In an interview in today’s San Francisco Chronicle (“Rod Beckstrom, CEO of ICANN, talks about new domain names“), the CEO of the Internet Corporation for Assigned Names and Numbers stated that ICANN will create a global marks database to help protect trademark owners against cybersquatting.

The database will be developed in conjunction with ICANN’s forthcoming implementation new generic top-level domains (gTLDs). ICANN CEO Rod Beckstrom is quoted in the Chron article as saying (emphasis added):

We have agreed to create a global marks database. By marks we mean trademarks and service marks. … If you get a document to show that you own the trademark or service mark, you get to put it into a global database. Once it’s in the system, you will be notified if anyone tries to register your name. That’s the first time in human history that a global marks database has been created to notify owners of events that could affect them.

This is great news for trademark owners. Historically, ICANN’s protection has resided in its Uniform Domain-Name Dispute-Resolution Policy, which allows trademark owners to recover domain names from those who have registered them abusively, such as cybersquatters.

With the new database, trademark owners will be notified when a cybersquatter tries to register the domain – offering the owner of a mark an opportunity to prevent an infringement-related domain registration rather than pay to fix it after the fact.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

I recently realized that I have referred to copyright infringement in quite a few posts, but I neglected to  define that term.  It is time to correct that oversight.

Generally, copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner – i.e., in violation of the copyright owner’s exclusive rights.

Chapter 5 of Title 17 of the United States Code addresses copyright infringement and remedies for infringement. Depending on the circumstances, remedies might include:

• A temporary or final injunction
• Impounding of infringing goods
• Actual damages and the infringer’s profits
• Statutory damages
• Costs and attorney’s fees

Furthermore, under certain circumstances willful infringement can result in criminal liability.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

A client sells high-quality collectibles manufactured from authentic sports-related materials (game-used balls, uniforms, arena flooring, stadium seats, etc.). The company ensures that all materials are licensed by the applicable university or professional sports organizations so it can use the organizations’ names and trademarks in promotional activities. Some competitors do not pay for the required licenses, however – and one of these recently was caught as the result of a Groupon promotion.

A friend of the client’s CEO received a Groupon promotion offering a huge discount on items that, the friend knew, competed with those offered by my client. At the client’s request, I contacted the licensing organization’s in-house lawyer to let him know that the competitor was using trademarks (apparently) without a license to do so.

I was pleasantly surprised, and somewhat amazed, when the lawyer immediately replied that he was already working on a cease-and-desist letter. The reason: Over the same weekend, he had received an e-mail for the same Groupon promotion!

Moral: It’s inappropriate to use others’ trademarks without required licenses, and it’s dangerous to advertise such use on a website, but it’s foolish, at best, to promote such use via social media.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

I have written, on several occasions, about the importance of assigning copyrights (and other intellectual property rights) when work is done by an independent contractor. (See, e.g., Independent Contractors: How to Assign Copyrights.) Sometimes, however – as suggested in a comment to What is a Derivative Work, and Why should I Care? – it is appropriate not to assign all rights.

This situation arises frequently in the case of custom software development. The reason: Over time, developers collect portions of code that they can re-use on other projects, saving their customers development time and money. This approach works, though, only to the extent that the developer retains ownership of the code; the customer, then, must be granted a license permitting use of (and perhaps other rights to) developer-owned code. The following is a typical provision for this type of situation adapted from an Independent Contractor Agreement:

“Contractor Intellectual Property” means inventions, designs, mask works, processes, methodologies, literary works and works of authorship that: are so identified in the applicable SOW; and Contractor developed or acquired from a third party, but in neither case at Customer’s expense, before providing Services under the applicable SOW; and are used or delivered in connection with Contractor’s performance under the SOW; and are not Customer Intellectual Property, Customer’s Confidential Information or Deliverables.

Contractor will not incorporate any Contractor Intellectual Property into any Deliverable except as may be expressly specified in the applicable SOW. Contractor hereby grants to Customer a perpetual, irrevocable, worldwide, nonexclusive, nontransferable, royalty-free license to use, operate, maintain, copy, modify and create derivative works of, and to grant to third parties the right to use, operate, maintain, copy, modify and create derivative works of, Contractor Intellectual Property contained in any Deliverable for the purposes of the applicable SOW.

