intellectual property Archives | Miami IP, Trademark & Entertainment Lawyer

Civil Rights, Copyright, and Owning a Movement

When Dr. Martin Luther King Jr. said, “ I Have a Dream,” I’m pretty sure he wasn’t considering for one second the copyright implications. There will be many posts today celebrating his great achievements, but why not also talk about some copyright law. All his iconic speeches are still under copyright and not free for the public domain to access as yet. So the bigger question then, who owns the IP of social movements?

I probably spend too much time thinking about the legal side of history when it comes to too many things, especially IP law. I’ve noticed a battle that’s been brewing for years between protecting someone’s IP and making sure the public can learn and be inspired by their work. What’s even more complicated is when the work and that person happens to be a civil rights legend who reshaped history.

Things have gotten tricky in the digital age; Tik Tok, Instagram, X etc. can reach millions each day. The advent of these platforms have made it more difficult for the estates of these social movement pioneers to keep the messages authentic.

Add in AI to this and you get a barrage of deep fakes, voice cloning and you may see Dr. King giving a speech he never gave.

Here are a few ideas on how to keep Dr. King’s legacy (and others like his) safe from misappropriation while allowing people to learn and share his message freely for proper usage in our 24/7 digital world.

Limited-Term Copyright for Social Impact Works – Possibly let crucial civil rights speeches and works enter the public domain faster (currently life span of the author + 70 years), while still protecting the financial interests of the estates.
Open Licensing for Educational Use – Give teachers, historians and educational institutions the ability to teach the content without having to jump through hoops.
Fair Use Expansion – Allow educators and activists to use more of the speeches and works and not have to worry about a copyright takedown for every little snippet posted.
AI Ethical Guidelines – Create some concrete laws and ground rules so we are not facing a future where all our heroes and icons aren’t selling toothpaste or coffee mugs, unbeknownst to their estate.

As an IP Attorney, I admit I’m biased to keeping the law relevant and with the speed of social media and AI, we need to seriously consider how we protect important social messages. We need to try our best to keep history accurate. Should social movement speeches and texts remain locked behind copyright, or free for the public to share? And how does AI fit into this?

Drake v. UMG: From Booth to Courtroom, a New Style of Rap Battle

By Zamani Thomas Blog Roll

What started as a threat a month or so ago has now become an actual case. I guess this is what happens now when the two biggest names in rap clash. While I am not here to pass judgement on either side, there was a time, in which I grew up, not long ago when rap beefs never entered the courtroom (admittedly they still too frequently end in the streets with violence).

Leaving the hip hop cultural taboo of bringing this clash to the courts rather than the booth aside, I thought it would be interesting to look at the legal issues involved here. Many of these issues I’ve litigated or been involved in during my career and I am looking forward to seeing how they play out.

Without opinion nor bias, below are the legal issues Drake is bringing to the table in his lawsuit against Universal Music Group (UMG):

Defamation (Libel):

– Drake alleges that UMG knowingly published and promoted the song “Not Like Us” which accuses him of being a pedophile.

– Drake must prove that false statements were made and they cause reputational harm and were made with negligence or malice.

– UMG can claim as a defense that the lyrics were artistic expression and protected under the 1st Amendment.

Negligence & Duty of Care:

– Drake can argue that UMG owed him the duty of care as an artist on their label

– If UMG published the song and knew the lyrics were harmful, negligence could be considered..

– UMG may posit the question of whether they owed Drake a duty to prevent reputational damage caused by another artist signed to them.

Breach of Fiduciary Duty:

– Labels owe artists a duty of good faith and fair dealing.

– Drake will try to show that UMG prioritized Kendrick’s success at his expense and breached this duty.

Misrepresentation & Fraud:

– Drake could argue fraudulent representation if UMG assured him of label support but promoted damaging content.

– Drake must prove intentional deception and financial or reputational harm.

Contractual Violations:

– Depending on the contract between Drake and UMG, there may be violations constituting breach.

Tortious Interference:

– Drake could look to argue UMG interfered with his career and led to some lost business opportunities.

– Drake must prove UMG’s actions intentionally harmed him professionally and earnings wise.

First Amendment Defense by UMG:

– UMG will argue “Not Like Us” is artistic expression and thus protected speech under the 1st amendment.

