Imagine, large boxes filled with new product sitting in a home office, now imagine them never leaving.

This is an all to real and frequent example of how trademark disputes can effectively shut a small business down. Small businesses traditionally, put the lion share of their capital into the product and administrative aspects of their new business. However, ignoring the implications of a potential trademark infringement lawsuit could be disastrous.

If a company puts all of their capital into developing a certain brand name and that brand name just so happens to belong to the owner of a different company, this is the textbook example of trademark infringement, and can cause a business to come to a screeching halt.

Occasionally, I hear from a client (who initially filed their trademark application themselves) "I have a product, but I can't do anything with it. We received a cease and desist letter which said that if we use it [the trademark], we could be in real trouble."

After meeting the minimum filing requirements and receiving approval from a trademark-examining attorney, the new client is sent a notice of publication by the US Patent and Trademark Office. Thereafter, the published trademark is opposed during the 30-days...

Ford Motor Company sued Ferrari SpA in Detroit federal court, claiming the Italian luxury automaker misappropriated its F-150 pickup-truck trademark for a 2011 Formula 1 racing car.

When Ferrari proudly unveiled the F150, its state-of-the-art Formula 1 race car, Ford said the name was too similar to its F-150 pickup truck, the best selling Ford vehicle for many years. Ford insisted that Ferrari change the name of the car. Ferrari refused, thinking it was odd that a sleek, carbon fiber Formula 1 race car could in any way be linked with a 5,000-pound American pickup truck. Ford sued, filing a trademark infringement lawsuit in federal court. However, even though confusion was unlikely between the Ford pickup and the Ferrari Formula 1 and in many ways any potential association could be considered ridiculous, Ford had no choice but to demonstrate vigilance in protecting the value of its brand.

In its complaint Ford alleged that Ferrari, based in Modena, Italy, adopted the Ford trademark âin naming its new racing vehicle the âF150â in order to capitalize on and profit from the substantial goodwill that Ford has developed,â and that âFerrari's F150 logo bears striking resemblance to the one on Ford's F-150 pickup truck.â

Ford asked...

After a considerable amount of interest in my prior article on Fair Use, I have decided to expand on the subject.

Free Republic, LLC, owner of the political website freerepublic.com, was found liable for copyright infringement in L.A. Times v. Free Republic for reproducing and archiving full-text versions of plaintiffs' news articles even though the judge found the website minimally commercial. She held that "while defendants' do not necessarily 'exploit' the articles for commercial gain, their posting to the Free Republic site allows defendants and other visitors to avoid paying the 'customary price' charged for the works."

The April 2000 opinion ruled concerning the four factors of fair use that 1) "defendants' use of plaintiffs' articles is minimally, if at all, transformative," 2) the factual content of the articles copied "weighs in favor of finding of fair use of the news articles by defendants in this case," though it didn't "provide strong support" 3) concerning the amount and substantiality prong, "the wholesale copying of plaintiffs' articles weighs against the finding of fair use," and 4) the plaintiffs showed that they were trying to exploit the market for viewing their articles online and defendants didn't rebut...

For over ten years a California man named, Rick Norsigian has been trying to prove that a box of glass-plate negatives he bought at a yard sale are the work of Ansel Adams. Norsigian bought the negatives at a Fresno, California, garage sale for $45.

After marketing prints made from the negatives as Adams prints the Ansel Adams Publishing Right Trust filed a federal trademark infringement lawsuit against Norsigian. Norsigian responded by filing counterclaims against the Trust.

A team of experts concluded they were Adams' early work, believed to have been destroyed in a 1937 fire at his Yosemite studio, Norsigian said. The Adams Trust disputed that.

However, the authentication effort was hampered from the beginning by the emergence of Earl Brooks. An Oakland woman, Marian Walton, produced a photo she said was taken by her "Uncle Earl" which seemed to match one of the negatives â a shot of the Jeffrey Pine in Yosemite.

Also in the fall of 2010, another seemingly matching photo of Yosemite was found in a photo scrapbook belonging to Brooks' great grandson. No word from Earl Brooks' family about settlement agreement; one legal chapter might have closed, but many questions remain.

Consequently, this week, Norsigian agreed to a ...

