Can I Use A Public Domain Picture Of A Celebrity On My Website?

Celebrity Endorsing A lot of people on the internet are starting to become familiar with copyright laws.

They know, for example, that you are not supposed to save and use a picture from someone else’s website.

Sure, theft of images online is pretty rampant. But honest business owners avoid copyright claims by writing their own web copy and blogs, and buying licenses from stock phone companies.

Or they use images listed on Google or the public commons wiki with permissive use licenses.

Using images with commons license can save you a little bit of money. But you want to make sure you read the license grant and know what you are allowed to do with the image. Sometimes they exclude commercial uses (and if you are in business, you are a commercial use).

Copyrights, though, are not the only issues that arise when you put pictures on your website (or any digital or print products).

Advertising laws, for example, can be triggered. Does your image imply a promise of something that is not true?

People in the health, nutrition, financial and self-improvement areas are prone to fall into that trap. For example, if you are selling a vitamin and imply that someone will lose a ton of weight by a picture you include, without a claim being substantiated, you may find the FTC knocking on your door.

Same story if you are implying from a photo that people will make certain incomes from your product or service. Don’t promise incomes or cures for cancer, even by implication!

Just ask Kevin Trudeau. He’s in a Federal prison now….

If you use a celebrity’s image, they also have a property right in their “celebrity,” which they sell when they endorse a product. Using their image in a commercial setting, even with a disclaimer, could get you sued for big, big bucks.

Sometimes it is fair to use a public celebrity image, though. Do you know how to tell the difference between fair use and stealing their rights to their publicity?

Watch our video if you want to learn more about when a celebrity image is permissible and when it raises red flags.

Video Transcription:

Say you found a public domain picture of a celebrity on Google Images. Can you put their picture on your website?

If you are a news website and using their picture to discuss something newsworthy about them, then sure.

If you are a parody website and using their picture as part of a parody, then go ahead.

But if you are selling a product or service of any kind and thought their picture would help sell it, then no way.

You cannot imply in any way that a celebrity approves, uses or endorses your product without their express permission.

A disclaimer will not be enough.

This would qualify as false advertising and violates advertising laws. Plus you would be risking a lawsuit from the celebrity.

Having a license to their image may avoid a copyright suit, but it will not avoid these other problems.

Do you know where your legal land mines are? To find out, call us for a Business Risk Review at 800-449-8992 or email us at [email protected].

Failing to Police Your Trademark Online: A Cautionary Tale

Police line do not cross

Trademark holders have to police their trademarks to keep them.

In mid-2015, the Academy of Motion Picture Arts and Sciences (AMPAS) brought to trial a lawsuit against GoDaddy.com to stopped its “parked pages” program. I blogged previously about this lawsuit and what it means for business owners.

Before this lawsuit, there was no legal findings about whether or not parked pages were even legal. The verdict in GoDaddy’s favor changes that and has important implications for trademark holders nationwide.

The GoDaddy verdict is a stark reminder to all trademark holders that not diligently policing your mark online could cost you thousands. Worse, if you fail to police your mark, you may lose your rights to protect it altogether.

Parked pages usually occur when valuable domains are bought and then “parked” with ads to obtain revenue while the domain waits to be sold. This is abused by cybersquatters who buy domains with names similar to the trademarked names of a business before the business can buy it.

For example, as of this writing, coke.co is a parked page whereas coke.com goes to coca-cola’s website. The individuals who do run these pages create them on the hopes that web surfers will accidentally go to one of these pages and click on an advertisement. Or, they hope that the trademark holder will buy the domain name for a handsome mark-up.

When a page is parked, the domain registar and host (a company like GoDaddy) gets a portion of the advertisement revenue.

In its lawsuit, AMPAS argued that there were 56 Oscar-related domain names at issue. These domain names include the domains 2011Oscars.com, Oscar4re.com and Oscarcam.com. AMPAS also estimated that GoDaddy.com generated revenues of at least 8 million dollars from internet goers clicking on advertising links associated with these domains.