– In most cases courts are likely to lean on the side of protecting lyrics as free speech unless proven to be statements made intended to cause harm.

This isn’t the first time a recording artist has sued their label, it is the first time to my knowledge that a hip hop artist is suing his/her label over a diss-track by a label mate. If successful this landmark case could have a chilling effect on rap beefs going forward and would alter the competitive sport of rap battles in the future.

Disclaimer

THE INFORMATION CONTAINED IN THIS WEBSITE IS PROVIDED FOR INFORMATIONAL PURPOSES ONLY, AND SHOULD NOT BE CONSTRUED AS LEGAL ADVICE ON ANY MATTER.

The transmission and receipt of information contained on this Web site, in whole or in part, or communication with Zamani Thomas PA via the Internet or e-mail through this website does not constitute or create a lawyer-client relationship between us and any recipient. You should not send us any confidential information in response to this web-page. Such responses will not create a lawyer-client relationship, and whatever you disclose to us will not be privileged or confidential unless we have agreed to act as your legal counsel and you have executed a written engagement agreement with Zamani Thomas PA. The material on this website may not reflect the most current legal developments. The content and interpretation of the law addressed herein is subject to revision. We disclaim all liability in respect to actions taken or not taken based on any or all the contents of this site to the fullest extent permitted by law. Do not act or refrain from acting upon this information without seeking professional legal counsel.

6 Differences Between U.S. and Canadian Trademarks

By Zamani Thomas Blog Roll

Canadians should consider trademarking their brands in the U.S. due to its much larger consumer market, for protection against cross border infringement and to secure their brand’s identity in cross-border trade (particularly now with e-commerce etc.). Without a U.S. trademark, many Canadian brands risk losing their competitive advantage in the United States. Below are some differences between the two country’s processes.

The Use Requirements for Registration & Filing Basis
- U.S.: An applied for trademark in the United States has a requirement that it is currently being used in commerce for it to be registered with the USPTO. Applicants are able to file for a trademark with an “Intent to Use” 1(b) filing basis, however, the examiner will not register the mark until there is evidence of that mark in use with a 1(a) filing basis.
- Canada: Trademarks in Canada are not required to be “In Use” in order for the registration to occur, thus no filing basis is required. However, in order to maintain your trademark long term, the mark must be In Use or the trademark could be removed from the Register of Trademarks

Trademark Duration and Renewal
- U.S.: Registered marks in the United States must be renewed every 10 years and a declaration of continued use must be filed between the 5th and 6th year to maintain the registration.
- Canada: Registered marks in Canada must be renewed every 10 years, however do not require any midterm declarations

Distinctiveness
- U.S.: The USPTO maintains that distinctiveness is a critical element of a registered mark. If your mark is generic or descriptive it is not registerable. If your mark is descriptive the USPTO may ask for proof of “Secondary meaning”
- Canada: Distinctiveness is important in Canada but is not as narrowly monitored as in the States. The Canadian Intellectual Property Office (CIPO) may accept broader descriptive elements than its U.S. counterpart.

Trademark Opposition
- U.S.: Oppositions in the U.S. are filed with the Trademark Trial and Appeal Board (TTAB) which operates as a semi-judicial body.
- Canada: Oppositions in Canada are handled by the CIPO itself and not as formal as the TTAB procedure.

Examination of Applicants and Scope of Protection
- U.S.: The USPTO has a stricter and more in depth examination process; Particularly their assessment of “likelihood of confusion” analysis with existing registered (and times applied for) marks.
- Canada: The CIPO process is not as rigorous overall, but does include a broader assessment of descriptiveness and registerabilty.

Nationwide Protection
- U.S.: Federal and State registrations are available in the U.S.. However federal registrations are considered superior and only available if the mark is being used in interstate commerce.
- Canada: Registered trademarks in Canada enjoy federal protection even in cases where there is no inter-provincial or international trade.

Disclaimer

The information contained in this website is provided for informational purposes only, and should not be construed as legal advice on any matter.

Protecting Your Brand #1: Establishing Your Brand Identity

By Zamani Thomas Blog Roll

Building Your Brand: The Legal Foundations for Entrepreneurs

Trademarks: What They Are and Why they Matter.

