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Archive | 2011

Acceptable and Unacceptable Terms of Agency Agreements

Co-author Gerald M. Levine Agency agreements are not forever which is the reason to be concerned about their terms. There are acceptable and unacceptable terms.  They are not like publishing agreements in which authors grant licenses “for the term of copyright.” Nevertheless, for the term of of agreement the agent has an exclusive right to […]

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Giving Parties Benefit of the Doubt: Sufficiency of Evidence

Giving a party the benefit of the doubt is really shorthand for insufficiency of the other’s evidence. In the first instance, complainant has the burden for establishing its case for all three elements, but as it proceeds from element to element its burden grows heavier. Proof that the domain name is identical or confusingly similar […]

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Resolving Disputes in Face of Conflicting Testimony

A UDRP record is similar in some respects to a motion for summary judgment in a civil action in that each party puts forward its best case in support and opposition to the complaint. The difference is that in a civil court action a case can proceed to discovery and trial but in a UDRP […]

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Pitfalls for Self Publishing Authors

There are publishers in the traditional sense who curate the books they publish and there are companies that provide printing services for self publishing authors without curation who pretend to be traditional publishers. Be wary of printing contracts styled as publishing contracts. The business models are entirely different. Printing contracts can be misleading in describing […]

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Chances of Winning and Losing Domain Name Disputes

Panels are typically faced with a cascade of options in resolving UDRP disputes. Complainants do not necessarily prevail for proving trademark rights and respondents do not lose for failing to appear and defend themselves. First for some perspective. WIPO prepared an informative overview of the UDRP and its role in a paper dated August 2011 […]

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Instances of Registration and Use Outside Scope of the Policy

The Policy’s scope is limited to “‘abusive registrations’ made with bad faith intent to profit commercially from others’ trademarks.” Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, 4.1(c). The Report continues that “the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and […]

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Terminating Exclusive Licenses and Recapturing Copyrights

Gerald M. Levine, Co-author Authors control the rights to their works until they agree to exclusive licenses for all or some of them. At that point the rights are controlled by the grantee, typically the publisher for the term of copyright. A typical provision in publishing contracts provides that “[t]he Author agrees to grant and […]

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Protection of Mark as One of a Family of Marks

As a general rule, marks that share a common characteristic or dominant element can receive protection as one of a family of marks. U.S. federal courts have explained that “[t]he family of marks doctrine is important because it provides that a likelihood of confusion can exist even though a junior user’s mark may not be […]

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It Is Not Who You Say You Are, But Who You Are That Counts

For a respondent to succeed in showing it is who it says it is it must make an affirmative showing that it “ha[s] been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights” [Paragraph 4(c)(ii) of the Policy]. In determining whether respondent establishes this defense it is […]

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Trademarks for Authors

What do trademarks have to do with authorship? Trademarks signify sources of production. The question come up with authors producing serial works who are interested in creating brands. Trademarks for authors can be perfectly reasonable. While single works are not eligible for trademark registration serial works are. Personal names are not registrable as trademarks but […]

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Common Law Rights of Celebrities to their Names

Ordinarily, personal names are not registrable for trademark because they are not sources of goods or services but celebrities can own common law rights to their names in that their names convey distinctive signifiers. In an early decision that was later repudiated a celebrity’s complaint for transfer of a domain name identical to his personal […]

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Proving Reputation When Domain Name Was Registered

Complaint must show a reputation when domain name was registered; a present reputation alone is insufficient if trademark had non in the past. Complainants and their trademarks either have established reputations in their marketplaces or they have not. By far the greatest number of disputes brought under UDRP are by complainants with trademarks whose reputations […]

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Copyrightability of Generic Elements in a Copyrighted Work

Co-author Gerald M. Levine Unprotected elements in a copyrighted work affects the copyrightability of those elements alone. The copyright does not extend to every sentence in a work or to undeveloped characters. Fair use is not an issue since its application presupposes expressive material that is both copyrightable and copyrighted. (we leave for another day […]

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Former Employees Registering Domains in their Own Names Without Employer’s Knowledge and Contrary to Instructions

An employee charged to attend to his employer’s intellectual property assets can have no right or legitimate interests in domain names he registers in his own name. The former employee in SIELTE S.p.A. v. Salvatore Gueci, FA1109001408629 (Nat. Arb. Forum November 7, 2011) offered to return the domain name for consideration, a violation under paragraph […]

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Copyrightability in “Original Works of Authorship”

To be protected by copyright, to have copyrightability, requires a certain degree of creativity. The Copyright Clause of the U.S. Constitution provides for copyright protection to “original works of authorship.” The Supreme Court has stated that for a work to be protected it has to “possess[] at least some minimal degree of creativity.” Feist Publ’ns, […]

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Transfer of Domain Name to Unrelated Third Party

There are two lines of reasoning from U.S. circuit courts on the issue of whether transfer of a domain name to an unrelated third-party or renewal of a registration constitutes a new registration. The resolution is critical to a finding of abusive registration under the Anticybersquatting Consumer Protection Act (ACPA). ICANN Panels have settled on […]

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Domain Names Similar to Trademarks But Not Confusing

See Anthology of Commentaries — 2014 The test for establishing confusing similarity is relatively modest. Less or more so is not easy to measure. For this reason, Panels tend to give complainant the benefit of the doubt, but low though the bar is set it is not satisfied by simply showing that the trademark and […]

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Reserving Rights When Agreeing to License

Publishers typically demand rights for the duration of copyright although the shelf life of the licensed work is likely to be measured in single digit years. Authors have a basked of exclusive rights set  out in Section 106 of the Copyright Act only some of which should be agreed to in book publishing contracts. Other […]

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Trademark Terms Distinctive in One Territorial Jurisdiction, Undistinctive in Another

Distinctiveness (despite the affirmativeness of the word) is a fluid concept. It could mean “distinctive” in its class but not “distinctive enough” to prevent others from using it for their own purposes in a different class. So, too, a term accepted by a trademark office can be regarded as distinctive within its jurisdiction, but un-distinctive […]

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Titles, Words and Short Phrases (Q&A)

Co-author Gerald M. Levine Titles, Words and Short Phrases are not copyrightable although contextualized they may become so. The answer is found in the Code of Federal Regulations, 37 C.F.R. Sec. 202.1.  Subsection (a) provides that the following “examples of works [are] not subject to copyright and applications for registration of such works cannot be […]

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