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.  

Week 8 EOC: Bratz (MGA) vs Barbie (Mattel)

In the decade long dispute over trade secrets between the dolls Bratz and Barbie, a significant amount of money has tethered the two in a nasty game of tug-o-war. The often convoluted issues of who stole what and from whom, has taken center stage and is the heart of the matter.

Originally, Barbie was created by Ruth Handler with the assistance of Mattel.  Barbie was one of the first of its kind to evolve away from traditional dolls that were mainly babies. The leap from the traditional doll blossomed into a billion dollar entity with a wide selection of products in her image (cartoons, bedspreads, backpacks, etc.). Moreover, her signature style was born from her mature look and "knock out" measurements, thus creating a highly recognizable toy icon status.

Enter Carter Bryant. A previous employee of Mattel, who worked on the Barbie line, began constructing his own doll line that we now recognize as Bratz. At the time he pitched and ultimately released the doll to MGA for production, there was overlap in his employment with Mattel. This in turn pulled into question whether he had violated a "nondisclosure agreement entered into with [his] employer" (Stim, pg.520), who was Mattel at that time. The issue of trade secrets being used in the production of his doll line was severely under scrutiny, not to mention the time of conception for the brazen doll line.

The push and pull over this issue began in 2004 when Mattel first sought damages. Mattel claimed Bryant was secretly working for the competition, MGA, while still employed with Mattel. Another two years pass and Mattel filed again for damages, but this time it was for copyright infringement and trade secret theft. In 2008 there was yet another suit, but Bryant settled with Mattel before going to trial. However, in 2011 MGA was awarded damages because the judge, David Carter, deemed the first ruling back in 2004 was erroneous, stating that, “Mattel asserted a copyright claim that was stunning in scope and unreasonable in relief it requested,” Carter said. “The claim imperiled free expression, competition and the only serious competitor Mattel had faced in the fashion doll market in nearly 50 years.” (http://www.businessweek.com/news/2011-08-05/mga-wins-225-million-punitive-damages-fees-against-mattel.html). 

Bryant claims to have originally sketched the concept for the Bratz dolls back in 1998, before his employment with Mattel. This did not shake Mattel from jumping all over the claim that he stole trade secret to produce the doll by using knowledge that is "not known outside of the particular business entity" (Stim, pg. 519). In 2011, a jury found that Mattel did not own a copyright in the creative designs behind the dolls. It also found that the ideas, designs and name of the doll collection were not Mattel’s trade secrets and that generally, MGA/Bryant did not take any of Mattel’s trade secrets for their use. The same jury found, however, that Mattel was guilty of "misappropriation of trade secrets occur[ed]...by improper means" (Stim, pg. 549), by attending showroom floors at MGA using fake business cards to gain access.  Mattel, again, was at the throat of MGA in asking for a retrial, but was ultimately denied. This matter is likely to head to the Supreme Court to finally be put to sleep.

In closing, this case has become a bit like 'the most suspicious is also the most guilty. It is my opinion that Mattel has taken this too far. The Barbie brand is a classic one that is not in jeopardy of dying off anytime soon. Nor do they need to fear whether Bratz dolls would ever be confused with Barbie. If anything, Mattel needs to step it up and compete fairly. It seems that they are the ones hitting below the belt and for not. Innovation and creativity shall prevail.

Week 8 BOC: Progress on Final Project

Per our last class, I was able to look up the contact information for eight lawyers, that specialize in Intellectual Property, here in the Las Vegas region.  In addition, I had already obtained two other contact numbers for criminal law as well, from my fathers' recommendation.

In preparation for the interviews, I brainstormed on the questions that I was going to ask. I found this task a little more daunting than I initially anticipated. I wanted to sound sophisticated and pose thoughtful questions that would require more than a 'Yes' or 'No' answer.  Though I have ten questions in the queue, I'm going to ask some of my fellow Fashion/Retail Management students what they came up with, so that I may consolidate and revise my questions accordingly.

Regarding the other aspects of this class, I have completed all assignments (the blogs specifically) with the proper labels and within the time stamps that they're due. My tweets are also caught up.  So much so, in fact, that they're extended out to week nine.

