© 2011 Knobbe Martens Olson & Bear LLP1

2 Planned Business Launch  Online retail site that will sell environmentally friendly products  Branding (both Offensive and Defensive)  Branding for the site  Using Other’s Brands (e.g., branded sub-stores, Sponsored Links)  Site Content  Jingle  Images and graphics  Text  Web Design  Spokesperson selected  Audiovisual works using spokesperson/Look-alike

© 2011 Knobbe Martens Olson & Bear LLP3 Branding for the Site  Possible Names for the Site  ECOWARES  GREEN SIGHT  YAZZLE  Logo Slogans  “KEEP OUR WORLD TWIRLING” (overall identifier)  “FAUX & FABULOUS” (Fall Season - clothing sub-store)

© 2011 Knobbe Martens Olson & Bear LLP4 Branding for the Site  Appropriate  Credible  Appealing  Relevant  Memorable  Enduring  Easy to Pronounce Business and LEGAL Attributes of a Good Brand  PROTECTABLE  AVAILABLE

© 2011 Knobbe Martens Olson & Bear LLP5 Clearing Brands – Protectable? Legal categories of trademarks Arbitrary Fanciful SuggestiveDescriptiveGeneric Capable of Becoming Protectable No Protection Inherently Protectable Avoid Choose ECOWARES GREEN SIGHT YAZZLE

© 2011 Knobbe Martens Olson & Bear LLP6 Clearing Brands – Available?  Clearance Searching Considerations  Geographic Scope (short + long term)  U.S.  Foreign Jurisdictions  Goods/Services (short + long term)  Retail Services  Private Label Goods  Certification Mark  Temporal (Shelf-Life)  Seasonal v. Long Term  Domain Name Availability  gTLDs and country specific domain names I’ve selected an “Inherently Strong” Mark, but is it available?

© 2011 Knobbe Martens Olson & Bear LLP7 Clearance & Filing Provides Comfort to Expand RegionBudweiser (U.S.) U.S. Europe Geographic Expansion *Czech beer company owns Budweiser brand in Europe

© 2011 Knobbe Martens Olson & Bear LLP8 CompanyComputersMusic Apple, Inc → Computers Apple, Inc. purchases rights to APPLE mark in music space (with license back to original owner) for $500+ Million Apple, Inc. Expands to Music Space 1986 → Audio Functions 2003 → iTunes Product Expansion *Another company owns rights to APPLE in connection with music Clearance & Filing Provides Comfort to Expand

© 2011 Knobbe Martens Olson & Bear LLP9 Now What?  Secure Domain Names (gTLDs, ccTLDs, typos)  Secure Trademark Registrations  Think short term and long term plans  Use Your Brand Properly – Build Brand Equity  proper notice  Police and Enforce Your Trademark Rights  Monitor third-party use and filings  Avoid infringement, dilution and abandonment  Quality control  Distributors/licensees/certification programs

© 2011 Knobbe Martens Olson & Bear LLP10  Business wants to:  Use third party branded sub-stores  Use Sponsored Links triggered by third party marks  Use third party certification marks for its private label goods (at least until its owns certification program gets off the ground) Using Other’s Brands

© 2011 Knobbe Martens Olson & Bear LLP11 “I want to use other’s brands on the site”  DO  Only use so much of the brand as necessary  Nothing to suggest sponsorship  Reference the trademark only as part of a complete sentence (not as a stand alone element)  Use proper trademark notice  or  Obtain permission if use beyond the above Using Other’s Brands

© 2011 Knobbe Martens Olson & Bear LLP12 Using Other’s Brands - Branded Sub-stores PERMISSION NEEDEDNO PERMISSION NEEDED

© 2011 Knobbe Martens Olson & Bear LLP13 Using Other’s Brands – Sponsored Links

© 2011 Knobbe Martens Olson & Bear LLP14 Website’s Content – Copyright Issues  Jingle: Employee created (outside the scope of her normal employment) with husband  Images: Created in-house and taken from Internet  Text: Created solely in-house  Logo: Created solely in-house  Software: Web developer next door

© 2011 Knobbe Martens Olson & Bear LLP15 Copyright Ownership Copyright Registration Copyright Notice How Do I Clear and Protect the Content?

© 2011 Knobbe Martens Olson & Bear LLP16 Website Content Clearance Issues  Content:  Jingle  Images and Logo  Text  Software  Creation:  Employee?  Independent Contractor?  Joint Authors?  Public Domain?

© 2011 Knobbe Martens Olson & Bear LLP17 Clearing Content - Ownership  Copyright law presumes that the author or artist of the work is the owner of the copyright in the work  Employer/Employee relationship  scope of employment  independent contractor  “Works Made For Hire” (handout)  commissioned from category  written agreement  Joint Authorship  Public Domain (handout)

© 2011 Knobbe Martens Olson & Bear LLP18 “Work Made for Hire” A work specially ordered or commissioned for use as: 1) a contribution to a collective work 2) a part of a motion picture or other audiovisual work 3) a translation 4) a supplementary work 5) a compilation 6) an instructional text 7) a test 8) answer material for a test 9) an atlas Parties agree in a signed writing that work is made for hire

© 2011 Knobbe Martens Olson & Bear LLP19 Copyright Term and Public Domain Post-1978 works: Life + 70 years "Work for Hire" the shorter of: 95 years from date of first publication 120 years from creation date Works published pre-1978 and renewed: 28 years + 67 years (renewal) = 95 years

© 2011 Knobbe Martens Olson & Bear LLP20 Website Content Clearance  Jingle – Need written assignments from each of the two Joint Authors  Images – Need to either remove all Internet material or obtain permission/license to use; Company owns images (Logo) created by employee  Text – Company owns  Software – Need written “work for hire” agreement

© 2011 Knobbe Martens Olson & Bear LLP21 Copyright Registration Registration is not required for copyright Registration does provide presumption of validity Registration a pre-requisite to enforcing copyright 9 th Circuit – application rule Registering prior to infringement or within 3 months of publication - statutory damages and attorney fees – online registration availablewww.loc.gov

© 2011 Knobbe Martens Olson & Bear LLP22 Copyright Notice Notice no longer required - incentive to use: Rebut claim of innocent infringement Deters potential infringers Elements of proper notice: Use © (copyright or copr.) Year of publication Owner name “All Rights Reserved” (optional)

© 2011 Knobbe Martens Olson & Bear LLP23 Rights of Publicity

© 2011 Knobbe Martens Olson & Bear LLP24 Rights of Publicity  Statutory (state) and/or common law  Protects the commercial value in an individual’s identity and reputation  Derives from right of privacy  Now generally considered a property or intellectual property right  Claims often combined with claim under Lanham Act  Defenses include First Amendment and Fair Use-type defenses  Transformative defense  Rogers test  Public Interest/Public Affairs

© 2011 Knobbe Martens Olson & Bear LLP25 Rights of Publicity  In California, Right of Publicity is both statutory and common law  Knowing use  Name, voice, signature, photograph, or likeness  For purpose of advertising or selling  Without the consent of the celebrity  Causes injury/damages  Common law – broader than statutory right  Use of identity  Appropriation of name or likeness to defendants advantage, commercial or otherwise  Lack of consent  Injury

© 2011 Knobbe Martens Olson & Bear LLP26 Rights of Publicity - Examples

© 2011 Knobbe Martens Olson & Bear LLP27