Based on the Oxford Dictionary definition a Trademark is a symbol, word, or words legally registered or established by use as representing a company or product (or service). It connects you and/or your business to the market with a simple logo, expression or catch phrase to name a few. It associates your brand’s identity and helps people link your items with quality and trust.

Why Trademarks Matter:

Legal Protection: Trademarks grant you the exclusive rights to use your brand’s elements in commerce relating to your industry and imposes limitations and more importantly recourse if others attempt to benefit from your mark.

Brand Recognition: A trademark allows customers to gain instant recognition with your brand‒ building trust and loyalty.

Business Value: A well branded and protected trademark increases your business valuation (in some instances being the most valuable asset of a company) ‒ making it more appealing to investors and partners.

E.g. Famous trademarks like McDonald’s golden arches or Nike’s swoosh have become symbols of their brands ‒ driving customer loyalty and market power.

How to Select a Strong and Distinctive Brand Name or Logo

When deciding on a brand name or logo you must go further than just creativity; the legal implications are also integral. A strong name or logo with distinctiveness offers more protection, while being easier to enforce and protect as a trademark.

Ideas and Tips for Brand Names:

Distinctiveness: Try your best to avoid generic or descriptive names like “Best Body Lotion” or “Burger and Fries.” Instead, businesses should be aiming for uniqueness such as “Nivea” or “Wendy’s” respectively.

Be Memorable: Choose a name that connects with your target audience and is easy to remember, spell or pronounce while also being relevant to your brand identity. Testing potential names with your audience if possible is a good strategy.

Think about the Future: When selecting your name, be sure that it is resilient and versatile enough to grow as your business grows. Consider the path of the industry you are entering and how the name will age with time.

Ideas and Tips for Designing a Logo:

Be sure that the design is clean and original. Make sure it is done with professional quality and you are in possession of the original design file.

Stay away from common symbols and elements that may cause brand confusion and reduce your ability to trademark the logo.

Keep it simple and versatile for use across various media and platforms.

Arbitrary and suggestive names like (Burger King or Lexus) are easier than descriptive ones to trademark, thus making them easier to protect.

Steps to Conducting a Thorough Trademark Search

It’s crucial to conduct a thorough trademark search to be sure your preferred brand name or logo is not already in use. A quality search may prevent expensive and lengthy legal disputes and ultimate rebranding costs.

Search the USPTO Database: The United States Patent and Trademark Office’s online database is the first stop any business should make when looking for existing trademarks. The database allows visitors to search based on a number of criteria and is invaluable to potential registrants. (Canadian Trademark Office has a similar database)

Check Search Engines, Social Media and Websites: See if your desired brand name is available as a website domain and on social media platforms.

HIre an IP Attorney: Trademark attorneys perform detailed searches and are able to uncover subtle differences or similarities in potential marks and existing ones that may make the difference between a viable trademark or not.

Final Thoughts and Advice for Starting Their Brand Journey

Define Your Brand:

Have a clear mission, and a clear vision and be sure all of them reflect your business’ values and intended brand ideals.

Have a target market in mind and consider how your name/logo will resonate with them.

Create a unique brand narrative that differentiates you.

Prioritize Early Legal Protection:

Apply for registration of your business name and logo with the USPTO or appropriate jurisdiction.

Start with your name, logo and catchphrases. These will be the IP assets most likely to be infringed.

If possible, apply for the trademark before launching your brand. Rhe application alone gives a limited amount of protection.

Invest in Professionals:

Find a trademark attorney for assistance with the ins and outs of trademark law to avoid pitfalls.

Work with professional designers and artists if you have creative limitations.

Conclusion:

The steps above, while not a fully exhaustive list, if followed will assist entrepreneurs build a resilient brand to capture the essence of their brand, while covering the legal and marketing complexities it may face.

Disclaimer

The information contained in this website is provided for informational purposes only, and should not be construed as legal advice on any matter.

The Warhol Prince Conundrum and How it Affects Creatives

By Zamani Thomas Blog Roll

The importance of clarity when it comes to legal decisions that impact artists and creatives is essential in intellectual property analysis and practice. Today, I aim to provide you with an in-depth analysis of the recent Supreme Court ruling on the copyright dispute involving Andy Warhol and his portraits of Prince. This ruling is of great significance, as it delves into the complexities of intellectual property law, fair use, and the delicate balance between creativity and infringement.