Today, after class, I plan on reviewing, refining and editing my questions for the interviews.  Once that task is completed, I'll begin the process of reaching out to the various specialists in IP law.  I also plan on contacting the criminal lawyers, as well, to discuss in greater detail, what the reprisals are for those who violate infringement laws and if anyone has faced jail time for such offenses.

I believe the collective efforts of revising my questions and interviewing multiple sources (if I'm fortunate) will provide a well rounded project that is pensive and informative. Lastly, I hope to establish relationships with lawyers that could potentially represent me should the occasion arise. 

Week 7 EOC: Lawyers

The following is a list of lawyers and contact numbers for the upcoming final project .

Out of State:

1. Steve Barnes- (303) 995-1492 (Criminal lawyer based in Colorado)

2. Patty Barnes- (303) 757-4971 (Criminal lawyer based in Colorado- Partner)

In State:

3.  Randal D. Shimon Law Chartered- (702) 312-4175 (IP)

4.  Reynolds & Associates- (702) 997-0467/ (702) 445-7000 (IP)

5. McDonald Carano Wilson LLP- (702) 873-4100 (IP)

6. The Amin Law Group- (702) 990-3583 (IP)

7. Law Offices of Philip A. Kantor, P.C. - (888) 575-2295

8. Cotton, Driggs, Walch, Holley, Woloson & Thompson- (702) 791-0308

9. Kenehan & Lambertsen Limited- (702) 997-1732 (IP)

10. Law Office of Mary F. Chapman, Ltd- (702) 800-3362 (IP)

Week 6 EOC: Illicit Trade

In the documentary, "Illicit: The Dark Trade"-by National Geographic, it begins with the seemingly innocent purchase of a designer knock-off handbag. The documentary then follows the veins from the counterfeit bag being sold on the street, back to its origin of construction thousands of miles away. What’s more is that the journey, from shop to streets, is shared with very sinister company in-tow. The likes of which are human trafficking, counterfeit pharmaceutical drugs, and illegal organ transplants to list a few. This well established and flourishing industry of illicit trafficking of goods, has become a full scale epidemic that gains momentum daily. All efforts to slow down this high speed train is like a snail trying to out run a cougar: with every bust, they lop of the head of a monster only to turn around and see ten more heads sprouting from its' neck.

In watching this documentary, I began to wonder how this would affect my craft should I be fortunate enough to succeed and become a profitable designer? How will I protect my trade from imitation knock-offs, that are often more perfect than the designer brand who releases them? Would I even be aware that it was even happening across the globe? The answer is simply a matter of effort I would have to put forth to protect my goods. 

As it stands, I am a purse maker, so this documentary was not too surprising in regards to the endless knock-offs that I've seen personally. I always, however, wondered how the designer giants: Prada, Gucci, Chanel and Fendi, managed in fighting off the relentless opportunists that copy and sell their wears. The answer was a combination of sorts. In some ways, they could do nothing and let knock-offs be distributed, as is the case currently, and see this as a positive for advertising on the behalf of designer houses. Though I would counter that this logic does not support the essence of why these giants are so successful. The whole idea is that these brands are a status. Only those with cash can carry. So if the average high school student, or Walmart mom has a Chanel bag over her shoulder, then it loses its luster for exclusivity. The other option was to higher expensive private investigation crews to seek out the imitators and shut-down the factories. For those who have the means, this is a very viable option, though very slow to achieve its goal.

My solution is maintain exclusivity is to have a registry. I currently make one-of-a-kind handbags that are not easily replicated due to the very nature of how I make my prints and I lack patterns for construction. The result is a purse that is yielded out of materials that I have on hand, and at the amount of it I have in that particular print. That's not to say that this type of print making is not susceptible to imitation, but it does make it harder. Furthermore, by having a registry, I could personally issue a number to that purse, that I only have access to. So upon purchase, the purse is sent with a card of authenticity and a number that ensures the item is not a fake and can be traced back to my hub. I could also change the sequence of numeric filing to stay ahead of copy-cats, who try to emulate my system. In all, I think this will be more successful at maintaining the exclusivity that every consumer wants when buying a luxury piece that sets them apart from the mainstream. I want that right for my clientel and think this will ensure their satisfaction with my product and my name.