Photo credit: iStockphoto

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

California is well-known for enforcing non-compete provisions only under narrowly-defined circumstances. A recent case in the United States District Court for the Northern District of California (Richmond Technologies v. Aumtech Business Solutions) illustrates that protection of trade secrets can be one of those circumstances.

Jennifer Polito, a former employee of plaintiff Richmond Technologies (which does business as ePayware), started working for defendant Aumtech. ePayware brought suit, alleging that Ms. Polito misappropriated ePayware’s source code, license keys and customer list to help Aumtech compete against ePayware.

Previously, ePayware and Aumtech had entered into a Confidentiality and Non-Disclosure Agreement that contained a provision by which Aumtech agreed not to compete with ePayware “with similar product and or Service using its technology” for a period of one year.

The court noted that, in various cases, California courts have held that trade secret protection may be seen either as an exception permitting enforcement of a non-compete provision or, alternatively, as the basis for an action based on tort or unfair competition law.

Accordingly, the court held that the NDA clause prohibiting use of confidential information is likely enforceable to the extent that the claimed confidential information is protectable as a trade secret. Furthermore, the court found that plaintiff likely would suffer irreparable harm in the absence of a temporary restraining order (TRO).

As a result, the court ordered the following narrowly-defined TRO:, which illustrates the enforceable boundaries of a trade secret-base non-compete provision:

(1) After Plaintiff deposits $20,000 with the Court as bond, Defendants shall turn over all of the current source code and license keys developed for ePayware clients that have not yet been released to Plaintiff.

(2) Defendants are temporarily enjoined from listing current ePayware customers on the Aumtech America website in a manner that suggests those customers are Aumtech America customers.

(3) Defendants are temporarily enjoined from initiating contact with current ePayware customers or clients regarding Aumtech America’s enterprise resource planning software, unless none of the Defendants had knowledge of or contact with those customers during their terms of employment with ePayware. However, Defendants may engage in marketing efforts directed at the merchant services market as a whole, such as attending trade shows.

(4) Defendants are temporarily enjoined from using ePayware’s information about its customers’ technical and business requirements, or other confidential client information, to solicit or obtain agreements with those customers. However, Defendants may enter into agreements with ePayware’s customers if the customer initiates the contact and none of ePayware’s confidential information will be used in negotiating, executing, or performing the agreement.

(5) Defendants are temporarily enjoined from using any of ePayware’s source codes, software, methods, techniques, or other trade secret information in Aumtech America’s products or services. However, Defendants may provide and market similar, competing products and services, so long as none of ePayware’s trade secrets are used in those products or services.

* * *

On March 21, 2012, the U.S. District Court for the Eastern District of California reached a similar result in Pyro Spectacluars v. Souza. In that case, defendant Souza downloaded encyclopedic information about his former employer’s customers and used it, at subsequent places of employment, to solicit business from those customers. Souza, his wife, his new employers, and their officers and employees were temporarily enjoined from possessing, using, disclosing, or transmitting the former employer’s trade secrets or proprietary information, including but not limited to customer information.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

In Blue Nile v. Ideal Diamond Solutions, the U.S. District Court for the Western District of Washington held that co-defendant Larry Chasin, founder and an officer of defendant IDS, was personally liable for infringement of plaintiff Blue Nile’s copyrighted images, even though Chasin claimed he had no role in putting infringing images on websites and he did not know the images were infringing.

Blue Nile is an online jewelry and diamond retailer. Chasin founded and operated IDS to create websites for brick-and-mortar jewelers to help them compete online. The websites included some of Blue Nile’s copyrighted  images.

The court held that Chasin was personally liable for copyright infringement because:

• Copyright infringement is a strict liability tort – there is no corporate protection, there is no need to prove knowledge or intent, and all individuals who participate are jointly and severally liable.
• Alternatively, Chasin was vicariously liable because he controlled IDS and the websites and benefited financially from the infringing activity.

Bottom line: Don’t assume that forming a corporation will protect you against al personal liability.

