Intellectual Property

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In last week’s Part Two of our series on Trademark Basics, we discussed the benefits of conducting a clearance search to try to ensure that the mark you are considering adopting doesn’t infringe on the rights of anyone else. Say the results of your clearance search have come back clean and, according to your trusted legal advisor, you should be able to use your trademark without worrying about being slapped with a demand letter. Why not just use your mark and save yourself the time and money it takes to obtain a federal registration?

Quite simply, federal registration gives you many valuable benefits at an extremely low cost (the filing fee for a trademark application can be as low as $225), and it is the most cost effective way to protect your brand. Here are the top nine reasons you should take the next step and file a trademark application with the Patent and Trademark Office (PTO), along with a quick overview of the registration process. For those of you that have been following our five part series on Trademark Basics, we will divulge the 10th reason for seeking federal registration in our upcoming trademark webinar, the date for which we will be announcing soon.
Continue Reading Trademark Basics, Part Three: Nine Benefits of Federally Registering Your Trademarks (and How to Register)

Bars and Restaurants, to make their businesses more attractive to customers, often feature music or video, often broadcast radio or TV.  We wrote about the issues for businesses that play the radio on their premises here.  This week, Landslide, the magazine of the American Bar Association’s Intellectual Property Division, published an article that…

In last week’s article beginning this series on Trademark Basics, we gave an overview of trademark basics and discussed why building up a strong trademark portfolio should be an important part of any media company’s overall business strategy.  This week, we will discuss why identifying marks that you may use must be a key feature of your branding strategy.  The reason is simple – you don’t want to invest thousands of dollars in a mark – building websites and social media campaigns around it, promoting it on air, creating bumper stickers, calendars, t-shirts, and other swag – only to get slapped with a demand letter from someone claiming that it owns the rights to that mark.  That user can potentially force you to cease using the mark on air and online, destroy all physical materials that use the mark, and pay damages for your infringing use of the mark.  This development could blow a station’s marketing budget in the blink of an eye.  Thankfully, this scenario is avoidable by doing some advance sleuthing before committing to a mark.  So, what steps can you take to stay out of legal hot water?

There is a common misconception that, once you register a trademark at the federal level, you are “protected” against any claims of infringement.  As a result, many companies skip the sleuthing and simply file a federal trademark application when they adopt a new mark.  This is a very dangerous practice that could potentially cost you in the end because the application might be rejected by the Trademark Office or opposed by someone with prior rights in the mark.  Indeed, even if a mark is federally registered, someone with prior rights has five years in which to challenge your use or registration of the mark.  In order to minimize these possibilities, it is critical that, before you settle on a new mark, you conduct a trademark search.  Running a search will allow you to see what, if any, other parties may have rights in marks identical or similar to your proposed mark.  What does this entail, exactly?
Continue Reading Trademark Basics, Part Two:  How Trademark Searches Can Keep You Out Of Legal Hot Water

This week, I was given 15 minutes at the RAIN (Radio and Internet Newsletter) Summit in Nashville to summarize all of the legal issues that are important to digital audio companies including webcasters and podcasters.  While getting everything into a presentation that short entailed some speed talking and the briefest description of many very complicated…

In today’s digital economy, trademarks are often the most valuable assets that a business owns.  For example, in 2015, Google’s trademark portfolio was estimated to be worth $76 billion, which constituted almost one third of the entire value of the company.  Microsoft clocked in at $67 billion, with Verizon close behind at almost $60 billion.  While you may not hit 11-digit figures like these intellectual property behemoths, a smart trademark strategy can put you on the right course.  This blog is the first of a five-part series that will help you understand trademarks and how they function, so that you can maximize the value of your own trademark portfolio.  We’ll run the other four articles on the next four Tuesdays (“Trademark Tuesday”) and plan to offer a free webinar covering trademark basics at the end.  So keep reading!

