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  • Feb 18th, 2010 @ 2:24pm

    "in suing for breach of contract, the company..."


    " suing for breach of contract, the company was effectively admitting that what the whistleblowers said was true rather than false."

    I don't agree. It is probably wiser as a legal strategy to bring a suit for breach of contract, even if a suit for libel or slander would win. These involve proving different issues. If a written employment contract has a 'gag rule' in it forbidding the discussion of disclosed information outside of the employment relationship, then it will be much easier to prove breach of contract than it will to prove libel or slander. Truth is a defense to libel or slander...but is no defense if you have a duty not to discuss an issue in the first place.

    Carol Ruth Shepherd, Attorney
    Arborlaw PLC

  • Feb 13th, 2010 @ 2:15am

    Dilution and affinity marketing

    Interestingly enough Chrysler turns out to be not very sophisticated about affinity marketing. The federal registration for the Ram logo is here:, but it only covers autos and auto parts. However, the scope of a federal registration is not definitive for purposes of deciding infringement/no_infringement: the caselaw is clear that whatever goods and services you actually sell are the goods and services you can claim infringement on. Chrysler definitely sells some officially licensed merchandise, The fact that it does so means it is in the market for shirts and hats and that would directly conflict with any education-related promotional merchandise. So with respect to straight-up t-shirts vs. t-shirts, Chrysler has a slam-dunk trademark infringement case. (And they do have a slam-dunk copyright infringement case on the copying of the logo design, but let's leave that one aside -- this is about whether it makes sense for Chrysler to attempt to benefit from this kind of unauthorized use.) Even where there is a mis-match of goods and services (see the argument above that this is not infringement because the uses are for different things), the Dodge Ram is arguably a "famous" mark (such as Coca-Cola) which is protected against any other use in commerce, because the first thing anyone thinks when they see that logo, in any context, is "this is from Chrysler." As far as affinity merchandising goes, Chrysler is really missing the boat: Harley Davidson makes billions off its merchandising unit and those sales only serve to promote and reinforce the public's desire to buy the original product.

    There might be some promotional goodwill created by use by a third party such as a high school, but that doesn't mean that Chrysler would be benefited by every use conceivably made by a third party. The high school team could put the same logo on something like sippy cups or an eco-anti-gas-guzzler or anti-hunting promotional campaign, which would send confusing and ultimately negative messages to its intended customers. And it's not commercially the best use of the mark, Chrysler can get a lot more money and goodwill via the licensing opportunities above, stadium naming rights, etc. And if it did this, how should it choose which school? If it licenses one school, other schools will ask for the same thing and any denial clearly would be a public relations nightmare that would eclipse any small localized benefit in goodwill gained by an association with community athletics.

    Carol Shepherd
    Arborlaw PLC

  • Dec 12th, 2009 @ 6:13am

    (untitled comment)

    Setting aside all the posts in favor of not having any copyrights, why shouldn't an author be able to give something away for free today, in certain situations, but reserve the right to change his or her mind and charge for it? Just because I give you a personal copy of something I own doesn't mean I am giving you the right to make a million copies of it, and charge money for them. What's surprising is that Apple didn't do their homework on this, they approved an app that infringes copyright.

  • Dec 12th, 2009 @ 5:47am

    Both copyright and trademark could apply

    I am a copyright and trademark lawyer and I thought I would provide some nitpicky context (ignore this post if you are in the 'whatever' camp and are not interested in the details).

    Unfortunately it's true that many reporters freely intermix the concepts of "copyright" and "trademark," in the same story and even in the same sentence. (I have caught the Wall Street Journal doing this so they are in good company). Even more unfortunate, the majority of general practice attorneys, and even the majority of corporate and commercial transactions attorneys, have a tendency to throw these terms around and not focus on exactly which rights are being violated. (Tip of the day: do not hire a trademark attorney who says that someone has "trademarked" a phrase. Experienced trademark lawyers do not use "trademark" as a verb.)

    Copyright and trademark rights are completely dependent on subject matter and situation. What type of subject matter, and what type of use in what situation, is the basis of the claim? While it was not clear from the linked story exactly what was happening here, there's enough information to say that under a number of likely scenarios the station would be violating one or the other or both.

