Chinese consumers are rapidly outpacing American consumers.
We know that you want to ensure that your products are available to the Chinese market.
We also know that you want to protect your brand against potential counterfeiters and trademark infringements by trademark squatters in the process.
Registering for a China trademark can do just that.
But is China trademark registration really worth the hassle?
What will the process look like, and how long will your trademark be valid for? What are the benefits of working with a legal professional when it comes to registering your trademark?
In this post, we’ll tell you everything you need to know.
Read on to understand the value of registering your trademark in China. We promise, the process is more straightforward than you might think.
The Benefits of China Trademark Registration
Let’s begin by discussing why you should apply for a China trademark.
Above all, remember that if you don’t bother to register your trademark, one of your competitors will likely do it for you.
They’ll then force you to pay exorbitant sums of money just to take back control over the goods you created and manufactured.
And if you can’t pay the ransom?
This means you’ll no longer be able to have your goods manufactured in China.
Of course, the opposite is also true.
If you apply for trademark registration in China, this means you can submit trademark violations to Chinese e-commerce companies that are selling your products under their own name.
Keep in mind that if you only have American or European trademarks, you likely won’t be able to put in a takedown request for a Chinese website that’s selling your goods.
China trademark registration also means that you’ll be able to sell in China, opening yourself up to an enormous — and extremely profitable — market.
A registered Chinese trademark also means you’ll be able to create a licensing agreement to work with a distributor in China.
Finally, remember that the Chinese counterfeit market is notoriously large. This often creates a huge problem even for well-known brands and manufacturers.
If you take the time to register your trademark in China, you will have the ability to sue these counterfeiters. Without proof of your Chinese trademark registration, you won’t be able to fight back in any way.
This is because you can’t display proof of ownership.
The registration also means that Chinese customs officials will be able to seize any counterfeit goods they find. This happens especially at airports, where these goods are so often smuggled.
It’s all about opening yourself up to a broader market and mitigating your risk.
The Basics of China Trademark Registration
First, you’ll need to come up with a strong name for your trademark.
This means you’ll need to consider how the name will translate into Chinese.
Often, you’ll choose between phonetic translations. This means that the characters in Chinese will mimic your brand name in English. Or, you can choose literal translations.
This is where the word in Chinese is identical to the English name.
Once you’ve decided on a name, you need to be certain that the trademark hasn’t already been claimed and registered by someone else.
If the trademark is indeed available, you can proceed with completing an application form and gathering the required documents. The State Administration for Industry and Commerce (SAIC) is the entity that approves or denies your trademark application in China.
There are close to 50 different trademark classes in China.
There are even subclasses for certain kinds of goods. These subclasses are different than the ones used in European trademarks.
So, make sure you’re following China’s regulations when you look for your class.
This process can sometimes take up to an entire year. Once the trademark has actually been approved, you’ll still need to wait for it to be issued. This can also take another two months.
You’ll then get a certificate from the SAIC, which can take yet another two months.
In other words?
The registration process isn’t something that happens overnight. In general, it can take anywhere from 12-15 months if you handle it on your own.
If You’re Denied Registration
If the Chinese trademark office denies your registration application, you will need to get in touch with the Trademark Review and Adjudication Board, or TRAB for short.
You’ll then need to submit a formal opposition to your registration denial. This is a process which can take anywhere from 9 months to a year.
This is why many companies opt to work with a trademark registration lawyer.
This helps them to avoid a denial in the first place. It also helps companies craft a strong case if, for some reason, they’re still denied after filing for the trademark.
Trademark Renewal in China
Remember that your trademark isn’t valid forever. It’s valid only for ten years after your initial registration date.
You need to ensure that you begin the renewal process at least six months before any expiration dates to renew it for another ten-year period.
It’s important to understand that, in many cases, your trademark may be cancelled if you don’t use it within three years of your registration date.
Make sure that you’re truly ready to use your trademark within that time period before you file. Otherwise, you may not be able to get control of it again in the future.
Need Legal Help with Your China Trademark?
Though applying for a China trademark is incredibly important — especially when it comes to protecting your business — it’s also a lengthy process.
You want to be absolutely certain that you file everything correctly the first time around, so that you can avoid having to enter into the opposition process.
Are you looking for legal help with trademark registration in China? Want to learn more about the process before you start the journey?
Get in touch with us to get started using the contact form on this page, or call us at 855-473-8474.
In addition to trademark registration, we can also assist you with trademark monitoring.
This way, you’ll know if a third party is trying to illegally use your trademark, so that you can take appropriate action as soon as possible.
Don’t delay.
Begin the Chinese trademark registration process today.
Across the Pond: How to File an International Trademark Application
/0 Comments/in Revision Legal, Trademarks /by John DiGiacomoGetting trademark protection in the United States is one thing. But if you want to take your brand international, you’re going to need more than just a US trademark.
And if you don’t? You’re vulnerable to appropriation in other countries. Worse, you’ll have insufficient legal grounds to fight back.
You’re proud of your idea–take the time to protect it. Here, we’re walking you through each step of the international trademark application process.
Who Can Submit an International Trademark Application?
Before we explore how to apply, it’s important to know whether you qualify in the first place.
Anyone can file a trademark application through the United States Patent and Trademark Office (USPTO) so long as:
If the above conditions apply to you, you’re ready to file an international trademark application.
Where Do You File Your Trademark?
The next question is where you file your trademark application.
If you’re a US-based business, then the USPTO is your first port of call. They’re the first ones to review a pending trademark application. If approved, your application goes to the International Bureau of the World Intellectual Property Organization (WIPO), which is responsible for the international trademark registration program.