So, what is a trademark?  A trademark identifies products or services as coming from a particular source.  Although a trademark is usually a word, a phrase or a design, it can also consist of or incorporate features such as color, smell, taste, shape (product configuration), touch, motion and sound.  But not all trademarks are created equal.  A strong mark can preclude the use by others of somewhat similar marks for goods and services that may not be directly competitive.  In contrast, a weak mark may only be entitled to protection against the use of an identical mark for the same goods and services.  How do select a trademark that will most effectively help you build your brand?
Continue Reading Trademark Basics for Media Companies, Part One: What Trademarks Are and Why They Matter

On Friday, the US District Court judge who oversees the administration of the BMI Consent Decree rejected the recent Department of Justice interpretation that the antitrust consent decree required that, when BMI licensed music to music users, that license would embody the full musical work, not just a fractional interest that might be held by the songwriter who was the BMI member. DOJ’s decision stemmed from its review of the ASCAP and BMI antitrust consent decrees, which was initiated by ASCAP and BMI.  While ASCAP and BMI initiated the review looking for certain relief from provisions of the Consent Decrees that govern their operations (see our summary of the initial proposals here), in its decision, which we wrote about here, the DOJ decided that the only clarification of the consent decree that it would put forward was one that required 100% licensing by ASCAP and BMI.  100% licensing means that, if a song was licensed as part of the repertoire of ASCAP or BMI, the licensee would get rights to all of that song, even if there were multiple songwriters some of whom were not affiliated with ASCAP or BMI.  This interpretation was rejected by Judge Stanton, the Judge who oversees the BMI consent decree.  His decision can be found on the BMI website, here.

The Judge’s decision seems to be premised not on the policies and practicalities of licensing by ASCAP and BMI, but instead simply from an interpretation of the language of the BMI consent decree itself.  Moreover, the decision itself does not necessarily conclude that songs to which BMI holds less than a full right will necessarily be excluded from the BMI repertoire, only finding that “[i]f a fractionally-licensed composition is disqualified from inclusion in BMI’ s repertory, it is not for violation of any provision of the Consent Decree.”  The decision basically says that the rights conveyed by the BMI licenses to the songs in its catalog, and even the validity of the rights to even license any song in its repertoire, are not consent decree decisions, but instead decisions that are left to be determined in civil proceedings interpreting property and contract rights.  Seemingly, the Judge’s decision ends up raising more questions than it answers. 
Continue Reading BMI Judge Rejects DOJ Conclusion that Consent Decree Requires 100% of Songs – What Does that Mean for Music Services?

The press has been full of reports over the last few weeks about Pandora and Amazon negotiating deals with record labels over music royalties, and some observers have expressed confusion – why don’t these services just rely on the rates set by the Copyright Royalty Board at the end of last year? The answer, as we have written many times before (see e.g. our articles here and here) is that the CRB rates apply only to noninteractive webcasters (companies that provide radio-like services where the listener cannot designate what song he or she will hear next). The services that rely on the CRB rates (which we summarized here and here) must abide by specific rules, including something called the “performance complement” which limits how frequently the service can play a particular artist or a particular song. Even the number of times that a listener can skip a song has been set by caselaw and industry practice (see our article here) – the fear being that if you allow unlimited skips the service becomes more like an interactive one.

So a service that wants to provide listeners with the ability to set up their own playlists or to choose to play songs on demand cannot rely on the license available through the CRB decision (the so-called “statutory license” – so named as the license and the CRB rate-setting process were created by a statute passed by Congress). Similarly, services relying on the statutory license cannot cooperate to allow copying of the songs that they play – so even setting up a service to allow the temporary caching of an Internet radio service so that listeners can hear it when they are offline, most likely cannot be done by simply paying the CRB-established rates. So what do music services that want to provide more functionality do?
Continue Reading Pandora and Amazon Negotiating Agreements with Record Labels – Why They Don’t Just Rely on the CRB Rates?

September 29 will be a big day for broadcasters and other media companies when the FCC holds its next open meeting. In the tentative agenda for that meeting released on Thursday, the FCC identified several issues that deal with the media including two big items on video issues – the decision as to what to do about the Commission’s proposals to open the cable set top box to competing systems, and a new proposal designed to promote sources of independent programming for video distributors. In addition to these two items, the FCC also says that it will resolve the proposals to make the FCC’s foreign ownership rules for broadcasting more like those applicable to non-broadcast companies, easing some of the procedural restrictions that made it difficult for non-US investors to become owners of US broadcast stations.

