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Asked and Answered #3

By John DiGiacomo

In this episode, we discuss a Kentucky Wildcats trademark infringement cease and desist letter, revenge porn, and we answer the question, “Should I file for copyright registration?”

“Spills” and “Tangle” courtesy of Blue Dot Sessions.

Show Notes:


Eric:                 Hello and welcome to Asked and Answered Episode 3. I am Eric Misterovich of Revision Legal and John DiGiacomo is here as well.

John:               Hello, happy Friday.

Eric:                 How are you doing today?

John:               I am good. How are you?

Eric:                 Oh, happy to be finishing up another week of a you know, achieving justice, right?

John:               That’s what it’s all about. Justice Mr. DiGiacomo? What does that mean? That’s what Craig Callen used to say to me in law school.

Eric:                 Yeah.

John:               Rest his soul.

Eric:                 Yeah. I never had him. I heard great things about him though. Today we’re going to talk about some trademark issues, some internet law issue as it relates to revenge porn, which is always a hot topic around, and then give a tip on the question that we receive all the time has to do with copyright, right? How artists and musicians can protect themselves, so now without wasting any time, let’s get right into some interesting trademark law news that corresponds to the Final Four and March Madness coming up right now. There was this … The University of Kentucky has sent a cease and desist letter. I know we shared, we talked about this briefly before. You’re familiar with this right, John?

John:               Yeah, I am.

Eric:                 They’re basically claiming the exclusive right to the mark 40-0. University of Kentucky is undefeated right now. They’re in the Final Four. Two games to go to get this perfect record. They sent a cease and desist letter to a individual who’s also in Kentucky that owns a business called 40-0 LLC and has filed for trademark registration for the mark 40-0. What do you make of this?

John:               To kind of describe the trademark to the audience, to provide the theater of the mind as radio professionals like to say, the mark is used on a t-shirt and it’s a blue t-shirt which is pretty similar to Kentucky, and it contains a 40, dash, and an 0. First of all, Kentucky is not 40-0. That’s the most important point here, because as graduates of Michigan State I hope that Kentucky will not be 40-0.

Eric:                 Yeah, exactly.

John:               Nice.

Eric:                 Right.

John:               You know, with that said, is this a viable claim. I don’t know how Kentucky would make a viable claim against this individual. They could file a trademark opposition to oppose the registration of this trademark, but I’m not quite sure on what bases that would rest. What do you think?

Eric:                 Yeah, it seems very strange to be sending out a cease and desist letter claiming an exclusive right to a basketball record the team doesn’t have. The whole situation is strange. The applicant’s specimen that you referred to really looks a lot like Kentucky. He’s located in Kentucky. The timing of it, the little, strange although the applicant claims to be using those since 2013. I think Kentucky’s approach about it probably isn’t right. If they really are serious they should oppose it. The applicant you know, he seems to be using this mark in commerce. He claims he is. It seems to be somewhat affiliated with Kentucky, but where does Kentucky get the right to really do anything about it? I’m not real sure. I don’t think Kentucky is real sure either, and that’s why they send this kind of vague cease and desist letter rather than true opposition.

John:               Yeah, I think vague is the keyword. Actually the keyword is probably bull shit. It’s a bull shit cease and desist letter is what it is. There’s no indication that Kentucky has actually used the term 40-0 as a trademark. They’ve not used it in association with the sale or offering for sale of goods and services. They sent us a cease and desist letter without actually have a via- at least from my understanding, a viable reason for sending one. It’s kind of interesting. It’s not the choice that I would have made as an attorney.

Eric:                 Yeah, and I thought we’d bring this up because it’s timely, but I thought I provided a good opportunity to just kind of talk about cease and desist letters. I mean this is something that we deal with on a regular basis and we get clients that call us all the time panicked that they’ve received one. We write them all the time and it’s a normal part of trademark law and protecting those trademark rights. I thought this is a good opportunity just to kind of give the listeners an idea of, what’s the purpose behind cease and desist letters, what do we do with them, what do they mean. Why don’t we just start with- to me, cease and desist letter is all about providing notice. That you want to tell the other side, “Listen, I know what you’re doing. I believe I have superior rights and I don’t think you should be infringing on those rights.” It’s all about that initial kind of shot of I know what you’re doing and here’s notice that you should stop.

John:               Yeah, and providing those is very important because it increases your ability to get certain types of damages. It’s important that somebody has notice, and if they continue to do what you’re complaining of after they’ve been provided with notice, that you can then acquire certain types of damages at trial.