Do You Have to File Trademarks Individually?
Protecting your intellectual property overseas is a sticky process (protecting your intellectual property in China is a nightmare all its own).
Why? Every country has a unique set of intellectual property laws. Which means that precautions that protect you in one country may not protect you in another.
This is why the USPTO explicitly states that US patent or trademark does not protect you in other countries. Patents and trademarks are territorial, and you must apply for a trademark in each individual country where protection is sought.
Of course, if you’re an online retailer, that may sound like an impossible task. If you can sell to anyone in the world, how can you find out what countries people are visiting your site from?
Fortunately, there are ways to remedy this problem (without applying for a trademark in every country in the world).
What About International Company Trademark Registration?
Don’t forget about your company trademark, though.
Technically, you aren’t required to file international registration for your company’s trademark. In fact, if all your customers are based in the United States, it would be a waste of time and legal fees to register in other countries.
However, if you sell to customers from other countries, then you should register your trademark internationally.
The International Trademark Application Process
Filing an international trademark application is relatively straightforward once you know the steps.
Even if your application is approved in the United States, filing an international application does not guarantee protection elsewhere. The application is reviewed by three separate entities before your trademark protection is extended.
As such, it’s a good idea to plan ahead and be proactive. If you do business in the US and are looking to expand internationally, start small. Get your trademark approved before you do business outside the country.
The process begins with the USPTO. They certify that the information in your application matches your US trademark registration.
If the application is approved, it is sent to WIPO for the next stage. If it isn’t approved, the USPTO will notify you of the reasons why the application was denied so that you can submit a corrected application.
The Madrid Protocol
WIPO uses a process called the Madrid protocol. This grants trademark protection in several countries by filing an application through your own member country. All you have to do is designate countries in your application.
There are also three regions you can designate under the Madrid protocol:
Basically, an international trademark application registered in the United States is treated the same as a registered trademark in other member countries.
This is a lifesaver for businesses. It removes the need to individually update or renew your trademark in every country where you hold a trademark. Instead, you can directly record changes and carry them over into other countries.
Next Steps
If your application is approved by the USPTO and sent to the International Bureau of WIPO, it is reviewed to determine whether it meets the terms of the Madrid protocol.
If it does, you will receive your trademark registration, along with an international trademark registration certificate and publication in the WIPO Gazette. This registration is good for 10 years.
From there, the application is sent to the individual countries you designated on your application. Each of these countries will review the application based on their national trademark application standards.
They have 18 months to either grant an extension of your trademark or to decline it. If the member country does not deny it after 18 months, the application is accepted automatically.
Do You Need Help With Your Trademark?
Even if you know how the system works, it can be tricky to figure out the details of your international trademark application. And that can leave your trademark vulnerable.
That’s where we can help. Our attorneys know what it takes to protect a brand and have helped clients all across the country make their way through the trademark registration process.
If you need to speak with an attorney about your options or how to get started, use our contact page or call us at 855-473-8474.
Trademark Law Basics: Everything You Need to Know About the Lanham Act
/0 Comments/in Trademarks /by Anderson DuffDo you enjoy reading about some of the most bitter trademark battles?
Are you interested in learning how to better protect your products and brand as a whole?
You couldn’t do either one without the Lanham Act.
What do you need to know to fully appreciate just how much this legislation works to guard against trademark violation and infringement as a whole?
You need a foundational understanding of how it all works.
This will also help you learn more about your rights as a trademark holder. It will likely convince you that registering your trademark is always the right move.
Read on to get an overview of the Lanham Trademark Act. You’ll then learn the steps you can take to trademark your property.
The Lanham Act of 1946: The Basics
Before we go any deeper, let’s quickly cover the basics of the Lanham Act.
First enacted in 1946, the main goal of this piece of legislation is to create a nationwide system to be used in registering trademarks.
This means, essentially, that every person/company/organization must go through the same steps when they want to register a trademark.
Additionally, the Lanham Trademark Act also helps to protect those current trademark owners.
This is essential if someone else is using a registered trademark illegally and without the consent of the registered trademark holder.
In short, it defined the essential trademark infringement elements.
Trademark Dilution vs. Trademark Infringement
The Act also covers what’s known as trademark dilution.
Trademark infringement occurs when another company essentially “steals” the logo or other trademarked property of another business. They then try to pass it off as their own.
Usually, trademark infringement occurs when two companies are similar to each other and considered competitors. For example, let’s consider one of the most famous logos of all time: the Nike “swoosh.”
Another shoe or sportswear manufacturer decides to put the Nike swoosh logo on their products. Despite being an entirely different company, this would classify as trademark infringement.
It’s pretty clear that this mysterious “competitor” is trying to convince buyers that they’re actually selling Nike’s clothes.
That kind of infringement is a part of what the Laham Act helps to guard against.
Now, let’s consider trademark dilution.
This is the attempt to use a trademark to tarnish a brand’s reputation. This happens even if the genuine manufacturer and the party “knocking it off” aren’t competitors.
Let’s say, for example, that a shady furniture company wanted to use the Nike swoosh logo on its lounge chairs. This is known as “trademark blurring.” It is a type of dilution.
Dilution can also be claimed when a shady company seeks to tarnish the reputation of a famous brand.
For example, perhaps someone wanted to use the Nike swoosh in a video that was offensive to minorities, or even sexually explicit in nature.
Dilution can’t protect everyone, however.
It usually only works for famous and well-recognized brands. And even then, it’s not always a guarantee. Case in point: the parody loophole used to create a “Dumb Starbucks” knock-off of the popular coffee chain.