The set top box debate is perhaps the debate that has garnered the most publicity, with the Commission proposing to allow more companies to offer a means to access cable and satellite TV programming – perhaps enabling the use of new apps to access and inventory that programming. Content owners and program distributors have worried about security issues with opening programming to access on a myriad of devices, and have also been concerned that the loosening of these restrictions could interfere with contractual rights limiting access to certain programs to certain devices and distribution channels. The FCC Chairman yesterday released this fact sheet about the proposal setting out some specifics of the proposal that will seemingly be voted on at the late September meeting, and the Chairman published this op-ed article in the LA Times explaining what he is trying to do. The matter is sure to remain controversial right through the late-September meeting, and perhaps after the decision as well.
Continue Reading September FCC Meeting To Be a Big One for Media Companies – Set Top Boxes, Foreign Ownership of Broadcast Stations and Promotion of Independent Programming

While this summer has perhaps not brought the big headlines in trade press about copyright issues involving broadcasters – particularly in the area of music rights – there still are many issues that are active. I addressed some of those issues in a presentation earlier this month at the Texas Association of Broadcasters Annual Convention. I did my presentation in conjunction with a representative of SoundExchange, where he covered the nuts and bolts of the obligations of broadcasters and webcasters to file royalties for the noninteractive digital performance of sound recordings (e.g. webcasting and Internet radio). While the rates for 2016-2020 are on appeal (see our articles here, here and here), these rates are effective pending appeal and webcasters need to be paying under them. In the Texas presentation, I covered some of the many other copyright issues that are on the horizon, many of which we have written about in the pages of this blog. The slides from my presentation are available here. They provide an outline of many of the pending matters.

The presentation covered the controversy about the Department of Justice decision on the ASCAP and BMI consent decrees, about which I wrote about here. That controversy continues, as the PROs seek judicial or legislative relief from the new DOJ requirement for 100 per cent licensing of split works (see my article for an explanation of what that means). In the interim, the radio industry is negotiating new royalties with both of these organizations, as the current license agreements expire at the end of this year (see our article here).
Continue Reading What’s Up With Music Rights for Broadcasters and Webcasters? – A Presentation on Pending Issues

In the last few weeks, we’ve seen almost daily press reports of new lawsuits against media companies being sued for the use of photos on their websites without permission of the photographers. We’ve written many times about copyright issues that can arise if media companies put content on their website without getting permission of the copyright holder. Most recently, we wrote about the legal issues that can arise by taking photos or videos from Internet sites and reposting them to your own site, or using them in on-air productions. We’ve also written articles about how your ASCAP, BMI and SESAC license don’t give you rights to use music in video productions or to post online music that can be accessed in any on-demand fashion – so that such rights have to be cleared directly with copyright holders for such uses – including the use of music in podcasts. Even though these concerns exist, some copyright holders have been reluctant to sue, as litigation over these matters sometimes costs more than the likely recovery (though broadcasters, too, are concerned about litigation as the costs of defending against such a lawsuit can be very high). One idea has been kicking around for a long time – some sort of small claims court for resolving smaller copyright claims at less cost to the parties. Last month, a bill was introduced in Congress to create such a court – a new Copyright Claims Board.

The bill was sponsored by a single Congressman, and has thus far received the support of only a single co-sponsor. Given the time left in the current Congressional session, it would be unlikely to go any further this year. But with a promised examination of the Copyright Act generally on tap for the next Congress, some part, or all, of this proposal might again see the light of day next year. For a bill sponsored by a single Congressman, introduced late in the Congressional session with little time for approval, the bill is actually quite detailed, setting out a complete structure for the new court, as well as specific procedures that would be followed by any copyright owner seeking to adjudicate their claims through this new process.
Continue Reading Congressional Proposal for Copyright Small Claims Court – What Does It Suggest?