Check out all posts about copyright infringement.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

A recently-acquired client is one of three inventors of a device that received a U.S. patent. She asked me whether she can freely license to an LLC owned by two of the inventors the right to manufacture products covered by the license. I replied “yes” – here’s why.

35 U.S.C. Section 262 says:

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

In other words, each of the co-inventors, who jointly own the patent, can exploit the patent as she sees fit - and she need not share any profits with the other patent owners.

Furthermore, each inventor can assign or license to third parties her right to exploit the patent, thus my client can grant to her LLC a license to manufacture products covered by the patent without financial obligation to the other inventors.

Please note that this is different from situations involving jointly-owned copyrights, where profits earned by one owner must be shared with the others (see I’m One of Several Authors – Who Owns the Copyright?).

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

This post is adapted from the answer that I provided to a Quora question, “Who owns our text messages?”

To start, I wondered what it means to “own” a text message. Black’s Law Dictionary provides such definitions as “have good legal title”, “hold as property” and “possess”. I don’t think the questioner had these in mind, so I think it is correct to focus on ownership of any copyright that may subsist in text messages.

Then I wondered whether the wireless carriers have anything to say on the topic. I use AT&T Wireless. While AT&T’s terms say that I cannot send SMS spam and I am responsible for what I do if I receive a message that contains a third party’s intellectual property, I found no provisions addressing ownership of the messages that I create or any intellectual property rights therein.

In my experience, most messages do not contain authorship sufficient to merit copyright protection. However, the possibility should not be entirely dismissed. For example, a haiku could fit easily within 160 characters, and there is reason to believe that other short forms of poetry and literary expression could, as well.

If there is authorship sufficient to merit copyright protection, then the copyright belongs to the author, unless (the following being the most likely exceptions):

(a) the message was written by an employee within the scope of his or her employment, in which case the message would be considered a “work made for hire” and the copyright would belong to the employer (please see “Why ‘Work Made for Hire’ is a Term Made for Confusion”); or

(b) there is a contractual relationship by which the author’s copyright was assigned to another party (please see “Independent Contractors: How to Assign Copyrights”).

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

Intellectual property license agreements often include a provision by which the licensor is paid a royalty that is calculated as a percentage of the revenue received by the licensee from licensed products. Given that licensees have a financial incentive to reduce the amount of revenue that is reported*, the prudent licensor includes an audit provision in the license agreement.

The audit provision typically:

• Specifies the frequency and nature of audits that may be conducted;
• Provides that the licensee will pay any underpayment amount that is discovered plus interest; and
• Obligates the licensor to pay for the audit unless the underpayment exceeds X% of the royalty that was due, in which case the licensee must reimburse the licensor for the cost of the audit.

Here is a sample audit provision:

During the term of this Agreement and for two years thereafter, Licensee will keep full, true and accurate records containing information required to confirm all amounts payable to Licensor hereunder. Upon reasonable notice, Licensor or its accountant may inspect and audit said records on an annual basis during normal business hours to verify Licensee’s payments hereunder and compliance with this Agreement. Licensor will bear the fees and expenses of such inspection and audit unless same reveals that Licensee has underpaid Licensor by at least 10% during any calendar year, in which case Licensee will promptly reimburse Licensor for such fees and expenses

* The cynic’s view of licensing: Licensors lie and licensees cheat.

Check out all posts about licensing.

Photo credit: Darren Shaw via stock.xchng

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

Singer Chubby Checker (real name Ernest Evans) – famous for The Twist dance craze in the 1960s – and certain corporations that he controls have filed a lawsuit against Hewlett-Packard Company and Palm, Inc. concerning a no-longer-available app named “The Chubby Checker”.

The app purported to allow women to calculate the size of a man’s penis based on his shoe size. According to webOS Nation, the app was downloaded only 84 times before it was removed in September 2012 – yet press reports state that the plaintiffs are seeking damages of $500 million for trademark infringement and unfair competition!

This blog’s Ridiculous category used to be limited to ridiculous contract provisions. In light of the Chubby Checker suit, I now am expanding that category to include ridiculous litigation, as well.