False Advertising and the Lanham Act
The Lanham Act also exists to protect your registered product or business when it comes to marketing claims.
Perhaps, in one of their advertisements, a rival company uses your logo and product name. They claim that your cleaning solution contains dangerous chemicals, or that it’s ineffective.
They could even say it’s caused people to slip and fall in the past.
You know none of these things are true.
Your company is being portrayed in a negative light through the use of false and damaging claims by your competitors.
The Lanham Act is on your side here — at least in most cases. Recent changes to this aspect of the law have made it a bit trickier to navigate.
Factors Considered Under the Lanham Act
As you’ve likely gathered by now, trademark violation and the laws surrounding it can often become incredibly confusing.
While we certainly all wish that trademark infringement and other violations would be open-and-shut cases, that’s rarely the reality.
The judge and jury will take a look at several different factors when evaluating your case. They will then determine whether or not you truly are entitled to the full benefits of the Lanham Act.
First of all, they’ll consider if the trademark the rival company is claiming as their own or blurring in some way is easily identifiable as your own.
This can be more challenging than you might think. This is especially true when it comes to imitation marks that change a few features of your logo or product.
This is what’s known as the “likelihood of confusion.”
This means that those evaluating your case will look at the level of similarities between the two marks.
They will also look at any evidence from confused consumers, and why the trademark was used by the rival company. They will even consider the marketing channels they’ve gone through.
They’ll also take a look at the level of business activity that the rival company actually does. This will help them to determine the “legitimacy” of the threat to your own business.
They’ll also consider just how much marketing the rival company has already conducted using your trademarked products, logos, and more.
As you can see, things can get complicated fast when it comes to the ins and outs of the Lanham Act.
That’s why it pays to have the right legal representation on your side when you head to court for a trademark violation case.
Need Legal Help with Trademark Registration or Trademark Litigation?
Especially as knock-off/imitation branding becomes more common, it pays to have legal help to allow you to use the Lanham Act to the best of your advantage.
Of course, in order to make sure the law is on your side, you’ll also need to properly register your trademark.
That’s where we can help you. Contact us with the form on this page, or call us at 855-473-8474.
Whether you need help with trademark registration, are fighting against trademark squatters in the foreign trademark registration market, or need assistance with copyright infringement, rely on us to help you.
Don’t risk losing everything.
Get in touch with us today to take advantage of our trademark monitoring services, registration assistance, and legal help.
China Trademark FAQs: How and Why You Should Register Your Trademark in China
/0 Comments/in Revision Legal, Trademarks /by Anderson DuffChinese consumers are rapidly outpacing American consumers.
We know that you want to ensure that your products are available to the Chinese market.
We also know that you want to protect your brand against potential counterfeiters and trademark infringements by trademark squatters in the process.
Registering for a China trademark can do just that.
But is China trademark registration really worth the hassle?
What will the process look like, and how long will your trademark be valid for? What are the benefits of working with a legal professional when it comes to registering your trademark?
In this post, we’ll tell you everything you need to know.
Read on to understand the value of registering your trademark in China. We promise, the process is more straightforward than you might think.
The Benefits of China Trademark Registration
Let’s begin by discussing why you should apply for a China trademark.
Above all, remember that if you don’t bother to register your trademark, one of your competitors will likely do it for you.
They’ll then force you to pay exorbitant sums of money just to take back control over the goods you created and manufactured.
And if you can’t pay the ransom?
This means you’ll no longer be able to have your goods manufactured in China.
Of course, the opposite is also true.
If you apply for trademark registration in China, this means you can submit trademark violations to Chinese e-commerce companies that are selling your products under their own name.
Keep in mind that if you only have American or European trademarks, you likely won’t be able to put in a takedown request for a Chinese website that’s selling your goods.
China trademark registration also means that you’ll be able to sell in China, opening yourself up to an enormous — and extremely profitable — market.
A registered Chinese trademark also means you’ll be able to create a licensing agreement to work with a distributor in China.
Finally, remember that the Chinese counterfeit market is notoriously large. This often creates a huge problem even for well-known brands and manufacturers.
If you take the time to register your trademark in China, you will have the ability to sue these counterfeiters. Without proof of your Chinese trademark registration, you won’t be able to fight back in any way.
This is because you can’t display proof of ownership.
The registration also means that Chinese customs officials will be able to seize any counterfeit goods they find. This happens especially at airports, where these goods are so often smuggled.
It’s all about opening yourself up to a broader market and mitigating your risk.
The Basics of China Trademark Registration
First, you’ll need to come up with a strong name for your trademark.
This means you’ll need to consider how the name will translate into Chinese.
Often, you’ll choose between phonetic translations. This means that the characters in Chinese will mimic your brand name in English. Or, you can choose literal translations.
This is where the word in Chinese is identical to the English name.
Once you’ve decided on a name, you need to be certain that the trademark hasn’t already been claimed and registered by someone else.
If the trademark is indeed available, you can proceed with completing an application form and gathering the required documents. The State Administration for Industry and Commerce (SAIC) is the entity that approves or denies your trademark application in China.
There are close to 50 different trademark classes in China.
There are even subclasses for certain kinds of goods. These subclasses are different than the ones used in European trademarks.
So, make sure you’re following China’s regulations when you look for your class.
This process can sometimes take up to an entire year. Once the trademark has actually been approved, you’ll still need to wait for it to be issued. This can also take another two months.
You’ll then get a certificate from the SAIC, which can take yet another two months.
In other words?
The registration process isn’t something that happens overnight. In general, it can take anywhere from 12-15 months if you handle it on your own.
