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Don’t Trust Your Brand To Just Anyone

By: Kennington Groff

Lilenfeld PC

Don’t trust your brand to just any lawyer – both enforcing and not enforcing your company’s trademark rights can damage your brand.

When you move to enforce your trademark rights, you are putting your trademark in the line-of-fire, where it will very likely be attacked by the opposing party. A trademark can be attacked in a variety of ways, most frequently through arguments that the mark is (1) generic, (2) has been abandoned for non-use, (3) misrepresentation to the Trademark Office, and (4) fair use.

In Haughton Elevator Co v. Seeberger, 85 U.S.P.Q. 80 (1950) trademark rights were lost because the mark ESCALATOR had become generic and therefore lost its trademark status. The court found that Otis Elevator failed to protect the ESCALATOR mark and it became known to the general public as the name for a moving stairway. ESCALATOR was no longer used to identify the moving stairways created by its original founder, Otis Elevator, but rather it became the word to identify all moving stairways. Now anyone can use the word ESCALATOR to describe a moving stairway. Additionally, several of these famous brands lost their trademark rights due to genericide: Aspirin, Trampoline, Thermos, Dry Ice, Laundromat, App Store, Yo-Yo and Zipper.

Further, marks can become abandoned if the owner stops using the mark. Even a short period of nonuse may lead to abandonment in certain circumstances so its important to seek the advise of a lawyer before you even temporarily stop using a mark.

Trademark law permits others to use your mark if that use qualifies as fair use. Permitted uses include allowing a person to use a mark in 1) a non-trademark, descriptive sense to describe a trademark holders goods and/or services and 2) to refer to a trademark owner or its good and/or services. The owner of trademark rights must police this carefully in order to not lose their rights and prevent infringement.

Lastly, any misrepresentation to the Trademark Office, including fraud or misrepresented facts, when applying to register your mark can result in a loss of trademark rights.

This should make clear to everyone that only experienced (truly experienced) trademark lawyers should be used to enforce your trademark rights. As discussed elsewhere, many lawyers claim to have trademark law expertise, but they are actually novices with little to no experience. Make sure you hire a qualified trademark lawyer to brand your brand.

At Lilenfeld PC, we work we can work with you to protect your company’s brand and trademark by getting an opposing company to stop using a deceptive comparative advertisement. We also can defend your comparative advertisement and trademark against another company if you received a demand letter or if a lawsuit was filed against you. If you have any questions or would like a consultation, please contact us at (404) 201-2520.

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The Supreme Court Has Affirmed the Validity of the ‘Booking.com’ Trademark

By: Robin Gentry

Lilenfeld PC

The Supreme Court has issued its opinion in a trademark case involving the mark “Booking.com.”  In that case, the Court refused to adopt a bright line test that any generic term when combined with “.com” is generic. Instead, the Court ruled that whether “any given ‘generic.com’ term is generic  . . . depends on whether consumers in fact perceive that term as the name of a class, or instead, as a term capable of distinguishing among members of the class.”

Both parties agreed that the term “booking” was generic for making travel reservations.  Booking.com argued that the combination of “booking” and “.com” was not generic, however, because consumers recognized the mark as descriptive for services involving booking hotel reservations.

The Trademark Office did not appeal the underlying decision regarding how consumers perceived “booking.com” but instead argued that the combination of a generic term with “.com” always produces a generic mark. The Trademark Office relied heavily on an 1888 decision that held that the combination of a generic term with a generic corporate designation, such as “Inc.” is always generic.

The Court rejected the Trademark Office’s argument.  In rendering its decision, the Court focused on the traditional test for determining whether a term is generic: whether the primary significance in the mind of consumers is a class of goods instead of a particular entity selling goods. Because the Trademark Office did not challenge the lower court’s findings regarding the primary meaning of the term, the Court affirmed the decision that Booking.com could be registered.

Both J. Breyer (in dissent) and J. Sotomayor (concurring) raised concerns regarding the use of survey evidence when litigating whether a trademark is generic or distinctive. Such survey evidence has traditionally been considered the “gold standard” but courts and litigants have relied less upon survey evidence in recent years. The further evolution of surveys in trademark cases, is something that should be carefully watched by both attorneys and those holding trademark portfolios.

