My Arguments and Opinions

By and large, the rulings were to be expected.  Not that I was in any position to really counter what the pros know.  However, from what we’ve been studying in class and reading in the book, the rulings, again, were very in step with what one could surmise as the gospel.

I will say this much, that I was very appreciative of the few IP attorneys who gave me the time of day.  The brief questions I posed should not have been an issue for some of the IP attorneys to take the time to answer.  This is to say that merely giving some counsel would not enable me to play attorney, which I got the feeling some of them thought.  For others, I believe they felt they were being roped into a game of “stump the chump”, where I appeared to be establishing their credentials.  Far from the truth, yet perception is reality.

The bottom line from this experience is that when one is in doubt, get a good lawyer.  Which, subsequently, I looked into keeping one of the more knowledgeable IP attorneys on retainer.  The range was between $2500-$5000 depending on the size and volume of the business transacted.  Fortunately for me, the one I looked into from the Lamberstein law firm, waived any necessity as I am still a one woman show.  Good to know not all lawyers are so money hungry to take advantage when the opportunity presents itself.  Cheers.

I would like to thank the following attorneys who made this project possible:

Attorney Bryce Walden, from the law office of Cotton, Driggs, Walch, Holley, Woloson & Thompson

Attorney Jeff Wilson, from the law office of McDonald, Carano & Wilson LLP

Attorney Lamberstein, from the law office of Kenehan and Lamberstein Limited

Rule of Law

The questions I posed during my interviews were like a soup recipe.  Some parts copyright, one part infringement, three parts trademark and a dash of damages.  The sum of which will be disclosed accordingly in the coming paragraphs.

When posting pictures of my handbags on my website, I discovered that as long as the page is copyrighted and so is the trademark, then they are protected should I discover them on another website- meaning, the “copyright gives the owner of a creative work the right to keep others from unauthorized use of the work” (Stim, pg. 197).  In addition, if I am pitching my purse line to potential investors, and I do not want to run the risk of my works being ripped off before I can file an Intent-to-use trademark (ITU), which would make it easier “to protect it against would-be copiers” (Stim, pg. 383). I was also advised that I should have a nondisclosure agreement at the end of my presentation as “a necessary element to claiming legal protection” (Stim, pg. 550).

Concerning the materials used to construct my purses, I needed to be certain that I wasn’t in violation of possible infringement in relation to licensed patented items. “The owner of a mark grants a ‘license’ when the owner authorizes another party to use the mark for commercial purposes” (Stim, pg. 457).  Although the items I use from fabric stores (handles, fasteners, zippers) are under the auspices that the buyer will use them for personal use, they are not mandated for distribution under a trademarked name without their consent.  What that means for me is that I will need to contact a distributor who I will enter an agreement that I will use their hardware for my garments exclusively.

                

In regards to establishing an identifier to my handbags specifically, I was told that getting a trademark for my brand name, and affixing said label to my purses, would increase protection against counterfeiting  which is the “act of making or selling [lookalikegoods]” (Stim, pg. 407). Further still, I plan on documenting and assigning a serial number to each purse to fortify the authenticity of my handbags.  A registry would also be in place so that the consumer would only need to look up their serial number to match the documented item in their possession. 

I also took into consideration whether my trademark could be used even if the name exists in a different utility. “The USPTO uses the International Schedule of Classes of Goods and Services to group related goods.  This helps them make appropriate comparisons of the mark” (Stim, pg. 505). So the bottom line is that as long as my trademark falls under a different sub-section, I am virtually covered.

                

Lastly, I inquired about seeking damages if I had a showcase of my handbags at a gallery with several signs posting ‘No Photography Please’, yet found images of my handbags on a blog or website.  Because my explicit consent was not given, then the potential recourse is to have an attorney send a letter to cease and desist, which “typically informs the alleged infringer of the validity of ownership of the copyrighted work, the nature of the infringement, and the remedies that are available to the copyright holder unless the infringement is halted” (Stim, pg. 220).     