If You’re Denied Registration
If the Chinese trademark office denies your registration application, you will need to get in touch with the Trademark Review and Adjudication Board, or TRAB for short.
You’ll then need to submit a formal opposition to your registration denial. This is a process which can take anywhere from 9 months to a year.
This is why many companies opt to work with a trademark registration lawyer.
This helps them to avoid a denial in the first place. It also helps companies craft a strong case if, for some reason, they’re still denied after filing for the trademark.
Trademark Renewal in China
Remember that your trademark isn’t valid forever. It’s valid only for ten years after your initial registration date.
You need to ensure that you begin the renewal process at least six months before any expiration dates to renew it for another ten-year period.
It’s important to understand that, in many cases, your trademark may be cancelled if you don’t use it within three years of your registration date.
Make sure that you’re truly ready to use your trademark within that time period before you file. Otherwise, you may not be able to get control of it again in the future.
Need Legal Help with Your China Trademark?
Though applying for a China trademark is incredibly important — especially when it comes to protecting your business — it’s also a lengthy process.
You want to be absolutely certain that you file everything correctly the first time around, so that you can avoid having to enter into the opposition process.
Are you looking for legal help with trademark registration in China? Want to learn more about the process before you start the journey?
Get in touch with us to get started using the contact form on this page, or call us at 855-473-8474.
In addition to trademark registration, we can also assist you with trademark monitoring.
This way, you’ll know if a third party is trying to illegally use your trademark, so that you can take appropriate action as soon as possible.
Don’t delay.
Begin the Chinese trademark registration process today.
Branding in the Digital Age: The Role of Trademarks in Securing Your Brand
/0 Comments/in Trademarks /by Anderson DuffTrademark rights exist primarily to avoid consumer confusion. They prevent two companies from selling competing products that use similar marks. With the rise of e-commerce, however, enforcing trademark rights, or even securing your desired trademarks for a brand, has become much harder.
Now that putting up a business online is as easy as one click, it is crucial for startups to secure trademark rights as early as possible so they could penetrate the online market with solid branding. Registered trademarks can set you apart from many competitors in both the digital and traditional retail world.
The Role of Trademarks in Branding
A trademark is a word, phrase, design, symbol, or a combination of these elements that distinguishes products of one party from those of others. When you register a brand’s trademark with the United States Patent and Trademark Office (USPTO), you get exclusive rights to use, license and sell the mark. From a branding perspective, you get to secure the marks that will represent your goods and services for a long time.
Not every mark, however, can be registered with the USPTO. The agency examines every trademark application. It can refuse registration if there’s a likelihood that your mark may be confused with an already registered mark or one that is pending application by another party.
USPTO establishes that the probability of confusion exists when the marks are similar and the products or services are closely related to each other that consumers could mistakenly assume they come from the same source.
Marks do not have to be identical to be considered confusingly similar. They are regarded as similar by the USPTO if they:
Not all similar marks are confusing. The likelihood of confusion exists only if the goods and services the marks represent are also related to some extent, making consumers think they all come from a single source or company.
For example, you can’t apply for a trademark for your banking services if the USPTO finds a similar registered mark (or mark pending approval) used by a company offering mortgage lending services in the country. Although banking and mortgage lending services are fundamentally different, the issue is not whether consumers would assume the services are the same but whether they would think the service provider is the same.
The Importance of Trademarks in the Digital Age
If you’re a startup owner who wants to secure your exclusive rights to a brand name or logo, you must act quickly. For every minute you wait, there’s a chance that another business owner offering the same product as yours is filing an application at USPTO for a similar mark.
Securing your trademarks early also gives your business a few advantages, such as:
Common law or unregistered trademarks provide brands some degree of protection under state-based laws concerning unfair competition. If you’re the first one to operate a coffee shop in your town under a brand name “Coffee House,” you may stop another café with a similar name to open in your area even if you haven’t registered your brand name with the USPTO. States with unfair competition laws may see the second café as a harm to the first business by confusing the consumers in the local area.
You may think you don’t need to register your marks today as you only operate online. However, when you want to expand in the future by having physical stores in different states, having an unregistered trademark can bring marketing and legal problems. You cannot operate in areas where there are businesses that bear marks similar to yours, limiting your opportunities to tap another market.
On the other hand, when you register a national trademark early, you have the advantage to penetrate different markets across the country. Even if you don’t get to operate in an area where a similar brand name is protected under state laws, you get to stop that brand from giving you the same legal problem elsewhere.
As mentioned, USPTO trademark registration gives you the exclusive rights to license your mark. Licensing rights play a crucial role in your business if you want to turn your company into a franchise. Franchisees would have a difficult time operating in various local areas without national trademarks protecting them. Similarly, having trademark rights is a must if you want to sell or merge your company.
The internet gives small business owners a double-edged sword. On the one hand, it makes it easier for you to start selling your products to a vast market online, but on the other, it provides a whole set of trademark infringement problems.
For instance, in the world of e-commerce, anyone can use your marks as domain names or social media pages if you haven’t set up a website or Facebook or Instagram profiles yet. Even if you’re the first to use the mark online, there’s no state-based unfair competition law to protect you. When you register your trademark, you can enforce your rights, and even file a lawsuit against infringers.
Determining trademark rights on the internet is a developing area of law. The law hasn’t clearly defined the geographic limits of a trademark used in e-commerce platforms and other sites. For your protection, it is best to register your marks and exercise the following measures:
The internet has made it easier and faster for you to tap a vast market and grow your business, but it has also made it more difficult to protect your brand’s trademark rights, especially if you haven’t registered it. File a trademark application at USPTO to promote and sell your products freely online and in physical stores, prevent legal problems, and protect your business interests in the long run.