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Supreme Court Rules that “Willful” Trademark Infringement is Not Necessary for an Award of Profits in Infringement Cases

By: Robin Gentry

Lilenfeld PC

On April 23, 2020, the Supreme Court issued a ruling in Romag Fasteners, Inc, v. Fossil, Inc. that should make it easier for trademark owners to be awarded the defendant’s profits when someone infringes their mark. The Supreme Court took the case because some, but not all, appeals, or circuit courts, required that a trademark owner prove “willful” infringement before the Court would award profits. The Eleventh Circuit, which hears cases from Georgia courts, and the Second Circuit, which hears cases from New York, were two of the Circuits that required “willful infringement.” Willful infringement is hard to prove and is usually reserved for cases involving only the most premediated and calculated of defendants, or those that refused to stop infringement after being warned to do so. This meant that trademark owners could often stop the infringement but could not get a damages award.

In its Romag Fasteners decision, the Supreme Court ruled that a finding of willful infringement was not a necessary precondition for awarding a defendant’s profits. The Court focused on the text of the Trademark Act (called the Lanham Act).  The Court noted that the statutory language had “never required a showing of willfulness to win a defendant’s profits” for trademark infringement. In contrast, the Lanham Act explicitly required that a defendant’s infringement be willful to receive profits in a dilution case. According to the Supreme Court this meant that if Congress had intended to limit damages to cases of willful trademark infringement, it would have included specific language in the statute.

The Supreme Court rejected Fossil’s argument that the phrase “principles of equity” in the statute required that profits only be awarded in cases of willful infringement.  The Supreme Court examined the history of the statute and the general meaning of principles of equity and concluded that “it seem a little unlikely Congress meant ‘principles of equity’ to direct us to a narrow rule about a profits remedy within trademark law.” The Court also noted that while some courts had historically required willfulness for a profits award, the majority of cases did not.

Despite holding that a finding of willfulness was not required to award a trademark owner the defendant’s profits, the Court noted that it did “not doubt that a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate.” But, it refused to make that willfulness an “inflexible” requirement.

So, it is likely that a trademark owner will be more likely to receive a defendant’s profits if it can show willfulness. But in cases where it cannot, the trademark owner can make other arguments for why it should be awarded profits. We expect to see more awards of profits after this case and will watch to see how the law continues to develop.

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NCAA Board Recommends Allowing Student Athletes to Monetize their Name, Image or Likeness

By: Robin Gentry

Lilenfeld PC

The NCAA Board of Governors has not been idle while we await the restart of college athletics following the COVID-19 suspension of play. In late April, the Board announced that it would support rule changes to allow student athletes to make endorsement deals to take effect at the start of the 2021-22 academic year.

The Board noted specific “growth opportunities” for student athletes which include social media influencer opportunities and digital content creation, including videos, live stream of video games and podcasts. If the rules change based on the Board’s recommendations, student athletes would be allowed to make deals as social media influencers, appear in commercials and hold paid autograph sessions. The Board also recommended certain limitations, such as a prohibition against using school logos and referencing the student’s team/school affiliation.

Social media deals, commercials, blogs and other activities that student athletes may soon be able to monetize all raise intellectual property issues, including copyright and possibly the need to trademark the student’s logo. Plus, any endorsement deals should be memorialized in a written contract to ensure that the student athlete is protected.

As we look forward to cheering on our favorite college teams again, we will be watching to see if the NCAA adopts new rules.

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Georgia Production Best Practices To Reduce Contagion of COVID-19

By: Kennington Groff

Lilenfeld PC

With production beginning again around the State of Georgia, new practices are in place to reduce the contagion of COVID-19. The Georgia Film Office is encouraging all film and television companies to establish a game plan to support the health and safety of cast and crew as production resumes. Before production commences, all personnel and vendors should become familiar with strategic measures to maintain a healthy and clean set.