Reasoning of the Law

When conducting my mini-interviews with the IP lawyers, who would allow me to record their answers, I found there was a lot of gray area in the world of IP law.  Most of my questions came back with, “Well, it depends”.  Many of the IP lawyers required me to elaborate and expound upon various scenarios or a particular situations, before they could come to some resolve on how to answer.  I found that the logic behind their answers were direct results of tried cases and personal experience with the laws that foster trademark and copyright litigation.

               

The gray areas in IP law seem to stem from all the various loopholes and tried law suits that have been ruled, overturned, and/or amended over the years due to changes to the policies and regulations.

Save for blatant infringement, there are several scenarios that weave in and out of the black and the red.  Patent licensing comes to mind, with this delicate dance.  As it stands, patent licensing is a "binding agreement in which a patent owner grants another party the sole right to make, use, and/or sell another invention”(Stim, pg.80).  In my instance, I use hardware and notions from fabric stores, to make my handbags, so licensing becomes a potential issue and essentially complicated.  So much so, that the IP lawyer I spoke to specifically about this scenario, had to ask additional questions; such as, am I selling this handbag with a label (trademarked brand name)? Or is this just one of its kind? Am I selling multiples of this same handbag? Do I have a contract agreement with the manufacturers? All of which were questions that were used to drill down to the heart of the legal issue concerning licensing.  Ultimately, I found that I would have to find a producer to make hardware just for my brand, in order to put my label on it and sell that handbag, otherwise, store bought notions and hardware are just licensed for a one time, personal use and not for mass distribution.

The Questions

The questions for the final project interviews were derived from my personal curiosities about IP laws.  The task was to compose questions in a manner that addressed the degree program that each student is studying.  I tailored my questions around trademarks and copyrights for fashion design. 

Currently, I am an aspiring fashion designer of ladies handbags and have been toying with brand names and how to go about “stamping” my creations in a way that will be clever and set me apart from the competition.  Not an easy chore.  So as a result, I asked questions about registering my brand name as a trademark, and where one goes to see if the name is already spoken for/registered.  I inquired about how I would go about protecting my goods from infringement on the internet, counterfeiting and when I’m pitching my works to potential investors.  In addition, I was curious about potential infringement of my own doing.  As it stands, I use fabric, hardware and notions from fabric stores to create my handbags and wanted to ensure that I am not infringing on any of the designs or patents that may be in place.  It is one thing to be ignorant of infringement when making and selling goods, and it’s another if one is found to be willfully infringing where they are “deliberately and in ‘wanton disregard’ of the patent owner’s rights”, (Stim, pg. 148).  In either event, I wanted to be clear about what my limitations were in this regard and not be an offender, albeit knowingly, or not.

These questions helped to hone in on the important legalities that artists and creators face when selling and distributing their goods.  I asked questions that I have had for some time now and it was reassuring to have answers to them at last.  I never want to be in a situation where I must pay damages or have to seek them from others, but the reality is that this business is very convoluted when it comes to some of the parameters; furthermore, it is fortuitous to be able to gain knowledge before potentially negative consequences arise.

Final Project Questions

1. If I post pictures of my handbags on my website, are they protected from infringement if I discover them posted on another website? If so, how do I protect them?

2. What is the best defense against counterfeiting of my goods? In other words, should I document only that which I make? A registration system?

3. I plan on releasing only a select amount of handbags annually as part of my sales strategy. I plan on using a serial number to verify authenticity and intend to have an online registrar, with a photo identification attached, as a way to deter imitation. What might be some other ways I can deter others from imitating my system?

4. Is there an issue if my brand name is also found in a different utility? For instance, if my label was NV for clothing and the diet pill NV also exists, what are the potential ramifications?

5. How do I find out if my brand name is already registered and/or in existence locally? Internationally?

6. How much does it cost to keep a lawyer on a retainer for legal advice?

7. If I’m using notions from a fabric store (handles, clasps, buttons, etc.) and sell my handbags online and in stores, am I violating any laws that would be considered infringement on their goods/designs?

8. If I am pitching a presentation to potential investors or a design company, what can I do to keep others from “ripping off” my designs and recreating them for themselves?

9. If I have employees, what is the form or document called that protects what goods they create under my name? Essentially, what is the binding agreement that what they create for me is my property/creation?