This article is for informational purposes only. It does not contain legal advice, nor does it create an attorney-client relationship. If you want to know more about trademark rights, contact us today.
M22 Keeps Trademark Protection After Agreement with State of Michigan
/0 Comments/in Trademarks /by John DiGiacomoAfter seven years of litigation at the Trademark Trial and Appeal Board, the Ingham County Circuit Court, and the US District Court for the Western District of Michigan, many, many, many sleepless nights, and some of our best legal work, the Attorney General of the State of Michigan has dismissed its trademark cancellation proceeding against M22 with prejudice.
The M22 trademarks are valid, registered, fully enforceable, and incontestible under the law.
Read the full press release below:
07 March, 2019
03/07/2019 Traverse City, MI —M22, LLC, the iconic northern Michigan outdoor brand, will keep its federal trademark protection for the M22 logo following an agreement with the State of Michigan.
In a settlement signed on Feb. 28, M22 released the State from any grievances or future suits in trade for the State dismissing all claims against M22. The settlement also entails that M22 cannot be challenged by the State again on the matter and retains full rights to protect its trademark for retail and apparel nationwide.
“This is a huge win for our customers and our team,” said Keegan Myers, co-founder of M22, LLC. “It’s been a long struggle for us, but we stayed with it because we believed in the strength of our brand and what it means to our loyal customers and employees.”
Brothers Keegan and Matt Myers founded the company in 2004. M22 first filed the logo for a federal trademark in 2006 and was awarded in 2007. After the US Patent and Trademark Office’s required five-year period of consecutive use, the trademark had become “incontestable,” the strongest status for a trademark.
However, in 2012 then Michigan State Attorney General Bill Schuette wrote an opinion claiming no entity could claim control over a highway marker design because it was public domain. This opinion kicked off a seven year legal contest at both the state and federal level.
Earlier this year, Attorney General Dana Nessel succeeded Bill Schuette, and her office re-examined the case, deciding not to move forward with litigation.
“We’ve believed that our position on the law has been correct from day one,” said John Di Giocomo, partner at Revision Legal and M22’s lead attorney on the case. “Now, seven years later, we are glad that the new attorney general has reviewed the case and has determined that it is not worth pursuing further.”
With the trademark undisputed, M22 will continue to protect the brand. The company holds several federal trademarks extending to any retail and apparel products as well as the M22 Challenge race. The trademark does not prevent businesses from using “M-22” to describe a location or directions.“
We’re thankful to have come to an amicable solution with the State of Michigan,” said Matt Myers, co-founder at M22, LLC. “We love our state, and our outdoor brand reflects the passion we have for northern Michigan and exploring its natural wonders.”
For more information about M22’s trademark or usage examples, visit m22.com/pages/trademarks.
Other M22 Posts
About M22
Founded in 2004, M22 is an outdoor brand dedicated to sharing adventure and exploration of northern Michigan. The company retails high quality apparel, accessories and adventure gear online and from its stores in Glen Arbor and Traverse City, MI. More at m22.com.
Media Contact:Keegan Myers, Co-founder, M22, 231-392-3555, k@m22.com
Thank you M22 for having faith in us and for your patience. #M22
For additional information, or if your business is facing a trademark cancellation proceeding, please contact our Trademark Attorneys with the form on this page, or call us at 855-473-8474.
What You Should Know About the EU Copyright Directive
/0 Comments/in copyrights /by Anderson DuffWhat You Should Know About the EU Copyright Directive
In February 2019, the European Union finalized its proposal for reforming its copyright laws, titled “Directive on Copyright Law in the Digital Single Market.” If passed, this EU directive on copyrights could have far-reaching consequences for online service providers and managers of online communities.
This directive has not been signed into law yet. Later this spring, European leaders will take a final vote to determine whether it will become law. If the vote is successful, each of the EU member states will have two years to introduce supporting legislation in their own country.
What Does the Copyright Directive Say?
The directive comes at a time when EU leaders are working to modernize the copyright rules in the EU. Most stakeholders agree that updating these laws are necessary – the last overhaul of these rules took place in 2001. As a result, many of the provisions are relatively non-controversial updates matching the growth of technology.
For example, Article 4 clarifies that schools, universities, and educational establishments can make non-commercial use of copyrighted works, while Article 12 proposes granting sport event organizers copyrights over recordings of their own events.
Articles 11 and 13 have generated the most news coverage because they are the most controversial proposals in the Directive.
Article 11 would change current EU law by granting new rights to press publications for online use of the articles. Currently, authors assign copyrights to publications, which them must prove rights ownership for new works. The proposal would grant direct copyright over online use to these press publications. These rights would expire after one years. This Article specifically applies to journalism and does not apply to academic or scientific publishing.
Article 13 introduces significant new liability rules for online content sharing service providers, such as YouTube, Facebook, Twitter, and Instagram. These content-sharing services must license copyright-protected material from the rights holders. If it is not possible to license the material, and it is posted, the company may be held liable for copyright infringement.
To avoid liability, the company must demonstrate that it:
For example, if Article 13 goes into effect and I upload a clip of Sylvester Stallone as Rocky running up the stairs to Facebook as motivation to get into shape, and if Facebook does not already have a license for the movie, it could be liable for this usage.
Article 13 of the EU directive would only apply to services that:
This article would not affect “legitimate users,” and would permit people to use snippets of copyrighted material for criticism, review, parody, and pastiche.