The Georgia Film Office recommends the below preventive measures to be taken throughout production offices, workspaces and filming locations:

  1. Frequent handwashing and the availability of hydroalcoholic gels;
  2. Disposable face masks need to be disposed of in a closed bin;
  3. Avoid sharing items like mobile phones, work tools, computers, pens, etc.;
  4. Use digital call sheets, contracts and production reports instead of printed copies;
  5. Avoid actions that encourage physical contact such as handshakes, hugs or kisses; and
  6. Use individual and private transportation when possible, but if public or shared transportation is used, then masks should be worn by everyone and social distancing should be maintained as much as possible.

In addition to the above recommendations, the Georgia Film Office also has specific guidelines for production offices, locations, shooting locations, casting, talent, background actors, catering, craft services, transportation, wardrobe department, art department, grip department, hair and make-up, camera department, sound department, on-set communications and the organization of the shooting spaces. The Office even recommends having an Occupational Risk Prevention specialist on set that ensures all protocols and actions are complied with.

Guilds, unions, production companies and studios may have their own regulations for filming as well, but make sure to consult with your local production attorney to ensure you are following any mandates specific to your filming area.

To learn more about our Entertainment Law services, please contact Kennington Groff at (404) 201-2520 or kg@lilenfeld.com.

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Coronavirus (COVID-19) Could Make Alternative Fee Arrangements the New Norm for Georgia Legal Community

By: Robin Gentry

Lilenfeld PC

Many individuals, small to medium sized companies and large corporations needing legal advice are now faced with a new dilemma due to this public health crisis known as Coronavirus (COVID-19): how do I ensure necessary legal services at an affordable price?

Fearing large legal costs, many people and companies that would benefit from an experienced lawyer’s advice, might choose not to bother during this time for fear that costs will be extravagant. This can lead to an even greater loss to the client based on infringement of their intellectual property rights, breaches of contract and the need to renegotiate existing contracts.

Fortunately, consumers are not locked into the traditional hourly fee billing model that so many people think of when viewing legal services. Instead, there are several alternative fee arrangements available.

Here are some alternative fee arrangements that are available:

1. Flat fee arrangements: When using a flat fee, lawyers offer various services at set, or “flat” rates. For example, do you need to register a trademark? A lawyer can charge a fixed rate for that application, no matter how long it takes the attorney to prepare it. Do you need to license your copyrighted artistic design? That can also be done for a flat rate. This type of alternative billing arrangement works best for services a firm is experienced providing. The firm’s expertise allows them to provide clients a low-cost option while still ensuring a quality work product.

2. Contingency fee arrangements: A contingency fee is an alternative to the traditional hourly billing model. When reviewing your case, an experienced attorney is likely to recognize the strength of the case and willing to gamble his time in order for a percentage of the case outcome. While this is often very attractive to clients, the downside is that the lawyer’s percentage is often significant and clients are often left with less than they expect. So how can the client and lawyer both win with a contingency?

3. Hybrid contingency arrangements: In hybrid, or partial, contingency fee arrangements, the client pays the lawyer on a monthly basis for the hours the firm works just like in the traditional model, but the lawyer’s normally hourly rate is reduced. Then, if the litigation is successful, the lawyer receives an additional sum (usually a percentage of the award, but at a lesser percentage than in a full contingency).

4. Fee caps: This is a variation of the flat fee arrangement that allows the lawyer to bill at her normal rate until they reach an agreed maximum amount or cap. Once the cap is reached, the attorney continues to work the case, but does not bill the client.

5. Retainers: Retainers are a fixed, monthly payment to the attorney who then performs the services you need that month. This is a great arrangement for a company that does not want to have an attorney as an employee but wants to make sure that a trusted attorney is available while knowing the cost up front.

If you have any questions about alternative fee arrangements, please contact David Lilenfeld at David@lilenfeld.com or (404) 201-2520.

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How Coronavirus (COVID-19) Impacts Force Majeure Clauses in Georgia Contracts

By: Kennington Groff

Lilenfeld PC

Globally, businesses are experiencing massive productivity issues due to Coronavirus (COVID-19) pandemic. Employees are working-from-home, self-quarantining and social distancing to prevent risk of exposure.