Related post: Why Apple Didn’t Let “Giant Cock” into its App Store

Photo credit: Wikipedia

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

Copyright and trademark owners typically like to exercise their legal rights as broadly as possible. There is however, a well-known limit to those rights called the “first sale doctrine“.

Actually, they are two separate but similar doctrines, one pertaining to copyrights, the other to trademarks:

• Copyrights – 17 USC Section 109(a) states, subject to certain exceptions, that the owner of a lawfully-made copy of a work may sell or dispose of the work; consent of the copyright owner is not required. So, for example, if you legitimately possess a book or CD, you may sell it or give it to someone else or throw it into a trash bin.
• Trademarks – The trademark first sale doctrine is a product of case law rather than statute. In Sebastian International, Inc. v. Longs Drug Stores Corporation, the United States Court of Appeals for the Ninth Circuit wrote: “[W]ith certain well-defined exceptions, the right of a producer to control distribution of its trademarked product does not extend beyond the first sale of the product. Resale by the first purchaser of the original article under the producer’s trademark is neither trademark infringement nor unfair competition.” The exceptions include, for example, stolen or counterfeit goods or goods that have avoided the producer’s quality control systems.

The exceptions are significant. However, in straightforward cases, “first sale” will provide a defense to allegations of copyright or trademark infringement.

Photo credit: stock.xchng

Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

We all have seen a typical copyright notice (e.g., “Copyright 2013 Anyhow, Inc.”) countless times. However, every once in a while, someone will see a copyright notice with multiple years (e.g., “2010-2013″) and will wonder whether it is legitimate.

As is explained in Copyright Protection in One Easy Lesson, 17 USC Section 401 states that a copyright notice must contain three elements.

1. The symbol © (the letter C in a circle), the word “Copyright”, or the abbreviation “Copr.”
2. The year of first publication.
3. The name of the copyright owner.

The second element is defined as a single year, that of first publication. Copyright law does not expressly permit multiple years.

However, publishers of frequently-updated works, such as software, apparently desire to convey the idea that different versions of their works appear over time, and each is subject to copyright protection. So they provide a copyright notice with multiple years, the first year being the year of first publication.

Such a notice is not a problem. Even though multiple years are not expressly permitted, the three required elements are present, albeit with some extraneous information.

So, yes, a copyright notice with multiple years is legitimate.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Is a Copyright Notice with Multiple Years Legitimate? appeared first on The High-touch Legal Services® Blog...for Startups!.

Software developers may have decided to provide open source software, but they may not know which open source license to use. This post describes three resources developers can consult to help make that decision.

First, Open Source Initiative maintains a comprehensive list of open source software licenses. Licenses are grouped into categories, starting with the most popular licenses. However, the OSI site does not provide any tools to help decide which open source license to use.

Second, the Civic Commons Choosing a License page provides a simple way to choose among the most popular open source licenses.

• “Anything goes” licenses only require attribution in a specified manner. These include BSD 2-clause and 3-clause, MIT, and Apache License, Version 2.0.
• “Copyleft” / “viral” licenses require that derivative works be distribute under the same terms. These include GNU General Public License, version 3 and GNU Affero General Public License, version 3.

Finally, GitHub, Inc. recently provided its straightforward selection guide.

• Simple and permissive – MIT License.
• Permissive including a grant of patent rights – Apache v2 License.
• Requiring that improvements be shared – GPL v2 or v3.

So if you are an open source developer, there are ample resources to help you decide which open source license to use.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Which Open Source License Should We Choose? appeared first on The High-touch Legal Services® Blog...for Startups!.

This post is adapted from my answer to a Quora question from a prospective patent licensee. Q. How do I propose a licensing agreement with a patent holder?

A. In my experience, the most important thing that a prospective patent licensee needs to bring to the table is a successful track record.

Assurance from Patent Licensee

The patent holder wants assurance that the licensee will sell lots of product. That way, the holder / licensor will receive lots of royalties.

The best source of that assurance is provable, past success of the patent licensee. If the patent licensee can show that it has sold other products pursuant to licenses granted by other similarly-situated licensors, this licensor will be persuaded.

Lack of Assurance

If not, then the prospective patent licensee has an uphill battle.