It is important to note that AMPAS did not contend that GoDaddy owned any of the domains mentioned in its lawsuit. Instead, AMPAS argued that the trademark violators were aided and abetted by GoDaddy who profited from the parked pages. AMPAS complained that GoDaddy allowed infringers to purchase the domain names and failed to police the sites to ensure legal compliance.

The judge didn’t agree. He decided that there was not enough evidence that GoDaddy intended to traffic in trademark violations in its parked pages. In other words, the judge decided that GoDaddy did not deliberately violate AMPAS’s trademarks.

GoDaddy really scored big when the court went a step further. The judge said that GoDaddy also provided enough evidence to prove that the domain was use fairly or otherwise lawfully, which is a defense to trademark claims.

GoDaddy proved this by showing that each time AMPAS sent a complaint to GoDaddy, it took the parked page down, usually within hours.

Domain purchasers also swear to legal compliance with trademark laws as part of their purchase of a GoDaddy automated domain registration. So the court decided that the blame lays on the trademark infringers, and not on GoDaddy.

The court said that all trademark holders must diligently police their own trademarks.

“[AMPAS] confuses GoDaddy’s technical capacity to filter for trademarks with AMPAS’s legal duty to police its own trademarks. At its core, AMPAS’s [] claim would impose upon GoDaddy (and presumably any other company offering parking, hosting, or other basic internet services) the unprecedented duty to act as the internet’s trademark police. The [law] did not impose such sweeping obligations.”

This lawsuit has an important lesson for trademark holders. Trademark holders who believer that their trademarks are being infringed have limited options. They may complain to the domain holder. They may register the page with an organization that seeks to block parked pages. They may try to purchase all domain names that are similar to their trademark before cybersquatters do. Or, they can try suing the domain owner for trademark violations.

The most important lesson is that the trademark holder has the responsibility to monitor their trademark at all times. Not ensuring that others are misusing your mark can cost you millions! It is a daily requirement of any trademark holder. Failure to do so may cost you rights to your own trademark.

How do you police and protect your trademarks?

  • Monitor the internet for use of your trademark or similar words and domains
  • Monitor press sources
  • Monitor public records for infringing filings in any of the state or local governments (not just the USPTO)
  • Monitor domain registrars
  • Monitor search traffic patterns for your domain and similar words, phrases or domains
  • Send cease and desist letters to any potential infringers, and follow up with legal action

If you want to learn more about trademarks, attend one of our webinars for entrepreneurs. Sign up for our next webinar at http://trademarkswebinar.com.

Licensing Agreements

LICENSING AGREEMENTS

Intellectual property (IP) can be just as valuable, if not more valuable, than tangible assets like land and equipment.  Whether it’s a patent, trademark, trade secret, copyrighted material, or other proprietary information, IP is the driving force that gives your business an edge over your competition.  

While businesses must take careful steps to protect themselves from financial harm resulting from the unauthorized usage of IP, there can also be benefits to licensing intellectual property rights to other entities or individuals, such as creating strategic business alliances or freeing up room for greater innovation and flexibility.  In cases where a sale or transfer is unfavorable to the owner, licensing IP can be a suitable alternative, allowing the owner to retain the title.

To discuss your business’ intellectual property needs in a private consultation, call the licensing attorneys of Bellatrix PC at (800) 449-8992  We have years of experience providing LLCs, partnerships, corporations, and non-profit organizations with cost-effective legal solutions, and have obtained favorable outcomes for numerous clients faced with a broad spectrum of intellectual property lawsuits and licensing agreement disputes.