In addition to employee unavailability, manufacturing facilities are shut down or some have even converted their facilities to manufacturing different products in order to support the growing demand for certain products such as ventilators and face masks. Most of this is government mandated or strongly urged as steps to slow the spread of Coronavirus (COVID-19) pandemic.

Other issues arising in this context are does force majeure excuse a Company from paying employees severance if the Company was unable to maintain them on payroll due to the Coronavirus (COVID-19) pandemic?

In light of this, many companies are forced to seek relief from their contractual obligations, looking specifically at invoking a force majeure provision to excuse performance temporarily or even permanently. This article reviews force majeure law, focusing particularly on the State of Georgia. We also discuss the options available aside of force majeure.

Georgia Force Majeure Clauses

A force majeure clause is a contractual clause which excuses one or both parties to the contract from performing obligations if and when something occurs that is beyond their control and makes performance of those obligations impractical or impossible.

Events triggering a force majeure are often listed in the contract and frequently include the following:

1. acts of God, such as natural disasters including floods, fires, tornados, earthquakes, hurricanes, and other weather disturbances;

2. war, acts of warfare, terrorism, threats of terrorism and disease or medical epidemics and outbreaks;

3. strikes, civil disorder, labor disputes and disruptions; and

4. acts of government authorities such as the taking of one’s property, also known as eminent domain, censure, and changes in laws and governance; and

5. some accidents or mishaps. However, normally economic hardships on their own do not qualify as a force majeure circumstance.

The specific language in a contract will determine if a force majeure provision can be invoked. However, this requires a fact intensive analysis and force majeure clauses are narrowly interpreted.

Specifically, the provision is interpreted in light of its original purpose meaning that they are viewed with items of the same nature, such as the items mentioned throughout the contract. It limits damages where the obligations to perform have been frustrated and made impossible or impractical.

Georgia Law: Coronavirus (Covid-19)

Under Georgia law, two provisions stand out for those seeking to excuse performance due to the coronavirus under a commercial contract in the absence of words such as “epidemic,” “pandemic” or other similar variations: (1) the “act of God” clause in contracts and (2) the “act of God” defense to contractual breach (O.C.G.A. § 13-4-21). While the words “pandemic” and “epidemic” are not normally specified in contracts, “acts of God” and force majeure provisions usually make their way in as a means of contractual relief.

“Act of God” in Contract:

Frequently in contracts, the “act of God” provision is included in the force majeure clause and lays out when a party may cease its obligations to perform. Without the addition of words like “pandemic” and “epidemic,” the “act of God” provision might be your saving grace. However, don’t get too excited as Georgia case law is silent on whether something like the coronavirus counts as an “act of God.” Further, some “act of God” clauses limit even what qualifies as an actual “act of God.”

Even though Georgia case law is currently silent on this topic, as these cases start making their way through the courts, we are likely to see varying judicial outcomes and verdicts. Specifically, Georgia case law outlines an “act of God” as one that is not human caused and not reasonably predictable or avoidable. As the facts of this pandemic come to light, this test will be argued in many different ways. Moreover, the California Department of Public Health has stated that the source of the virus is not yet known.

Ultimately, the contract itself will first guide parties and courts regarding obligations to perform, but it is still unknown how these exact terms might be interpreted due to COVID-19.

“Act of God” Defense:

A contract does not have to include a force majeure clause in order to invoke the “act of God” defense.

O.C.G.A. § 13-4-21 of the Georgia Code states that “[i]f performance of the terms of a contract becomes impossible as a result of an act of God, such impossibility shall excuse nonperformance, except where, by proper prudence, such impossibility might have been avoided by the promisor” Additionally, O.C.G.A. § 1-3-3 defines “act of God” as “an accident produced by physical causes which are irresistible or inevitable, such as lightning, storms, perils of the sea, earthquakes, inundations, sudden death, or illness. This expression excludes all idea of human agency.” The real question due to this public health crisis will be how the words “irresistible or inevitable” and “excludes all idea of human agency” will be interpreted.

One item to note though is that the “act of God” defense requires the obligation to perform to be “impossible.”