In that case, the best result likely would be achieved by retaining an industry expert to provide advice. If the business case can be made, that expert can represent the patent licensee in approaching the patent holder.

It is important to realize, however, that retaining such an expert would require a significant investment of time and money.

In summary, a patent licensee with prior licensing success has the best opportunity to replicate that success in the future.

Related post: Patent Licensing for Licensors: Know Your Industry

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Patent Licensee: Have a Track Record if You Want to Succeed appeared first on The High-touch Legal Services® Blog...for Startups!.

This post compares plagiarism and copyright infringement. It is prompted by a Quora question that I answered several months ago. (See Have your ideas or works ever been plagiarized? What happened?)

Plagiarism Defined

Plagiarism is the wrongful appropriate on another’s work and presenting it as one’s own. One typically thinks of plagiarism occurring in academia or journalism. However, as discussed below, it can occur in other professions, too.

Copyright Infringement Defined

The holder of the copyright in a work has certain exclusive rights with respect to that work. These include (as applicable) the rights to reproduce, distribute, publicly perform, publicly display, and make derivative works of the work. Copyright infringement is use of a work, without permission of the copyright holder, that infringes on one of those exclusive rights.

Plagiarism and Copyright Infringement Compared

Comparison of plagiarism and copyright infringement.

• Plagiarism focuses on misrepresenting the authorship or source of a work.
• Copyright infringement focuses on using someone else’s work without permission.
• They easily can come together. As a plagiarist prepares his work, he likely will copy and make derivative works of the original work or portions thereof. Because that is done without the copyright holder’s permission, it constitutes copyright infringement.

My personal interest in – and victimization by – plagiarism dates back more than a decade. From 1995 to 2001, I wrote the Legal Tech column for the California Bar Journal. (My final column, A look back at six years of technology news, suggests how much simpler, and more limited, life was before ubiquitous high-speed Internet access, mobile devices and social media.)

Plagiarism and Copyright Infringement in South Africa

Amazingly, one of my eagle-eye readers saw that De Rebus, a journal published monthly by the Law Society of South Africa, had published certain of my columns under the byline of a South Africa lawyer! Here is what the journal’s editor wrote in January 2001:

Technology columns – an apology

De Rebus has been advised by Dana H Shultz, an attorney of Oakland, California, specialising in technology licensing and related transactions, that two of the articles by Reinhardt Buys in the Practice Management column in the second half of last year contained substantial portions, verbatim, of articles written by Mr Shultz and published in the California Bar Journal, of which he is the legal technology columnist, other journals and on the Internet. The articles in question were ‘More money and happier clients – how technology can increase revenue and client satisfaction’ in 2000 (Oct) DR 39 and ‘Six technology mistakes every firm should avoid’ in 2000 (Nov) DR 32. Although the former contained a purported acknowledgment of Mr Shultz’s ‘assistance and guidance’, it appears that in neither case did Mr Buys seek Mr Shultz’s permission to use the latter’s published works as his own.

In response Mr Buys has contributed the following note, under the heading ‘Setting the record straight’: ‘As readers may have realised, the information used to write this column comes from my personal experience, interviews with attorneys and information I get through newsletters, Internet chat-rooms and articles found on the Internet. Because of a terrible oversight on my side the article that appeared in De Rebus of November 2000 … was not attributed to Mr Dana Shultz whose material I also used for the article [in] October 2000 … My sincere apologies to Mr Shultz, De Rebus and our readers. I am truly embarrassed!’

De Rebus also apologises to Mr Shultz for its unwitting part in the publication of this plagiarism – Editor.

Interestingly, the lawyer had been on the editorial board of De Rebus. Once this plagiarism came to light, he no longer held that position.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Plagiarism and Copyright Infringement – Two Sides of the Same Coin appeared first on The High-touch Legal Services® Blog...for Startups!.

This post addresses the most important issues that are raised in negotiating software licenses.

I will assume that parties have agreed on pricing. (Otherwise, there is no point negotiating license terms!) In addition, I will ignore the lengthy legal “boilerplate” that appears in most software license agreements.