I canât say that I am surprised to see this, after Appleâs heated battle with Microsoft over the âApp Storeâ trademark, they are now suing Amazon for âimproper use.â

The trademark being sought by Apple is for "App Store." Under the relevant trademark law, a trademark cannot be registered if it consists solely of a generic or purely descriptive term. "Store" is generic. So too is the word "application," which is commonly thought of as being what the word "app" refers to. Therefore, no trademark could ever be registered for the word "store" or for the word "application" and certainly not for "application store" (no trademark can be registered when all of its constituent elements are generic). A trademark identifies the origin of goods or services and no one vendor can claim that a whole generic category of goods or services can be set out as a domain for which it and it alone is the origin. The question is, does any of this change because Apple's claim is for the word "app" as opposed to "application."

Apple claims that "app" in this context is a word that refers uniquely to Apple in the public mind, that is, when a typical consumer hears of an "app," that person immediately associates that word with an "Apple app" and not with...

In this final installment of the weekâs articles regarding copyright law and filmmaking I will focus on the Fair Use doctrine.

The Fair Use doctrine is a limitation and exception to the exclusive right granted by copyright law to the author of a creative work that allows limited use of copyrighted material without acquiring permission (license or assignment) from the rights holders. Examples of fair use include commentary, criticism, news reporting, research, teaching, library archiving and scholarship. It provides for the legal, non-licensed citation or incorporation of copyrighted material in another author's work under a four-factor balancing test.

The Fair Use Doctrine (17 U.S.C. Â107) provides:

Notwithstanding the provisions of sections 17 U.S.C. Â106 and Â106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:

1. the purpose and...

Once the owner of the copyright has been identified, the next step is to obtain written permission from the copyright holder to use their work. This is often called a âlicense,â âreleaseâ or a ârightâs agreement.â These may require the payment of money and they may not, this depends on a variety of variables. However, it is imperative that written permission be obtained even if you end up not paying any money or you are using a friendâs creative work.

The key elements of a written license are: 1) grant of rights; 2) representations and warranties; 3) price; 4) screen credit and 5) any other provisions, including the right to create other derivative works and option to use a screenplay.

Itâs at this stage that my clients often ask, is a copyright license or assignment always necessary? In short, the answer is yes. Just mentioning the name of a movie or book is ok and also there are those works covered by public domain and the fair use doctrine. Even if you wrote the screenplay, you will need to license or assign it to the production company.

The difference between a license and an assignment is a simple one. With a license, the original owner of the copyright is retaining ownership and is (often) being paid a license fee for the...

In this first installment of this weekâs articles I will be focusing on the common copyright issues that arise in the filmmaking industry.

What is copyright? For a detailed discussion please review our Copyright 101 section of www.tmroe.com. Briefly, a copyright is a form of protection granted by law for original works of authorship fixed in a tangible medium of expression. Consequently, as soon as you put it on paper, film, tape, etc., you have a copyright. There must also me a degree of creativity, however, the bar is relatively low to meet this requirement.

For example, the film itself is copyrightable, but so are the soundtrack, shooting script and the depiction of the characters. But itâs not just what comes out in the end product that is protected by copyright, there are also works that are going into the making of the film that are likely copyrighted, the screenplay, individual songs, etc.

What rights does a copyright provide you with? A copyright provides you with the right to reproduce the work, publicly display and/or perform it, distribute it and the right to make derivative works. Derivative works are an expressive creation that includes major, copyright-protected elements of an original, previously created first...

In contemplation of the NCF and AFC Championship games this weekend, the Super Bowl and the music played everyday in bars, clubs and restaurants all over the country, Iâve written the following.

The operators of bars, restaurants and clubs frequently ask me; âIf we play music from a local, broadcast radio station or play local broadcast TV are we required to have a license?The answer, like the answer to most legal questions is: it depends. If you have a restaurant, bar or club and you play music or television you might have to have a license from the musicians and artists (and their respective production companies) that own the rights to play that music.

Whether you think this is a good or bad idea, the federal copyright laws allow artists to go after you and sue you for violating their copyrights. And, rather importantly, artists do check into bars, restaurants and clubs and make reports every single day regarding violations.

There are artist trade groups (ASCAP, BMI, SESAC) that check these things out and enforce their memberâs rights. The three groups just mentioned cover most of the popular music in the United States. Whatâs more, they are fairly aggressive about enforcing their membersâ rights.

Now, you may think thatâs...