    Let's say the station has one of its announcers record a promotional tag phrase in combination with its call letters: "XHNZ -- LET'S GET READY TO RUMBLE!". Buffer has several federal trademark registrations in a number of variations of this phrase for sporting, entertainment and cultural events and related services and media uses. (His trademark attorneys were admirably thorough: he also owns trademark rights in all variations of this phrase for clothing, mugs, t-shirts, computer software and multimedia, and even personal care products such as shampoo). This hypothetical use is clearly use in entertainment and would be the basis for a very viable claim of federal trademark infringement.

    Now let's say that instead of using its own announcer, the radio station does basically the same thing but inserts the words "LET'S GET READY TO RUMBLE" in Buffer's own voice, taken from a sound clip of a recording of an actual event. The recording is copyrightable as a sound recording and use of a portion of a sound recording usually constitutes copyright infringement. (In that "usually," I am condensing a lot of finer points of law such as how much digital sampling constitutes infringement, and whether there are fair use defenses due to a relatively small amount of the whole work being used, and whether Buffer owns the recording). Let's just say that as an experienced IP attorney, I am positive that if a recording of Buffer's voice were used like this, there is no judge that would throw the lawsuit out on a motion to dismiss, and it would therefore go forward to a very expensive trial. Under copyright law, if you have a registration in advance of an infringing use and you win a court case, the other side pays your attorney's fees, as well as a pre-set amount of damages, regardless of the actual monetary harm. The same is not true for trademark claims: you pay your own lawyers no matter what. So, if you can possibly claim copyright infringement, that's what you do, because the other side could very well have to pay your attorneys' fees of $50,000 to $250,000 (high end but typical). This is the kind of ten-ton leverage that makes the RIAA so successful in forcing its victims to settle. RIAA has very, very expensive lawyers.

    There is also the question of a claim of copyright in just the phrase "Let's get ready to rumble" (i.e., as a 'literary work'). As the article and one commenter pointed out, slogans and short phrases standing alone, typically are not copyrightable subject matter, because they are too short to constitute an 'original work' (once again, condensing a lot of finer points of law explaining why this is the case).

    And there's yet a third way that Buffer's intellectual property rights could be violated: if the radio station used an announcer's voice to sound as much like Buffer as possible, and thereby impersonate him, without using an actual recording of him. This violates another set of common law rights which are not strictly trademark rights. The law in most states provides a right of publicity which protects a celebrity's image and persona against commercial use by another party. There are several famous cases protecting a celebrity's 'persona' against a soundalike (i.e., you can't use a really good impersonator to give the impression that Arnold Schwarzenegger endorses your dog food). On the federal level, doing this type of thing would also be a violation of federal trademark law for something called "false association" or "passing off."

    Net net, if you throw a bunch of miscellaneous vague copyright and trademark allegations against the wall, something's gonna stick.

    Carol Shepherd, Attorney
    Arborlaw PLC
    Ann Arbor, MI

  • Sep 29th, 2009 @ 4:19am


    Link no longer works.

  • Sep 24th, 2009 @ 8:43am

    Copyright Office "streamlines" the registration process

    The Copyright Office is trying to deal with the paperwork backlog by no longer requiring mandatory deposits of online-only works during the registration process -- they have proposed to ditch mandatory deposit and only take deposits on their own request. One of the largest concerns with this is the issue of proving your work: if the Copyright Office doesn't necessarily hold it, then it affects the use of the work as evidence in an infringement case. And, as we know, online-only works are dynamic and mutable in a self-serving manner -- you can change them at any time (subject to any archiving such as at and in the process make them more infringing, or to erase evidence of infringement. The Office has currently proposed new regulations for online-only works which will affect the mandatory deposit rules, as well as the definition of a "complete copy" and the "best edition" for purposes of blogs and online-only newspapers and other online publishers, and also creative artists who work primarily in digital media or who have online-only portfolios. I've posted links about this, and a copy of the proposed changes, at my website: There is a public comment period for the proposed changes which ends October 11, 2009. I believe that these regulations will be burdensome and difficult to understand and comply with, and I recommend that as many people put comments in as possible before the deadline. While this may affect the backlog by cutting down on the paper-pushing, in my opinion the fuzziness of this will tilt the power balance between large publishers and individuals even farther.

    Carol Shepherd, Attorney
    Arborlaw PLC