin University

07 Tuesday Jul 2009

Posted by Kenan Farrell in Litigation, Trademark

≈ 1 Comment

NEW Indiana trademark litigation alert:

Franklin College has filed a federal complaint against Franklin University, an Ohio-based institution, for trademark infringement and unfair competitive practices.  Franklin College, located 25 miles south of Indianapolis, is a liberal arts institution with about 1,000 undergraduate students.  It celebrates its 175th anniversary this year.  Franklin University, based in Columbus, Ohio, is opening a new location in the Castleton area.

FranklinComplaint

Franklin College President Jay Moseley says the decision to take action was made after Franklin University began an aggressive advertising campaign in central Indiana to promote classes being offered this fall.  He says the complaint is an effort to protect Franklin College trademarks while shielding alumni and students from confusion.

“Since Franklin University began its advertising blitz in Central Indiana this spring, we have received calls, comments and e-mail messages from many people asking why we changed our name or whether we’ve opened a satellite office for online education in Indianapolis,” Moseley said in a statement.

“We have great concerns about the impact of the obvious confusion, especially with prospective students and employers of our alumni.”

Of particular concern to Franklin College is its trademark clock tower logo.  “Their ads include colors and a ‘clock tower’ design amazingly similar to our logo,” Moseley said.

FranklinCFranklinU

Moseley also noted that the Ohio school has recently begun referring to itself as “Franklin University – Indianapolis” or simply “Franklin” in local and Internet advertising.

Franklin University has responded with the following statement:

Franklin University is and has been publicizing its presence in Indianapolis using its own name in a completely factual and consistent manner, and in close cooperation with the State of Indiana and the Higher Learning Commission of the North Central Association of Colleges and Schools. It is unfortunate that Franklin College did not contact us if it had concerns about our marketing, since we did advise the President of Franklin College of our intentions prior to beginning to offer programs in Indianapolis in 2009.

Franklin University offers academic programs that are distinct from and targeted to a very different student demographic than Franklin College. Programs are intended for the working individual, not the traditional-age on-campus college student. The University focuses on business and professional education, such as majors in accounting and business administration, not on a traditional liberal arts education.

Founded in 1902, Franklin University has been serving adult students for more than 100 years. It is the leading and most experienced educator of adult students and is nationally recognized for its student-centered approach. Franklin University, a non-profit institution of higher education provides flexible, online as well as face-to-face class scheduling, maximizes transfer of previously earned college credits, and offers tuition rates far below the national average. Franklin University has been serving adult students in Indiana through its online offerings and Community College Alliance program for nearly a decade.

Now that Franklin College has chosen to use the legal system to resolve this matter, rather than contacting Franklin University, Franklin University will certainly act to protect the right to use its own name to publicize its programs in a factual and consistent manner.

For more information about Franklin University, please visit http://www.franklin.edu.

Love the response.  Never miss an opportunity to get the word out about your course offerings and target student body.

Each parties’ respective word mark abstract:

FranklinCollege

Picture 3

Of course, the Indiana Intellectual Property & Technology Law Blog will keep you updated as this matter proceeds.  No prediction on the outcome here, since I happen to know some of the attorneys involved.  But it should be interesting…

Court Case Number: 1:09-cv-00830-WTL-TAB
File Date: Monday, July 6, 2009
Plaintiff: Franklin College of Indiana
Plaintiff Counsel: Wayne C. Turner, Michael R. Limrick of Bingham McHale LLP
Defendant: Franklin University, Inc.
Cause: 15:1114 Trademark Infringement
Court: Indiana Southern District Court
Judge: Judge William T. Lawrence
Referred To: Magistrate Judge Tim A. Baker

The complaint includes the following causes of action: (1) Federal Trademark Infringement; (2) False Designation of Origin and Unfair Competition; (3) Indiana State Trademark Infringement; (4) Indiana State Trademark Dilution; and (5) Common Law Trademark Infringement and Unfair Competition.

Leave a comment with your email if you’d like a copy of the full Complaint.

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