Georgia Law: Recession

In 2008, the economic downturn that occurred and the consequential events that followed did not invoke the force majeure clause allowing Defendants’ to modify or cease their obligations under the Alliance Agreement. In the case of Elavon, Inc. v. Wachovia Bank, Nat. Ass’n, the court found no external force majeure thwarting Wachovia from performing its obligations under the Alliance Agreement. (841 F. Supp. 2d 1298, 1307–08 (N.D. Ga. 2011)). Even though the economic pitfalls facing the banking industry back in 2008 might have been beyond the reasonable control of Wachovia, Wachovia did have control over the decision to extend the Wells Fargo-First Data contract.

Other Options if No Force Majeure Clause or Unable to Utilize:

If you are unable to employ a force majeure provision to modify or cease your performance during this coronavirus pandemic or your contract does not contain one, there are other options that may be available to limit or excuse your performance.

If you don’t have a force majeure provision in your contracts, even if you do, you should not wait until this pandemic is behind us to state that the public health crisis prevented you from fulfilling your obligations of the contract. Even in the event of this crisis, if you do not make a timely claim, you might be waiving any relief you could have under the contract.

In common law, there are two doctrines known as the doctrine of impossibility and frustration of purpose. These are used in exceptional circumstances, which we are likely experiencing. The purpose of these doctrines is to provide relief when an event triggers a contract impossible to perform for reasons beyond the parties control. Typically when this occurs, the obligations under the contract are excused and not just extended. While not a perfect remedy, these doctrines can provide some sort of relief in the event your contract does not contain a Force Majeure provision.

Since many governments of numerous countries, with the United States being no exception as a national state of emergency has been declared, have enforced strict lockdowns, businesses should be arguing that their failure to perform their obligations in the contract have been made impossible/ impractical. To name a few states, California, Illinois and Washington governors have all ordered the closing of bars and restaurants, and some mayors of specific cities like Los Angeles and New York City have ordered the same thing in order to try and halt the spread of COVID-19. Some states have even issued “shelter in place” orders. These are all factors that reinforce the impossibility/impracticability defense.

Further, the frustration of purpose defense can be used when it doesn’t make sense anymore for the obligations of the contract to be followed. Stated differently, this occurs when the circumstances have changed making the obligations under the contract not even worth it for the other party. Even with the coronavirus though, businesses should be mindful that items like an increase in performance costs and other economic hardships typically are not enough to argue a defense of frustration of purpose.

Conclusion:

At this time, the coronavirus is having a significant impact on businesses and their abilities to fulfill their contractual obligations. However, businesses requirements to perform under their contracts will have to be evaluated on a case-by-case basis due to the fact intensive analysis to determine if the force majeure provision applies or if an impossibility/impracticability or a frustration of purpose defense can be invoked. Contracting parties will have to review their specific language first and then applicable law in order to determine if their obligations can be modified or ceased.

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Protecting Intellectual Property with Employees Working from Home

By: Kennington Groff

Lilenfeld PC

How to Ensure Your IP Remains Safe

Offices, cubicles and community spaces are shifting to dining rooms, kitchen tables, bedrooms and home offices. Due to the severity of the Coronavirus (COVID-19) pandemic many of our clients have employees working, for the first time, from home, which has our Clients asking how to ensure their intellectual property remains safe.

Typically, employees must possess at least some of their employer’s intellectual property in order to perform their job duties, for example, pricing lists, vendor information and access to your CRM. This intellectual property might also include other trade secrets (formulas, R&D materials, financial information) and material protected by copyright, such as software, source code, manuals and publications.

Limit Intellectual Property Theft or Loss

Here is what you should do to limit the risk of the theft or unintentional loss of your intellectual property.

1. Partition your digital information – for example, if a particular employee does not need access to your CRM, set permissions so he/she cannot access it.

2. If you don’t already have one, employees should sign non-disclosure agreements.

3. Upon return to normalcy, employees should sign a “Return to Work Policy” that they do not have any non-disclosed copies of any of the company’s information.