Week 5 EOC: Patent Trolls

Back in 2010, The Wall Street Journal published an article titled, "New Breed of Patent Claim Bedevils Product Makers", by Dionne Searcey. The contents therein give face to individuals, commonly known, to the business and patent law community, as Patent Trolls. These individuals range from the seemingly concerned consumer (as most proclaim to be), to companies deftly coined “patent assertion compan[ies]” (pg. 137, Stim). At any rate, they are in the business of filing suits against companies for patent infringements, even though they are “not in the business of making or selling anything” (pg. 137, Stim). Aside from this glaring disparity, they are an welcomed nuisance to companies because “they seek licensing fees that are disproportionate to the patent’s value, often because they are well funded and can afford litigation costs” (pg. Stim).

 This seemingly petty practice, as discussed in the article, has launched hundreds of suits from “concerned consumers” and investigative patent infringement agencies, to intentionally rummage through the shelves to find expired patents (on a variety of goods) in order to file with the courts. One might counter that this practice of “gotcha” tactics to ensure products do not have falsely marked or expired patent numbers on them, is a service to consumers and competitors alike; however, this trend of ‘suing anyone for anything to get rich quick’ has got to have some limits. Litigation is getting out of hand and bogging down the judicial system with trivial claims in most instances.

To the chagrin of many companies, there is an expectation to maintain 100% control over tracking items that have expired markings. This is an altogether task and not a realistic one at that. Too often is the case where products are produced with these markings; stored in warehouses, where they may be purchased/stored by a third party for a multitude of years, and then the risk of violating patent laws if purchased after the time stamp of the patent. This isn’t practical. A solution to keep from having to run these items down and face litigation is to simply avoid the markings on the product, but then that kind of defeats the purpose of a patent in the first place. I contend that there should be a ‘grandfather clause’ on items that are sold/present with expired patent markings. As long as it was already distributed, then it is safe. Otherwise, a potential competitor only need to look up the currency of a patent to see if a new patent is an option.

In all, the patent trolls need to be banished back under the bridge, as in the Billy Goats Three, and allow consumers and competitors alike, to do their homework and research the validity of a product patent.

Source: Patent, Copyright & Trademark: 12th Edition, March 2012, By Richard Stim

Week 4 EOC: Jeopardy Game Critic

In preparation for our mid-term exam, the class was tasked to develop questions for a Jeopardy game, to be played by the students in class the following week.

Initially, the thought of memorizing 100+ pages of terms and concepts seemed to be a very daunting task, especially with our busy lives and other class commitments. However, in pouring over the pages repeatedly, and honing in on relevant information pertaining to our fields of study, the terms became more connu.

Later, in class, we were split up into collaborative groups, with our books in hand for quick referencing. Students took turns manning their games for the class, as the rest feverishly attempted to answer the various gauntlets of questions. In addition, the elements of points gained and lost with right or wrong answers, forced student to make a strong effort to post the correct answers. At the end of a series of questions, those groups with the highest points, gained currency, via yellow post-it notes. The post-it notes would later become extra credit points to count toward the mid-term exam the following week. This combination of rewards/punishments and competition among the classmates enabled an environment whereby, the terms were further embedded and committed to memory.

The end result was a success. This could be seen through the various "Aha!" and "Oh, I remember that!", which could be heard at different intervals of the game. There was a sense of satisfaction when one remembered off the top of their head, or had the term referenced already from their game, and were able to lock in a correct answer. Moreover, this innovative approach memorizing what appeared to be impossible, was made very manageable and entertaining. I hope the continuity of this tool to study for tests, remains a function of the class, and serves as a recommendation to others looking for creative options.

Week 3 EOC: Jeopardy Questions

Here are three of my Jeopardy questions for the classroom showdown:

Q. This refers to all previous developments that are used by the USPTO and the courts to determine whether a particular invention is novel and nonobvious.  

A. What is prior art?

Q. When a patent owner requires companies to not only purchase the patented invention, but also requires them to purchase non-patented items as well. 

A. What is tying?

 

Q. This document transfers a patent owner’s rights in exchange for money payable in a lump sum or royalties on future sales of the invention. 

A. What is an assignment?