Intellectual Property Lawyers Serving Your Business

If you’re considering licensing your company’s intellectual property, the preparation of a well-drafted licensing agreement is essential to ensuring that your IP will not be used to the detriment of your business.  The intellectual property lawyers of Bellatrix PC have the legal knowledge and business acumen to assist in the drafting and negotiation of customized licensing agreements across a wide array of industries and business, including but not limited to:

  • Arts and Entertainment
  • Beauty and Cosmetics
  • Biotechnology
  • Chemical Engineering
  • Computer Science
  • Digital Media
  • E-Commerce
  • Electronics
  • Fashion and Apparel
  • Food and Beverage
  • Mechanical Engineering
  • Medical and Pharmaceutical
  • Video Games and Computer Games

Our attorneys are prepared to assist businesses with IP matters such as:

  • Determining the ownership of rights and reviewing chain-of-title matters.
  • Litigation, mediation, or arbitration related to copyright infringement, breach of contract, or other disputes.
  • Handling patent searches.
  • Consulting on trademark and copyright law.
  • Drafting, negotiating, and enforcing the provisions of your licensing agreement.
  • Performing due diligence.
  • Consulting on marketing, advertising, and franchising.
  • Handling disputes related to unfair competition and unfair business practices.
  • Determining which parties assume product liability in the event of death or personal injury, and to what extent.

mergers and acquisitions business contract

What Elements Should Be Included in a Licensing Agreement?

Contracts of all types should be written as concisely and succinctly as possible.  However, due to the complex legal issues which are involved, licensing agreements can become dense with jargon and other obstacles to clear interpretation.  

Whether you are considering another company’s proposed licensing agreement, or are preparing to draft your own, close review by an experienced licensing attorney is essential.  The attorneys of Bellatrix PC will review your agreement clause by clause to identify and revise vulnerable points, while advising you with regard to your options and their potential outcomes.  By making your legal intentions clear today, you can reduce the risk of conflict and litigation tomorrow.  

Generic or template agreements should be avoided, which means the exact provisions of licensing agreements will inevitably vary from company to company.  However, there are some basic points which should be clarified in all licensing agreements.  No matter what sort of service your company provides, or what the relevant IP entails, your agreement should include the following components:

  • Clear identification of the parties involved in the agreement.
  • Recitals providing context for the agreement (e.g. whether the agreement resulted from a settlement).
  • A definition clause which supplies clear descriptions of each term being used in the agreement (e.g. “licensed patent”).
  • The compensation which will be provided by the licensee to the licensor, including matters like tax liability and payment schedule.
  • The obligations of each party under the terms of the agreement, including both positive and negative obligations.
  • A termination clause which provides an exit strategy by clearly addressing the circumstances under which the agreement may be terminated, and the consequences of such termination.
  • Means of conflict resolution should a dispute arise in the future, such as allegations of copyright infringement.
  • A grant clause determining whether the grant will be exclusive or non-exclusive.
  • A clause setting forth which, if any, changes or improvements may be made upon the original IP.
  • A clause addressing product liability in the event of a client or consumer’s death or injury.
  • A clause addressing whether the licensee has permission to sublicense the IP to additional parties, and if so, the extent of the restrictions upon such parties.
  • A due diligence clause addressing matters such as competing products or milestones which are expected to be met.

If your business is considering accepting or proposing a licensing agreement, don’t sign away the rights to your intellectual property until the terms of the contract have been examined by an experienced business attorney.  To arrange for a confidential legal consultation, call the law offices of Bellatrix PC at (800) 449-8992 today.

Are Unregistered Domains A Violation of Trademarks?

Young lady laying on the floor using a black laptopThis could be the end of GoDaddy.

Five years ago, the Academy of Motion Picture Arts and Sciences (AMPAS) filed suit against GoDaddy.com.

GoDaddy allows customers to buy domains and “park” them.  Parking them means that the domain points to a web page that has advertisements on them from Google.

When clicked, the owner of the web page gets a portion of that ad revenue. When the page is parked using GoDaddy, both the owner of the page and GoDaddy split the ad revenue.