Eric:                 Yeah, it certainly gives you a lot of leverage, and you know … people may not believe this, but we do try to resolve things quickly. We don’t want to go to court, the litigation’s long, it’s slow, it’s expensive and if we can reach a quick resolution of the case, it’s better for everyone. This cease and desist letter’s usually the first attempt at, “Let’s try to resolve this like human beings. Let’s look at what happened and let’s try to see if we can figure out a way to solve it.” Right?

John:               Yeah, definitely. There’s not- trial’s not only expensive, but also PR is expensive. Resolving an issue short of filing a lawsuit is always going to be the least expensive option, but it’s also probably going to be the best option from a PR stand point, because a lot of time you’re going to look really bad if you sue somebody. For example in this case, if Kentucky were to oppose or to file a lawsuit, they could look very bad in the public eye, for trying to shut down a guy who is clearly a fan.

Eric:                 Yeah, and we’re very familiar with that kind of concept here in Michigan with the recent dispute between Bell’s and the TTAB and over their slogan of a bottling innovation. Another brewer, that small brewer I think in North Carolina that’s using innovative brewing or some kind of … Do you remember that? I don’t remember the exact terms, but Bells said it’s faced a huge, huge back lash in the public eye.

John:               Yeah, it was innovation brewing company Bells had, I think you said brewing innovation since some date. I can’t remember what the date is. Obviously you know that better than me, having some connection to Carlo Masi but … yeah. I mean basically Bell’s got some pretty bad PR on Facebook to the extent that their kind of loyal customer base in Michigan was boycotting their summer release of one of Michigan’s favorite beers, which is Oberon.

Eric:                 Yeah.

John:               Had they resolved this through an initial cease and desist, which I believed they tried to do, it would have been cheaper but it also would have been better from any PR stand point.

Eric:                 Yeah, yeah.

John:               As we said before.

Eric:                 That is certainly something to be concerned about because these kinds of big guys enforcing their trademark rights against little guys can seem unappealing to the public, but the big guys have to- They have to enforce these things. They’ve spent a lot of money to invest in these brands to build these slogans, and they cannot just let things fly by. I think they’re hopefully going to be reasonable about it, but it’s their duty. They have to do this. They have to fight back.

John:               Yeah, they do. They definitely have to fight back. There is a underlying duty to enforce your rights or lose them. Yeah. A lot of times that’s not correctly perceived or understood by the public, which is unfortunate and it does result in bad PR for companies like Bell’s. With that said, it should be your attorney’s job to advice you on how to best deal with those situations.

Eric:                 Yeah, exactly. Speaking of advising people we have clients that receive cease and desist letters all the time, and they really, really are panicked. A lot of time it is small businesses, even that that received one from a larger company and you know, they think the end of the world is coming. That they’re going to face millions of dollars in fines and a federal lawsuit. … My first piece of advice is kind of to tell people, “Relax, let’s take a breath here. This probably isn’t as serious as they try to make it out to be.” Companies usually are pretty aggressive in cease and desist letters and sometimes maybe over reaching a little bit to try to protect their brand, and so I usually tell people, “Let’s take a, take a step back. Let’s take a breath and let’s kind of go over the facts of what happened.” How do you usually approach cease and desist letters?

John:               Yeah, I mean I do the same thing. I basically in my own head say, “Okay, what is their perspective, what is our client’s perspective and what’s the middle ground here?” If there is a middle ground then I go back to the client and I say, “Look, here’s … Here’s a reasonable resolution. Are you, are you comfortable with this resolution? Are you not comfortable with it?” Obviously a lot of times with clients you have to deal with people who are upset, because they had been targeted by what they see is a bully. It’s our job to kind of reign them in and ensure that they understand the logical aspects of responding to a cease and desist letter as opposed to the emotional aspects.

Eric:                 Yeah, yeah it’s really you know, someone has, the trademark owner has to do that, have to send out these letters, and in most cases and 9 times out of 10 you can figure out a way or everyone can get along. I think that’s the important part to think about this cease and desist issues. There’s a lot of wiggle room that can be done, and it certainly not the frank or blunt demand that is initially offered. It usually isn’t the way it ends out.

John:               Yeah, yeah it’s usually not. A lot of times a cease and desist letter is bull shit, and as an attorney you can often have a lot of fun with a bull shit cease and desist letter because your response can equally be bull shit.