Four Critical Issues in Negotiating Software Licenses

In my experience, there are four issues that must be examined closely, and often result in much discussion, when negotiating software licenses.

1. The license grant. Usage often is limited to certain types or numbers of software copies, users, computers, operating systems, and the like. There routinely are prohibitions against reverse engineering and other activities that might infringe copyrights or misappropriate trade secrets. Even if the license permits modification, there likely will be limits on modification rights.
2. Warranties and representations. A knowledgeable licensee will require that the licensor provide warranties and representations concerning the licensor’s right to enter into the agreement, non-infringement of intellectual property rights, and the like.
3. Indemnification. A knowledgeable licensee will require that the licensor indemnify the licensee against losses arising from, at the least, intellectual property infringement. Depending on how the licensee will be utilizing the software, the licensor may seek reciprocal indemnification.
4. Limitations of liability and damages. Licensors typically do not wish to risk potential liability that is greater than the value of the transaction. And neither party will be eager to incur liability for consequential damages (damages that do not flow directly and immediately from the acts of the parties). However, indemnification obligations and damages from breach of confidentiality typically are not subject to such limitations. (Please see Limitation of Liability and Confidentiality Provisions in Tech Contracts.)

The Bottom Line

When negotiating software licenses, it helps to know which provisions to focus on and which deserve merely a quick review.

Related post: Best Practices in Drafting Software Contracts

Photo credit: An Eastbourne Website Designer via freeimages

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Negotiating Software Licenses – What Really Counts appeared first on The High-touch Legal Services® Blog...for Startups!.

I have written several times about ICANN’s longstanding Uniform Domain Name Dispute Resolution Policy (UDRP). This post discusses a more recent way to thwart some cybersquatters, namely, URS – Uniform Rapid Suspension.

According to ICANN explains, URS exists to “provide rapid relief to trademark holders for the most clear-cut cases of infringement“. Furthermore, URS is cheaper and faster than UDRP.

URS Speed and Burden of Proof

Under the URS, the Complainant must prove three facts comparable to those to be proved under the UDRP.

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights rights.
(ii) The Registrant has no rights or legitimate interests in respect of the domain name.
(iii) The domain name has been registered and is being used in bad faith.

Under the URS, however, these facts must be proven by clear and convincing evidence. Put another way, the Examiner must determine there is no genuine issue of material fact.

This high burden of proof permits the Examiner to make a quick decision. And a quick decision means the URS proceeds quickly.

URS Remedy: Suspension

In contrast to the UDRP, URS does not result in transfer of a domain name to a successful complainant. Instead, the domain in question is suspended. This means that a losing Registrant cannot use the domain for the remainder of its registration period.

Following a URS determination, a Complainant may seek other relief. This might include, typically, via the UDRP or in a court proceeding.

In an obvious case of cybersquatting, the URS may be the quickest, easiest, least expensive way to dislodge the cybersquatter.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post URS – ICANN Offers Uniform Rapid Suspension against Cybersquatters appeared first on The High-touch Legal Services® Blog...for Startups!.

Copyright Office Document Cover Sheet

Last week I explained what a security interest is and how it can be perfected, i.e., made effective against third parties. (See What is a Security Interest, and Why Should I Care?) This post discusses how to perfect an intellectual property security interest.

To recap, a security interest is an interest in an asset (the “collateral”) intended to secure performance of an obligation. Typically, that obligation is payment of a debt. Perfection typically consists of filing, with one of more secretaries of state, documents that identify the debtor, the creditor and the collateral.

Intellectual Property Security Interest

Sometimes, however, the collateral includes intellectual property – a copyright, a patent or a trademark. To fully perfect an intellectual property security interest, an additional filing may be required. And even if it is not required, it will not be harmful.

• Irrespective of whether a copyright has been registered with the U.S. Copyright Office, a security interest in a copyright may be so registered. See Circular 12, Recordation of Transfers and Other Documents.
• Security interests in patents and patent applications may be registered with the U.S. Patent and Trademark Office. See Section 313 of the Manual of Patent Examining Procedures and the patent Recordation Form Cover Sheet.
• Similarly, a security interest in a registered trademark or service mark, or an application. can be registered with the USPTO. See Section 503.02  of the Trademark Manual of Examining Procedure and the trademark Recordation Form Cover Sheet.