The proposed Article 13 is different from “safe harbor” provisions under the American Digital Millennium Copyright Act. These provisions protect internet service providers from liability for copyright infringement as long as they:
However, under the new proposals, online service providers would have a new onus placed on them to catch work before it is uploaded.
Praise and Criticism of the Directive
Authors, composers, writers, journalists, photographers, as well as their representative organizations, such as the European Coalitions for Cultural Diversity, European Music Council, and Federation of European Publishers, support this law.
A letter from 30 such organizations submitted a Joint Statement on the EU Copyright Directive, arguing that the Copyright Directive is a “historical opportunity” that will “create a much-needed level playing field for all actors of the creative sector.
On the other hand, certain groups have come out with harsh words for the final text of the copyright directive.
The Electronic Frontier Foundation (EFF), a US-based nonprofit that champions individual privacy, free expression, and civil liberties on the digital world, issued harsh criticism, arguing that “the giant entertainment companies with unchecked power to exploit creators and arbitrarily hold back scientific research.”
This is because the proposed directive will effectively require online communities to invest in automated copyright filters to ensure that no user posts anything that infringes copyright. YouTube’s ContentID system currently in place, which scans uploaded videos against a database of copyrighted material, is an example of such a filter.
The EFF argues that, because the only companies capable of creating such technology are large American companies, such as Google and Facebook. These companies will be able to grow unchecked because no European company will be able to compete.
There is also a concern that this sort of filtering will also have an unintended censorship effect if a program decides that uploads are a match for known copyrighted works. While hosting companies would be required to have a complaint and redress system, this process would at the very least cause delay and user frustration.
Additionally, because online communities will also be required to make “best efforts” to license anything that individuals could upload to these sites, they will also be required to buy what copyright holders sell them or risk being liable for future infringement actions, at potentially high prices.
Finally, the EFF criticizes rules governing sharing news stories in online communities. Article 11 of the EU Copyright Directive requires that any link containing more than single words or short extracts from a news story must be licensed, with no exceptions. This provision could potentially limit the free flow of information regarding world events across online platforms.
This article is for informational purposes only. It does not contain legal advice, nor does it create an attorney-client relationship. If you regarding copyright law, or other intellectual property matters, contact our experienced IP and Internet attorneys today with the form on this page, or call us at 855-473-8474.
You Need To Protect Your E-commerce Business From Data Breach Liability
/0 Comments/in internet /by John DiGiacomoProtecting Your E-Commerce Business From Data Breach Liability
Data breaches pose a significant risk to e-commerce companies. Although the internet has opened up an entirely new world, allowing entrepreneurs to make money online from the comfort of their own homes, it has also opened up potential serious new hazards of which all companies should be aware.
Businesses store a variety of different types of sensitive customer data, including:
At minimum, a data breach can result in serious lack of trust on behalf of your customers. A worst case scenario involving sensitive financial information being leaked could be disastrous for a company. Unfortunately, data breaches are increasingly common – one insurer found that 47% of small businesses experienced a data breach between 2017 and 2018, while 44% of those businesses faced multiple breaches.
Here are some steps you can take to ensure that your company minimizes your risk of data breach liability.
Limit Collection of Customer Data
A great way to avoid potential serious consequences of a data breach is to limit what data you actually collect from customers. Many ecommerce businesses can get away with only having a customer mailing list, and do not need to collect names, birthdates, or phone numbers in order to notify their customers of new items in stock.
It is also a good idea to refrain from storing customer credit card information. Yes, it can be extremely convenient for customers to login and check out without having to re-enter payment details. However, by storing this information, you are setting yourself up for serious potential consequences if this information is leaked.
In fact, storing credit card data is a violation of the PCI Security Standards Council, an international group that creates standards for payment account security. These standards are adopted by every branded credit card company, worldwide.
If you want customers to be able to store credit card information, you can consider working with a third-party payment system, such as PayPal or Amazon Pay, which outsources the security risk to another entity altogether.
Use a Trusted E-Commerce Platform
You should also ensure that your website is hosted on a secure platform. Every web-hosting company should give information regarding customer site security so you can understand how your customer data will be safe.
For example, Wix.com uses Transport Layer Security, which is “the standard security technology for establishing an encrypted link between a web server and a browser.” By using a trusted and seasoned platform, you are getting the benefit of experience from thousands of other users. This will only serve to keep your customers safe.
Use SSL Authentication for Online Checkouts
By using Secure Sockets Layer (SSL) authentication, you will authenticate the identity of your business and encrypt data being sent from your customer to you. This prevents hackers from obtaining the data while it is in transit. Using SSL authentication is another requirement businesses must follow in order to be PCI compliant.
Keep Your Software Up to Date
You should regularly monitor your site and keep all patches and applications up to date. Older versions of particular programs may have “back doors” for hackers to sneak through. It can be annoying to reinstall security updates every time a new leak or bug is found, but by regularly updating, you will make yourself less of a target to hackers.
In addition, you should also use anti-virus software on all company computers and run virus scans on a regular basis. This software should also be regularly updated so that it can catch the latest threats as soon as possible.
Limit Access to Sensitive Data
Another way to protect your customer data is to limit who has access to it. Put a password on your sensitive files to prevent someone from accidentally stumbling into them. If it is not necessary to keep this data on your company’s internal network, consider storing it on a single computer.
Consider which employees have a need to know sensitive information, and then restrict access accordingly. You should also conduct employee training and have policies in place so that your staff does not email, text, or send private customer information through online chat programs, which may become compromised.
Regularly Backup Your Site
If your site is hacked or disabled, you do not want to have to start over completely from scratch. Having weekly or monthly backups saved will let you easily restore your site to what it was before the breach occurred.