Eric:                 Yes, and that’s been pretty good. Usually when those letters are drafted they make their way around the internet pretty quickly. I know there was … recently there was one about the Katy Perry Sharks and the Superbowl.

John:               Yeah.

Eric:                 There’s a famous one about … was it North Face and South Butt. A really funny one. There’s a bunch of them. We’re going to put them on the website and put some links up to the funny cease and desist letters that we’ve encountered. Yeah, that is a fun time to be an attorney when you get one of those letters.

John:               Yeah, we got our letter from a major media company about a while ago. I serve on the board, and the board got a letter, and it was one of those shiny moments as an attorney when you can just sit back and make a complete ass out of yourself by drafting something that’s entirely creative, because we knew that the issue was resolved. It wasn’t going any further, and it really allows you to shine as an attorney sometimes.

Eric:                 Yeah, I remember that one. That was a fun one. That was a good one.

John:               Let’s talk about revenge porn. Everybody’s favorite topic.

Eric:                 Yeah, yeah revenge porn. It is an issue that is only getting more prevalent, more recognized. I think you know, politicians are catching on to it and talking about it. The first up is what is it? To me it’s basically an ex boyfriend girlfriend that’s using pictures that were taken in confidence and essentially extorting someone by posting them online or just trying to embarrass them. They don’t even want anything in return other than to harm someone. It’s really terrible issue that comes up too often, and the hard part is the laws really have not evolved to specifically address it yet.

John:               Yeah, exactly. It’s tough because there is two ways you can address revenge porn. One is through civil law and one is through criminal law. A lot of the states have now been adopting these criminal penalties or criminal statutes and you know, which maybe in- You might disagree with me, but in my personal opinion probably is not the correct way to deal with this problem because is the local police force going to enforce a revenge porn law? Probably not, except for in very [inaudible 00:14:35] cases. A civil state law tort or something along those lines that is more tailored to these types of situations might be better. I guess let’s talk a little bit about how we personally deal with these problems on behalf of clients. How do you deal? When you got a client that comes in with a revenge porn issue, how do you deal with it?

Eric:                 The first question is to figure out a time line of events, and to figure out who is involved because a lot of times … Sometimes people know exactly who’s posting these images and sometimes people have no idea. When do the postings start to happen? Where were the, when were the underlying pictures taken? Who took the pictures? This actually tends to be an extremely important part to this because the person that took those photos likely owns the copyright in those photos. In the revenge porn world, there is literally a difference between a selfie and a non-selfie. If you took the picture yourself and sent it to someone and then they post it online you’re going to have a lot better chance of having that image removed, because you are the copyright holder to that.

John:               Yeah, and I have to laugh because you just said selfie.

Eric:                 I know.

John:               That’s pretty ridiculous.

Eric:                 It is. It’s completely ridiculous. That’s the way it is.

John:               It is-

Eric:                 It’s funny that you have to ask this. Was it a selfie?

John:               Absolutely. That’s really what it is. It’s … The analysis is can we go after this under copyright law? If we can’t go after this under copyright law is there a state law tort that will apply? Copyright law is really the best way to deal with it. That’s why we look at it first in the analysis because the Digital Millenium Copyright Act allows us often to get these images taken down if the host of the web service on which these images are posted is within the United States. After that then we look at the state law tort like the right of publicity or the right of privacy, maybe its intrusion upon seclusion or public disclosure of private facts to determine whether or not we have viable state law cause of action.

Eric:                 Right. A lot of time it also depends on what is the client looking for? What’s their goal?

John:               Yeah.

Eric:                 If they just want these images down, and they want to get on with their life, that’s one thing, but often what happens is this isn’t a one-time thing. It’s … sometimes the client comes to us because they’ve tried to have these images removed and they have been removed 4 or 5, 6 times but they keep coming online. Then it becomes a question of how do I solve this for good? How do I get to the root cause of this and stop it, and that’s where it can get very difficult especially if you don’t know who is posting the pictures.

John:               Yeah, it gets really difficult. Especially in a world in which there are multiple jurisdictions in which these web hosts are situated. It becomes very difficult and that’s when a firm like ours, which has a sense of experience with the underlying technology of the internet is really beneficial. I don’t like to toot our own horns, actually yeah I do. Of course, but we’re really good at this. We’ve been demonstrably good at this, where we’ve gone out and we’ve identified individuals that have posted these items online.