In summary, of collateral includes an intellectual property security interest, then to ensure proper perfection an additional filing with the applicable U.S. governmental office is in order.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post How to Perfect an Intellectual Property Security Interest appeared first on The High-touch Legal Services® Blog...for Startups!.

Earlier this month, the U.S. District Court for the Northern District of California ordered the author of a fraudulent takedown notice under the Digital Millennium Copyright Act to pay more than $25,000.

U.K. Student Journalist Oliver Hotham has a blog on WordPress.com, which is operated by San Francisco-based Automattic Inc.

Blogging about Straight Pride UK

Hotham wrote blog posts about an organization called Straight Pride UK, which appeals to those who practice “a traditional [i.e., not gay] style of relationship“.

As those posts appeared, Nick Steiner, press officer for Straight Pride UK, sent takedown notices under the DMCA (and other emails) demanding that Automattic take down those posts.

Suit Alleges Fraudulent Takedown Notice

Automattic and Hotham filed suit against Steiner, alleging that Steiner’s takedown notices contained material misrepresentations. (See 17 USC Section 512(f).) Steiner did not defend the suit.

In an October 6, 2014 Report and Recommendation, the Magistrate Judge recommended that the plaintiffs be awarded $960 for Hotham‘s lost work and time, $1,860 for time spent by Automattic‘s employees, and $22,264 for Automattic‘s attorneys‘ fees, for a total of $25,084.

In March 2, 2015 Order Adopting Magistrate Judge’s Report and Recommendation, the District Judge so ordered.

Bottom line: The DMCA takedown notice is a powerful tool. Don’t abuse it!

Check out all posts about takedown notices.

Dana H. Shultz, Attorney at Law  +1 510-547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post Fraudulent Takedown Notice Leads to $25,000 Judgment appeared first on The High-touch Legal Services® Blog...for Startups!.

This post about the origin of the copyright symbol (©) is based on my answer to a Quora question. See Why are the symbols of “©” and “®” used to identify copyrights and registered trademarks?

Copyright Symbol as Part of Copyright Notice

The copyright symbol “©” can be part of a copyright notice under current copyright law. See 17 USC Section 401(b). (For more information about copyright notices, see Copyright Protection in Once Easy Lesson .)

Copyright Symbol Appears in 1909

Wikipedia provides interesting information about the origin of the copyright symbol more than a century ago (emphasis added, citations omitted).

The copyright symbol © was introduced in the United States Copyright Act of 1909, section 18.

The Copyright Act of 1909 was meant to be a complete rewrite and overhaul of existing copyright law. As originally proposed in the draft of the bill, copyright protection required putting the word “copyright” or a sanctioned abbreviation on the work of art itself. This included paintings, the argument being that the frame was detachable. In conference sessions among copyright stakeholders on the proposed bill, conducted in 1905 and 1906, representatives of artist organizations objected to this requirement, wishing to put no more on the work itself than the artist’s name. As a compromise, the possibility was created to add a relatively unintrusive mark, the capital letter C within a circle, to appear on the work itself next to the artist’s name, indicating the existence of a more elaborate copyright notice elsewhere that was still to be allowed to be placed on the mounting. Indeed, the version of the bill that was submitted to Congress in 1906, compiled by the Copyright Commission under the direction of the Librarian of Congress, Herbert Putnam, contained a provision that a special copyright symbol, the letter C inclosed within a circle, could be used instead of the word “copyright” or the abbreviation “copr.”, but only for a limited category of copyrightable works, including works of art but not ordinary books or periodicals. The formulation of the 1909 Act was left unchanged when it was incorporated in 1946 as title 17 of the United States Code; when that title was amended in 1954, the symbol © was allowed as an alternative to “Copyright” or “Copr.” in all copyright notices.

Check out all posts about copyright.

Dana H. Shultz, Attorney at Law  +1 510-547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

The post What is the Origin of the Copyright Symbol (©)? appeared first on The High-touch Legal Services® Blog...for Startups!.