Have Your Customers Use Strong Passwords
If you have an option for customers to login to access your site, you need to make sure they use strong password with a combination of numbers, letters, and symbols. By forcing customers set strong passwords, you are helping them keep sensitive data secure.
Invest in Small Business Cyber Insurance
Finally, in order to give yourself greater protection in the event of a data breach of your e-commerce store, you should consider investing in small business cyber insurance. These policies can cover the cost of notifying your customers, investigating the breach, and purchasing credit monitoring services for any customers who were affected by the breach.
Having a trusted insurance carrier to fall back on if the worst happens can help save you a lot of stress and demonstrates to your customers that you are doing everything you can to fix any damage caused by the breach. It is an excellent way to maintain goodwill among your customer base if a breach occurred.
Additionally, even if you are not currently dealing with a data breach, an insurance carrier can help alert you to updated best practices and new security threats as a way to avoid being hacked altogether.
This article is for informational purposes only and does not provide legal advice. Revision Legal has significant experience assisting e-commerce owners through selling their businesses, including negotiating deals, drafting purchase and sales agreements, and assisting with all manners of intellectual property transactions. In order to schedule an appointment with an internet lawyer, contact us today with the form on this page, or call us at 855-473-8474.
Michigan Trademark Lawyer
/0 Comments/in Trademark Attorneys /by Eric MisterovichRevision Legal’s trademark lawyers are experienced in all manners of trademark prosecution, defense, and litigation, including:
Our trademark attorneys regularly handle trademark clearances and trademark registrations, including complex and non-traditional trademark registrations. Our attorneys have represented some of Michigan’s most well known brands, ranging from multinational insurance companies, microbreweries, lifestyle brands, and startups.
If you seek a Michigan trademark lawyer, contact the attorneys at Revision Legal at 855-473-8474 or use the form on this page.
BitTorrent Copyright Defense
/0 Comments/in internet /by Eric MisterovichBitTorrent Copyright Defense
Few things are more frustrating than being sued for something you were not aware was happening and did not do. Unfortunately, this is the situation that many individuals or business owners find themselves when they receive a letter from their Internet Service Provider (ISP) informing them that they are the subject of a copyright lawsuit.
Here is what you need to know about these cases and what your options are.
How BitTorrent Works
BitTorrent is a method for sharing and downloading large files online. There are a number of different BitTorrent programs out there, but they all work by breaking up large files into “bits.”
If you download this file, instead of receiving it from one source, you receive various “bits” from several other computers that have the same file. This lets large files be shared quickly among multiple people.
BitTorrent itself is not illegal – many companies use various protocols to share files internally or to make open source software available to the public.
However, not every file is shared across BitTorrent platforms with the permission of the copyright owner. Movies, books, songs, and television programs are often shared illegally.
Some copyright holders may ignore these downloads, or – as HBO does for Game of Thrones downloaders – send letters requesting that the activity stop. However, others take a much more aggressive stance.
Copyright “Trolls”
Copyright holders who are extremely aggressive in enforcing their copyrights in court are known as copyright trolls.
Although activity online, including downloading movies, television shows, or songs, seems to be anonymous, it is not. Copyright trolls are able to trace the IP address of the user completing the download. The IP address can translate to a physical address and an internet service provider.
With this information, copyright trolls are able to file a complaint in court and ask a judge to issue a subpoena ordering the ISP to turn over the identity of the account-holder. Even if the account-holder is not the person doing the downloading – a very real possibility – this person likely has information about whom the downloader is likely to be.
While this may seem like a fair and logical way to proceed, copyright trolls are infamous for spamming the federal court system with hundreds, if not thousands, of lawsuits at any given time. Some plaintiffs, such as Malibu Media, will sue only one defendant at a time, but others will file lawsuits against dozens of people at one time.
Because it is not humanly possible for these companies to proceed with every lawsuit against every defendant, it is becoming increasingly obvious to judges that these plaintiffs are only looking for quick settlements and to move on to the next victim. One judge issued harsh criticism of this practice last year, saying that the plaintiffs are treating his courtroom “like an ATM.”
In addition to Malibu Media, Strike 3 Holdings has also been actively filing copyright lawsuits in recent months. Both own copyrights to adult material, so the embarrassment factor of being associated with this type of case can encourage people to settle who may be otherwise inclined to fight.
Defending Against a Copyright Troll
If you are dealing with a copyright troll in court, you may be able to raise a number of defenses to fight the claims.
Someone Else is the Infringer
If you know for a fact that someone else did the infringing activity, you may be able to turn this person over to the copyright troll in order to redirect focus from you. However, this can be tricky because you may not want to throw a family member or an otherwise good employee to the mercy of the plaintiff. Occasionally in this situation, the person who actually did the downloading will agree to pay a settlement in order to avoid the risk to both the account-holder and themselves.
The Case was Filed in the Wrong Jurisdiction
In order for a lawsuit to proceed, the case must be filed in the proper jurisdiction. If you have never set foot outside of Michigan, you can not be sued for copyright infringement in Ohio.
Although copyright trolls claim that their methods of determining the location of the infringing activity is highly accurate, this is not necessarily the case.
If you are involved in a copyright lawsuit that was filed somewhere other than where your home is located, you may be able to have the case dismissed for lack of jurisdiction.
The Case was Filed After the Statute of Limitations Expired
A copyright holder must bring a lawsuit within three years; otherwise, they can not bring the case. If a copyright holder attempts to sue you for downloads they claim occurred more than three years ago, the judge can dismiss the case because the troll waited too long.