Eric:                 Yeah, and there’s resources online to help people stop this and we’re on those I think is one of the biggest ones that people go to when they find themselves in this position and yeah, we have acted on behalf of a lot of people to put an end to this, whether its using the DMCA take-down request and having images removed from specific websites even removed from Google’s indexing to institute in civil action against individuals that have went out of their way to cause damage to someone, with revenge porn pictures and videos.

John:               Yeah, and we’ll drop those links in the show notes, but I have to kind of give a shout out because Dr. Holly Jacobs who made End Revenge Porn is kind of this person that I really see as a hero in a way, because she was a victim of revenge porn and she turned around and she said, “You know what? At this, I’m going to own this and not only am I going to own this, but I’m going to create a resource, so anyone else who’s in the same position can deal with this problem.” If you are a victim of revenge porn, check it out, contact her. She’s a great person, easy to deal with. Give her a call and she what she thinks about your problem as well.

Eric:                 Yeah, and it’s- We find that that feeling of fighting back is common among victims of revenge porn. Now whether they have the ability to really do it and to make changes is another thing. That website, that resources helped a lot of people, but usually these victims of revenge porn have been essentially bullied for a long time. When they have attorneys on their side, they believe in them and they’re going to fight for them. Then they get that strength up very fast, and they aren’t interested in just protecting themselves, they want to be a voice for it and help other people because it is … It’s rampant issue that-

John:               It- yeah, it really is.

Eric:                 Probably doesn’t get the attention it deserves.

John:               No, and the really difficult part for us is that these individuals who have been victims of revenge porn often don’t have any money at all. They’re often young women who grew up in this age, in which selfies are a thing, and then they don’t laugh at that word. I do. They don’t- They’re not in the position in their life where they can actively pay for an attorney. It becomes very difficult for them to get these types of things removed from the web, and that’s kind of why I said earlier that I think criminal laws aren’t really the way to deal with it. Really a law that allows for attorney’s fees upon the happening of these revenge porn issues would be best, because it would give people like us an incentive to get out there and litigate these cases even for people who do not have the money to do so.

Eric:                 Yeah. I mean unleashing the wave of civil attorneys to prosecute these claims with a hook of attorney fees is just likely to be a more effective route because local prosecutor’s offices are busy. They’re not going to have an understanding of the internet and how to find anonymous posters the way that private civil attorneys are aware of those mechanisms. How these things work. If we really want to stop this, the criminal penalty is … should this be criminal penalties? Sure. That’s fine. I have no problem with that, but let the civil attorneys do the investigation, because we can figure it out, we can solve it and hand it over to the cops and the prosecutors and with a bow on it, but they’re not going to have the time and resources to devote to these kinds of issues.

We Michigan introduced a law, a bill to criminalize revenge porn, and John and I went to testify for the Senate Judiciary Committee and basically said a lot of what we’ve been talking about now, that civil penalties and civil attorney fees would be a much more effective route than the government coming in and saying, “We’ll handle it. Oh and by the way, you can’t post vaguely defined sexual pictures.” It was a huge concern with the first amendment and the government coming in and saying, “These pictures are- posting these kinds of pictures are a crime.”

John:               Yeah, it’s a little weird. Think about it from a practical perspective. You grew up in Detroit area. I grew up in the Flint area. Is a local prosecutor in Flint or Detroit going to actually … go after somebody who’s been hurting somebody with revenge porn?

Eric:                 No, no, I mean they’re not.

John:               No, they’ve got murders to worry about.

Eric:                 Yes.

John:               Looting, and all these other things. Yeah, I agree. I think the civil remedy is the way to go, and that’s kind of what we try to get the Michigan senate to do, but it’s my understanding that that bill is just kind of dead in the water.

Eric:                 Yeah, I think that’s right, but if you want to read what we testify to, we’ll put our comments in the show notes as well. It’s an interesting issue, I hope the Michigan legislature takes another look at.

John:               Me too.

Eric:                 Okay. Let’s go into our last segment of talking about and answering questions that we commonly receive and today I thought we’ll talk about copyright. Really just a general idea of what artists and musicians need to know about copyright law because we receive questions, calls, comments, emails all the time that basically say, “I want to copyright X.” Whether it’s a song, a book, a movie, sometimes it’s things like ideas, or recipes, and so let’s just talk about copyright. What is copyright? What does artist need to know about it?