AMPAS owns The Oscars. It’s website is registered to the domain oscars.com. But someone else registered “theoscars.com” and was holding it ransom. This is sometimes called cyber-squatting; but it is legal in most cases.

Usually, in this situation, someone in AMPAS’s shoes would pay tens of thousands of dollars to recover “theoscars.com” from the registered owner. Or, they would ignore it.

Unfortunately for AMPAS, they are suffering from 56 Oscar-related parked domains. These domains include 2011Oscars.com, Oscar4re.com and Oscarcam.com.

So AMPAS sued GoDaddy. AMPAS claimed that GoDaddy pocketed roughly $90 million in revenue just from their parked pages directed at The Oscars alone. To put this in perspective, GoDaddy annually generates a revenue over $1 billion dollars. If AMPAS wins, that would be nearly 10% of GoDaddy’s annual revenue in damages. That’s a lot of ad clicks.

While this case may seem like it is the fighting of giants and unrelated to the rest of us, that is not so. The ruling could seriously impact millions of business owners. Here’s how:

  • You may now have recourse if you found out that someone was using a domain name that is similar to your trademarked name. Should you sue?
  • GoDaddy’s business would take a crippling hit, possibly scuppering it and the millions of websites it serves. At the very least, expect prices to go up.
  • GoDaddy and other domain registrars may become forced to police trademark violations by registrants, which means more work for all of us.
  • If you own trademarks, you may be required to put in claims on domains in order to keep your marks protected (and not considered “abandoned”).
  • The cyber-squatting industry may die. But more likely, it will continue overseas, outside the jurisdiction of the United States. This will make American companies like GoDaddy suffer, as it will put them at a competitive disadvantage.

Domain hijacking is a common problem that most business owners deal with. If you’ve registered a domain recently, you probably noticed spam that came a few days later trying to sell you similar domain names.

For example, our CEO is publishing a book on election law for third parties titled Just Pursuits. We put up a sales page at JustPursuits.com. About a week later, we were hit with a demand to pay thousands of dollars for “justpursuit.com” (the s is dropped off the end).

In more serious cases, someone will put up a malicious page to try and force you to buy the domain. This happens to celebrities and politicians a lot. For example, Carly Fiorina (former CEO of Hewlett Packard who is running for President) got this gem: CarlyFiorina.org. (Not only are different spellings a problems, the top-level domain suffix like .com, .net, and .org can create problems.)

By the way, only non-profits are supposed to register .org domains. But this is not policed, really.

Ms. Fiorina’s .org spoof page isn’t too bad. There are worse ones depicting pornography, foul language, or other scurrilous materials.

If you haven’t experienced this, try typing in your domain name with minor changes and see what comes up. Are there other sites out there with similar names to your own? If there are, this case means a great deal for you.


 

Given the impact this case will have on how it does business, GoDaddy has gone through trial in this case. A verdict is still pending.

GoDaddy has not played nice during the lawsuit, either. For example, GoDaddy accused AMPAS of rigging the court system to have U.S. District Judge Audrey Collins, whose daughter is a professional actress, oversee all of the GoDaddy cases. The Honorable Collins has made some decisions that were unfavorable to GoDaddy. GoDaddy got “bench slapped” for that one, but ultimately achieved a new judge assignment.

But both sides know what is at stake. AMPAS says that it seeks to establish cybersquatting as a “serious problem that should not be tolerated even if it is being perpetrated by a company that generates over a billion dollars in revenue….

For its part, GoDaddy says that the guns are aimed at the wrong target. “GoDaddy is not a cybersquatter. It is not a pirate,” its attorney said in opening statements at trial. And GoDaddy also tried to help AMPAS. Within three days after receiving AMPAS’s complaint about parked pages, GoDaddy redirected 37 domain names to no-ads templates. Given the current state of domain registration governance (something controlled by an international body), this may have been the best that GoDaddy could do for AMPAS.