10. Can I seek damages if I have a gallery showcase that explicitly states ‘No Photography’, but then find pictures of my showcased handbags on a blog or internet website, and my express permission or consent was not given?

Legal Authority

I began my final project by researching local Intellectual Property (IP) lawyers and attempting to make contact with them.  The instructions were to obtain the contact numbers of at least ten IP lawyers, in hopes that one among them would entertain an interview to field questions we were also tasked with asking.  I began the running down the list of names to see who would be available.  This would prove to be harder than initially anticipated.

             
I first tried making contact on a Friday, thinking most of them would probably have court earlier in the week, and therefore less apt to take my calls.  I was wrong on this assumption.  For those who had receptionists answer, the lawyer(s) were already heading out for the weekend or indisposed.  The rest simply went to voice mail.  I abandoned my search and tried anew the following Monday.

             
Several of the IP lawyers were said to be at court that morning and others took my information to have the lawyer call me later.  I asked one of the receptionists, who was also a paralegal, if I could ask her some questions that she might have the answers to.  She would listen to my questions, but then she’d abruptly say, after each question, “I can’t answer that, I’m not a lawyer”.  I decided I’d just save my questions for the pros.

             
 I found it was not advantageous to let the attorney’s know that I was a student trying to get interviews.  A couple receptionists said their boss wouldn’t even speak to me without payment.  I tried a new approach, which ultimately worked for me.  I told them that I was starting up my own clothing line (which isn’t far from the truth), and that I was contemplating representation.  I said I had a couple questions to ask and they, for the most part, obliged.  So I basically had several mini-interviews with three different IP attorney’s and was able to obtain answers to the questions I had.

              
 In the end, I think I may have found an attorney that I will call on if I do end up needed representation.  This exercise was a good way to filter the attorneys who want to really assist you, from the ones who only see dollar signs.  For those attorneys who were unhelpful and cold, they just lost a potential client.  Don’t bite the hand that could potentially feed.

Week 10 EOC: Lawyer Jokes

For the post for today, we were assigned the task of finding some lawyer jokes. Here are some of the cleaner versions I found:

Q: What's the difference between a female lawyer and a pitbull?
A: Lipstick.
www.iciclesoftware.com/LawJokes/IcicleLawJokes.html

Q: Why don't snakes bite attorneys?
A: Professional courtesy.
http://www.stromer.com/jokes/185jokes.html

Q: If you are stranded on a desert island with Adolph Hitler, Atilla the Hun, and a lawyer, and you have a gun with only two bullets, what do you do?
A: Shoot the lawyer twice.
http://www.ahajokes.com/law001.html

Week 9 EOC: Letters of Permission

For the assignment today, we were asked to look up letters of permission and/or contracts for potential use.  I chose the following from a long list of potential candidates:

Letter of permission to use a song
Interview release form
Works-for-hire contract agreement
Website linking agreement

First, I chose the letter of permission to use a song as I may someday host a fashion show and will require music to theme my showcase.  Without the accompaniment of some tunes, the show would be lifeless to say the least, nor would it contain any pizazz that is required to give life to the showcase.

Then I chose the interview release form.  Since we have to interview lawyers, I figured this would be handy for our upcoming final project. Even if it's verbal consent, at least I'm showing them that I have an idea of how litigation works and will fortify my posture of sounding more professional...(in theory of course).

The works-for-hire agreement/contract is something that I know I'll need in the future.  As it stands, I have already been commissioned to make goods before (custom handbags, clothing, etc.) so this will entitle me to credit for my work and will allow me to publish my intellectual designs, therefor protecting my craft.

Lastly, I chose the website linking agreement because there may be an opportunity for me to "piggy back" off of someones current website that has a lot of traffic.  The added bonus of being linked into more than one source only helps me get more exposure, so having this agreement will cement good working relationships with fellow designers and artists- providing a quid pro quo scenario that is beneficial to all parties involved.

The main objective of this exercise is to find ways to CYA so that the terms of any business transactions are well communicated and understood by all parties involved.  This serves to protect not only myself, but others so that the potential for misgivings or litigation are ultimately avoided.