John:               Copyright is basically a monopoly on a creative work, that extents by virtue of the fact that you created it. Anything that you write down, that you record on a hard drive, that you record on a tape is copyrighted, because you made it. Copyright protection is intended to give artists and creative professionals or creative people a limited monopoly over the financial exploitation of those creative works. It really only extends to works of creative authorship. It does not extend to ideas, it doesn’t extend to short names or phrases, it doesn’t extend to rap names as we often get many calls on. It really only extends to those works of creative authorship like books, movies, television shows, websites, images, etc.

Eric:                 Yeah, and you have the rights from the moment of creation and the moment they’re fixed and tangible form of expression, you have these copyright rights which mean you’re the only one that can display the work or reproduce the work or create a derivative of the work. When people call us and say, “Hey, I need to copyright X.” Nine times out of 10 they already own a copyright in X.

John:               Yeah. The real benefit for a person who wants protection is to file for copyright registration. Copyright registration is basically a filing with the copyright office which then also deposits a copy with the library of congress, which gives you certain benefits. Those benefits are among other things statutory damages of up to $150,000 per work infringed. If somebody goes out there and steals your book or copies your website you can then file a lawsuit. Instead of having to prove your actual damages, you can actually just ask for what are called statutory damages without having to undertake the very costly procedure associated with proving actual loss.

Eric:                 Yeah, and that’s a lot of people call us and they want to register their trademark and their artist, and they really just want to protect themselves. Their goal really isn’t to try to get rich off a lawsuit, but the important thing is you have a tremendous amount of leverage when you have a registered copyright. If some copycat comes along, and your copyright is registered, you hold an immense amount of power over the copycat and that goes a long way to avoiding lawsuits. You don’t have to be out for the money for copyright registration to be a good idea, it’s just … It’s a really smart investment to protect works that are important to you, and are likely or could be copied by anyone, because the amount of protection it gives you is just superior.

John:               Absolutely, and it’s one of the cheapest forms of intellectual property protection, so in any intellectual property protection portfolio the two cheapest items are trade secret protection, which cost nothing and then copyright protection, which is a very minimal cost. If you think that you are going to commercially exploit some creative work that you have created, you should file for registration with the US copyright office and you should file very soon. You should file almost immediately after finishing the creative product or actually within three months, because there are some benefits for doing so.

Eric:                 Right. Filing is very easy. We charge a pretty low rate to do it, flat rate. Filing fee is usually $35.

John:               They actually raised it.

Eric:                 Did they?

John:               No. I think-, yeah I think it’s 55 now.

Eric:                 Okay. It’s very simple, and the process is simple. We ask you a few questions, we fill out the paper work, submitted and it’ll take 7 to 8 months maybe to hear back from a copyright office, but it’s really no sweat off your back. The answers that you need to provide are very straight forward. There’s not much to do with it other than to fill out some paper work. We need some specific answers. Send it in, and then wait. You’re going to be protected for a very long time and- that copyright is going to be around for a very long time.

John:               Yeah, yeah, that’s really the issue from a lot of people’s perspective that … There was a Sony Bono extension to the copyright act that I think occurred just before Mickey Mouse was supposed to come out of copyright protection and into the public domain. Yeah, you’ve got a really long time now to maintain that exclusive monopoly over your creative work. That’s really what it is. If you want to exploit that work, get a registration. Get a registration from an attorney too, if you believe that that work’s worth a pretty significant amount of money. There’s a lot of services out there that are very low-cost and they’re fine. If you don’t intend to commercially exploit that work, but if you don’t use an attorney and you get into litigation, there’s always the risk that your copyright registration will be challenged.

It may divested of your jurisdiction in federal court, and basically what that means is that in litigation opposing counsel that you filed a law suit may attempt to attack your copyright registration, … on the basis that you filed it incorrectly, and then kick you out of federal court. It’s a real risk, and if you think your work is worth something you probably should talk to an attorney about registration.

Eric:                 Yeah. No, it’s a very good point. Let the professionals do it. Let the artist go create, and do what you do best. I think is a fair answer for a lot of things. The legal industry is … there’s self-help things out there, but I’d rather have the professional take care of it.

John:               Yup, absolutely.

Eric:                 I think that wraps it up for Episode 3 of Asked and Answered provided by Revision Legal, an internet law firm and intellectual property law firm. We’re glad to have you along, and if you have questions or comments, please feel free to connect with us on Facebook, Twitter, leave messages on our blog, and if you have questions that you’d like answered, please let us know and we’ll try to get to them.

John:               Yeah, happy Friday and enjoy your weekend.

Eric:                 Thanks a lot.

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