Intellectual Property Law and Fair Use:

In order to grasp the Supreme Court’s ruling, we must first explore the foundations of intellectual property law. Copyrights exist to protect the rights of creators, granting them exclusive control over their original works. However, fair use acts as a crucial limitation on these rights, allowing certain uses of copyrighted material without the need for explicit permission.

The Fair Use Doctrine:

Fair use is a legal doctrine designed to strike a balance between the interests of creators and the broader public. It acknowledges that certain uses of copyrighted material contribute to the enrichment of society, fostering innovation, creativity, and the free exchange of ideas. The concept of fair use allows for transformative uses of copyrighted works, facilitating the emergence of new and original expressions.

The Andy Warhol Case:

Now, let’s turn our attention to the copyright dispute at hand. The case centered around Andy Warhol’s creation of a series of portraits based on a photograph taken by Lynn Goldsmith. Goldsmith argued that Warhol’s use of her photograph constituted copyright infringement, as it was done without her permission.

The Supreme Court’s Ruling:

In its ruling, the Supreme Court made a significant decision in favor of Andy Warhol and his artistic practice. The Court recognized that Warhol’s portraits of Prince were not mere replicas of Goldsmith’s photograph. Instead, they constituted distinct artistic expressions infused with Warhol’s signature style and transformative vision. By applying the fair use doctrine, the Court acknowledged the creative reinterpretation by Warhol, ultimately protecting it as a legitimate artistic endeavor.

Implications for Artists and Creatives:

This ruling has far-reaching implications for artists and creatives. It reinforces the notion that fair use plays a vital role in fostering innovation, cultural enrichment, and the continued progress of art. By acknowledging the transformative nature of Warhol’s work, the Court has emphasized the importance of artistic freedom and creative expression.

The Boundaries of Creative Expression:

The ruling in the Andy Warhol case also sparks a broader discussion on the boundaries of creative expression and the potential dangers of excessive copyright protection. It recognizes that creativity often thrives on building upon existing works, reimagining them, and adding new perspectives. By carefully considering fair use and transformative qualities, we can strike a balance that allows for artistic innovation while respecting the rights of original creators.

Maintaining the Balance:

It is crucial to understand that fair use is not an absolute defense. Each case must be examined on its individual merits, considering factors such as the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the potential impact on the market value of the original work. We must preserve the delicate balance between the rights of creators and the public’s interest in accessing and engaging with creative works.

In conclusion, the Supreme Court’s ruling in the Andy Warhol copyright dispute marks a significant milestone for artists and creatives. By recognizing the transformative nature of Warhol’s work and its contribution to artistic development, the Court has reaffirmed the importance of fair use in fostering a vibrant cultural landscape.

The importance of IP protection in the Crypto World

By Zamani Thomas Blog Roll

If you’re involved in the world of cryptocurrencies, you likely know how important it is to protect your digital assets. But what about your intellectual property? In this article, we’ll explore the significance of intellectual property protection in the crypto space and provide practical advice on how to safeguard your creations.

What is intellectual property?

First, let’s define intellectual property. It refers to intangible assets that are created by human ingenuity, such as inventions, literary and artistic works, designs, symbols, and names. Intellectual property can be protected through legal means, such as patents, trademarks, copyrights, and trade secrets. These protections are designed to give the creators of intellectual property the exclusive right to use, distribute, and profit from their creations.

Why is intellectual property protection important in the crypto space?

The crypto space is a hotbed of innovation, with developers creating new and exciting products every day. However, this innovation also creates a need for intellectual property protection. Here are some reasons why:

Crypto products are easily replicable: Digital assets are easily copied and replicated, which means that without proper protections, your innovations can be stolen and profited from by others.
The crypto space is largely unregulated: The lack of regulatory oversight in the crypto space means that intellectual property theft can go unpunished. Without legal protections in place, there is little recourse for those whose intellectual property has been stolen.
Intellectual property is often the key to success: In the highly competitive crypto space, intellectual property can be the difference between success and failure. Protecting your creations can give you a competitive edge and help you stand out from the crowd.