4. Consider adopting a “work from home policy” which would include measures for protecting the company information.

5. Instruct employees to use a secure connection/ VPN, use strong passwords and have phone calls discussing sensitive information in private.

6. Remind employees in writing that your company’s intellectual property belongs exclusively to your company, no different than the company’s furniture, computers and other equipment.

7. Remind employees in writing that they may not share any company information with anyone outside the company without your permission.

8. Make sure to provide your employees with instructions and guidance in order to preserve and safeguard sensitive information such as maintaining a secure connection/ VPN, reinforcing strong passwords and having phone calls discussing sensitive information and topics in private if possible.

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Trademark Registration in 2020: What’s New?

By: Connor Edwards
Lilenfeld PC

The United States Patent and Trademark Office (USPTO) has made several changes to the trademark application requirements in the United States. This article discusses three need to know changes that are currently in effect.

Even though these changes have been in effect for some time now, many people are still unfamiliar with the changes, or are unaware that they even exist. Because the changes are critical to the success of a trademark application, it is important to understand each of the changes. The first two changes are relatively minor, but the third change requires a few additional items to consider and steps to take when completing your application.

The first change requires that all registrants must make an account on MyUSPTO.gov, which Lilenfeld PC has and maintains. In addition to this account, the user is required to login and provide proof of identity to file any trademark documents at the USPTO. In doing so the USPTO is able to keep registrants more accountable for their filings.

The second change only affects applicants, registrants, or parties to trademark proceedings who are not located within the United States. A person or an entity that fits this demographic is required to be represented by a US licensed attorney. The reason for this change is to ensure that the procedures and rules of the USPTO are more closely followed.

The third change and certainly the biggest change surrounds the specimen portion of a trademark registration. For those who might be unaware, in order to file a trademark, you must submit a specimen. A specimen is essentially a sample of your trademark being used in commerce. People used to be able to provide specimens very easily, and this allowed for many people to file using fake specimens. This new rule is intended to prevent these fraudulent specimens by having two big requirements. The first requirement is that a specimen that is a screenshot of a website, where the mark is being used in commerce, must contain the URL of the webpage as well as the date the screenshot was taken. The second new requirement states that product packaging specimens must also include an image or description of the product, either on the package or in addition to the packaging itself.

The reasons for the changes can be boiled down into two categories: (1) abuse of the system and (2) a lack of education around the rules and procedures of the USPTO. The USPTO perceived that many registrants, both foreign and domestic, seemed to be cutting corners and filing fraudulent trademarks.  The additional requirements are here to help crack down on fraudulent filings and maintain the integrity of the trademark registrar.

Contact us if you have any questions about applying to register your trademark.

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The 7 Contracts Needed For Your Short and Low Budget Films

By: Kennington Groff
Lilenfeld PC

So you’ve spent weeks, months, or even years writing the perfect script or combing through dozens of scripts to find the one that aligns with a story you have to tell. Now you are ready to turn that work into your new project. What do you do first?

Hire an entertainment attorney! Every project needs to be protected no matter how small or large the budget.

Creating a film is no small task. An entertainment attorney can assist you to ensure your project runs smoothly by helping you avoid the threat of a lawsuit or removal of certain footage later on down the road when potential conflicts may arise with contracts that were not in place (or poorly drafted), rights that were not obtained, and releases that were not signed.

Below are 7 contracts that at a minimum all short and low budget films should have in place:

  1. Location agreement: Gives you permission to enter a property and film there.
  2. Talent Agreement: Gives you permission to use someone’s image/ voice in your film.
  3. Crew Agreement: An employment contract outlining the work to be performed and rights (if any) to the film.
  4. Confidentiality & Non-disclosure Agreement: For use when discussing your film or script with third parties.
  5. Materials Release: For the intellectual property that might be used in the work, i.e. photos, artwork, audio/visual clips.
  6. Appearance Release: When a person is appearing in your film, specifically for privacy issues.
  7. Area Release: Notifies people and businesses that you are filming in their area.

To learn more about our Entertainment Law services, including our short/low budget film contract package, please contact Kennington Groff at (404) 201-2520 or kg@lilenfeld.com.

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