Settling the Case Outside of Court
Although it is not the answer for everyone, sometimes settlement can be the best option if you are being sued by a copyright troll. If you know that you were the one who did the downloading, you may decide to settle rather than risk paying attorneys fees and statutory damages for infringement.
You may also decide that you do not want any potential negative publicity for your company or yourself. While some judges will allow copyright defendants to proceed anonymously if the copyrighted materials are adult in nature, not every judge will. Rather than take the risk, some people will decide it is in their best interests to settle quietly outside of court.
Preventing Copyright Lawsuits
The best way to protect yourself from being faced with a copyright troll lawsuit is to limit the number of people who can use your WiFi. If this is not possible due to business requirements, you should educate your employees about using the internet responsibly and enact policies designed to prevent this kind of unauthorized use with company materials.
This article is for informational purposes only and does not contain legal advice. If you are being pursued by a copyright troll or have questions regarding copyright infringement, or other intellectual property matters, contact our experienced Internet Attorneys today with the form on this page, or call us at 855-473-8474.
Fair Use: Four Factors To Consider
/0 Comments/in copyrights /by Anderson DuffCopyright and “Fair Use”
Being sued for copyright infringement can be a serious matter. Civil statutory damages can be as high as $150,000 per infringement if you are found liable for copying someone else’s work without permission.
However, there are certain affirmative defenses you can raise that would “excuse” the infringing activity. Perhaps the most common affirmative defense is “fair use,” in which you are able to use the copyrighted material without obtaining permission from the copyright holder.
Four Factors to Evaluate Fair Use
Section 107 of the Copyright Act lists four factors that a court should use in determining if someone’s use of a copyrighted work falls into fair use of the work.
1. Purpose And Character of the Use
Courts will consider the purpose and character of the use, including whether the use was commercial in nature or for nonprofit educational purposes.
If I own the copyright on a picture I took, and a business uses that picture in its advertising materials without my permission, this could be considered infringement with no fair use involved.
On the other hand, if a student uses the picture as part of a project for class, the student’s use is more likely to be considered fair use of the photograph.
This is not to say that all commercial transactions are denied the ability to claim fair use. If a graphic artist transforms the photograph into something new and sells this new work, the artist may be successful in pleading a fair use defense.
This “transformative” element is particularly important in avoiding copyright infringement – if you want to use the work, you should add or build on it.
2. Nature of the Copyright Work
The courts will consider the nature of the copyright work, and specifically the amount of creativity that went into the creation of the work.
If the work is largely technical or a news item, such as a simple whitepaper, it is more likely that fair use defenses will be successful, than if the work requires a high degree of creativity, such as a novel or a movie.
3. Amount And Sustainability
Courts will look at the amount and sustainability of the copyright work that has been used.
If you use a small clip of a TV show, song, or movie in an advertisement, it is more likely to be considered fair use than if you use the entire work.
However, even using a small clip may be enough to amount to full infringement, depending on which portion of the work you are using, if it is “the heart and soul” of the work in question.
4. Effect on the Work’s Value
The courts will also look at the effect on the work’s value.
Courts consider both the effect of the defendant’s particular use, as well as the effect that such uses, if widespread, would have on the marketability of the original work in question.
Specifically, courts examine if the original work is losing, or could lose sales, if the use continues and is widespread.
An additional factor that courts typically consider is whether the work is properly attributed to the author.
There is not a specific formula that courts use to determine if the defendant in a copyright infringement case is covered under the fair use defense.
Instead, courts will look at all the facts in the case before making a decision. However, there are a number of scenarios that are more likely to sustain a fair use defense.
Common Fair Use Scenarios
Criticism, Comment, and News Reporting
In general, copyrighted works may be discussed and even sampled by critics. It is common for book or musical album critics to quote an author or songwriter when reviewing a work. Similarly, news reporters are generally allowed to show clips of television or movies, or play a portion of a song without permission from the copyright holder.
This type of fair use defense typically succeeds when there is something transformative about the use. The commentators copying the work are giving an opinion, comparing it to other works, or engaging with it somehow.
The fair use defense has been successful in situations in which the copyright holder attempts to silence critics of the work. Criticism is by nature transformative, so it is permitted under this defense.
Teaching, Scholarship, and Research
Academics are typically also allowed to use copyrighted works without gaining permission of the author.
Teachers are typically allowed to make copies of short stories, book excerpts, poetry, or song lyrics for students in class, up to a certain extent. However, they may not make unauthorized copies of entire novels to distribute to the class, unless those works are old enough to be part of the public domain.
Students and researchers may also quote copyrighted works in projects, reports, and dissertations because they are generally engaging with the work and transforming it into something new.
Parody
Parody, a subset of commentary or criticism, is one of the most common types of fair use defense. Under parody, the work is being used in a humorous way or for social commentary.
Parody requires a certain amount “borrowing” from the original copyrighted work in order to make a point, which is why it is generally permitted as a fair use defense.
Fair Use: Avoiding a Copyright Lawsuit
The best way to prevent a copyright lawsuit is to obtain permission from the copyright holder for your use. However, this is not always possible, especially if tight deadlines are creeping up or if you wish to criticize the content of the copyrighted work.
If you are unable to obtain the permission, the next best thing you can do is ensure that you are adding to the original work by transforming it into something new.
You should also be selective about which portions of the work you utilize. If you take too much, you use may be considered infringement, even if you are offering valid criticism or creating a thoughtful parody of the work in question.
This article is for informational purposes only and does not contain legal advice. If you have questions regarding copyright protection, copyright infringement, or other intellectual property matters, contact our experienced IP attorneys today with the form on this page, or call us at 855-473-8474.