How to protect your intellectual property in the crypto space

Now that we’ve established the importance of intellectual property protection in the crypto space, let’s look at some practical steps you can take to safeguard your creations.

Register your intellectual property: The first step is to register your intellectual property with the appropriate authorities. This might include patents for inventions, trademarks for logos and names, and copyrights for literary and artistic works.
Use open source licenses: If you’re developing open source software, consider using a license that protects your intellectual property. There are many open source licenses available, such as the MIT License or the Apache License, that allow you to share your code while still retaining some control over how it is used.
Monitor for infringement: Keep an eye out for intellectual property infringement in the crypto space. This might include monitoring social media, forums, and other online platforms for unauthorized use of your creations.
Enforce your rights: If you do discover infringement, take action to enforce your rights. This might include sending cease and desist letters or taking legal action against the infringing party.

In conclusion, Intellectual property protection is crucial in the crypto space. Without it, your innovations can be easily stolen and profited from by others. By taking steps to register, license, monitor, and enforce your intellectual property rights, you can safeguard your creations and give yourself a competitive edge in the fast-moving world of cryptocurrencies.

Disclaimer

THE INFORMATION CONTAINED IN THIS WEBSITE IS PROVIDED FOR INFORMATIONAL PURPOSES ONLY, AND SHOULD NOT BE CONSTRUED AS LEGAL ADVICE ON ANY MATTER.

Steps to a Successful Trademark Filing

By Zamani Thomas Blog Roll

5 Steps to a successful filing

In this article I am going to try to outline 5 steps that will give you the best chance at a successful trademark filing with the United States Trademark & Patent Office (USPTO).

1. Make Sure you are the first to file your “mark” (or something too similar)

Be sure when you are ready to file your trademark, you are using and filing a “mark” that is not already taken or is not “confusingly similar” to anther mark already registered. The search feature on the USPTO website allows for individuals see all the marks that have been filed and also what “class” they have been filed under.

It is in your best interest to perform an exhaustive search on your proposed “mark” because once filed, you will not be able to receive a refund if rejected by the examiner.

2. Be sure that the Trademark you select is “Protect-able”

The second thing anyone looking to file a Trademark must understand is that not all words or phrases are eligible to be protected. Below is a list of characteristics that may determine the success of a filing and strength of the potential trademark, from weakest to strongest.

Generic words may not be protected.
Descriptive words are only allowed to be protected once they have attained a secondary meaning.
Suggestive words are protect-able if they still identify the good/service. (ex Twitter)
Arbitrary words have a high level of protection (ex. Apple)
Fanciful or made up words are afforded the greatest scope of protection. (ex. Kodak)

The more similar your trademark is to other trademarks on the market, the less identifying strength it is going to have.

3. File your Trademark earlier rather than later

Although your “common law” trademark rights arise automatically, you should still look to file your “mark” with the USPTO ASAP to secure exclusivity nationwide and to create constructive notice to all future applicants looking to file your “mark’ or something “confusingly similar”. By filing it early, you become first in time and are at the front of the line with respect to that “mark”.
If you have not started using the “mark” in public yet, you can file an “Intent to Use” registration application as soon as you develop a bonafide intent to your new name or logo in commerce.

4. Once Registered, the work starts

After you have filed and received a successful registration of your trademark, you must stay vigilant and continue to monitor potential individuals infringing on your intellectual property. Failure to adequately enforce your trademark rights can result in both (i) degradation of the brand, and (ii) potentially loss of exclusive rights altogether. If you decide to expand your business internationally, you will need to file separate trademark protections in foreign jurisdictions.

5. Protecting your Trademark gets more important as you grow

As your company grows you will probably have more items and or services under the initial Trademark umbrella that may need protecting.

Be sure to keep your intellectual property protected at all times. The best way to do this is by filing new trademarks following the steps above, each time you roll our a new product or service. Further, if you create new goods or services and keep them under the existing trademark, you may run into problems with clearance in the new market. If your brand changes over time, new registration applications may be necessary in order to protect modified versions of your trademarks.

Protecting your Intellectual Property will pay dividends in the future and is a critical element in making sure your company or ideas have the best chance of being successful.