 

While we await the verdict on this matter, it important to realize that it may have serious implications for us all. Currently, there is no solid law on what to do about cyber-squatters and parked pages. The legal system has simply not caught up with this issue.

There are dozens of conflicting interests at stake when it comes to domains and cybersquatting. This is an issue that impacts small and big business and even international relations.

Companies who feel their trademarks rights are being violated by parked domains have limited options, such as complaining to the domain holder, registering their page with an organization seeking to block parked pages or attempting to purchase all similar domain names so no one else may register them. Many businesses may find themselves playing a frustrating game of whack-a-mole.

We will update you with the verdict and its implications after it is reached and as the law on this evolves.

When Announcing an Award or Media Appearance Results In A Trademark Violation

we're in the news newspaperHave you ever received an award for your business or landed a great media mention? When that happens, a smart publicity strategy is to announce the award or media and put an “As Seen On” claim on your website.

But not so fast! Before you start pasting other company’s logos on your website, you better be sure that it isn’t a trademark or copyright violation. In other words, you need permission (a license) to do it.

Yes, a lot of people put these types of badges on their website. All that means is that a lot of people are potentially stealing copyrighted and trademarked images out of ignorance. The attitude that “everyone else is doing it” is a sure-fire way of getting yourself into hot water by stealing intellectual property unintentionally.

That being said, there are many times you can include another company’s logo or copyrighted work on your website, ads, or emails. Getting permission is oftentimes free and requires just a little bit of effort.

With smaller companies, the easiest way to get permission is to just ask. Some will ask you to purchase a license. Some will just say, “OK” and that will be it. Some will direct you to rules and digital downloads they have for their “assets.” Some companies have specific rules on how their assets are used and presented, and you should respect that. Their permission for your use depends on you sticking to their parameters.

Certain companies (and media in particular) will put their logos out for public use on a creative commons license, or on a restricted, royalty-free license for commercial use. So, for example, NBC’s logo is available by a creative commons license (meaning that it can be used broadly and it is registered with non-profits to make their rules easy to figure out).

Similarly, Facebook allows (and in fact encourages) you to use their logo, even for commercial purposes, under a very broad, royalty-free license. Facebook wants you to link people to your profiles using their badge so that you will drive people to their website.

Not only do big companies offer Creative Commons licenses for their works and logos, authors and the government may do this as well. You can sometimes even modify and expand upon the licensed work, depending on the permissions granted.

Two places you can check for Creative Commons licenses include Wikimedia.org and CreativeCommons.org. Both websites are private non-profits set up for this very purpose, and can be considered reputable.

Next, to some degree, use of images for parody (even in a commercial video) is considered protected free speech. Similarly, images and quoted or excerpted media for newsworthy sites may be protected “fair use” under the First Amendment. This can be a complicated area of law, so be sure to check with your lawyer if you are a media or entertainment site. All other businesses should generally just try to stay away from anything that is not expressly licensed.

Finally, you should have instructions somewhere in your Terms of Service for people to contact you with “take down” requests. This gives you a safe harbor time period to deal with any disputes before the claiming party can file a lawsuit.

If you ever have a question about a particular image, you should ask a lawyer. It’s better to be safe than sorry. We offer our clients entry into our Peace of Mind Plan — for a small, monthly fee, they can call us with all their legal questions and get the help they need.

An Entrepreneur’s Guide to Trademarks Part Six: Maintaining Your Trademarks

alligator eating fishHuzzah! You’ve received registration for your trademark! All is complete!

Well, not quite. There is some upkeep you need to be aware of to ensure that you maintain trademark registration. If you don’t, someone might snap it up and you’ll be unable to protect yourself.

What to do?

First, to maintain your trademark registration, you must file specific maintenance documents. Failure to do so will result in cancellation of the registration. The registration can also expire if you do not file a renewal. If you registration is voided in any way, you must file a brand new application and start all over. This is the only way you can try and revive protection for your trademark. Moreover, just because you received registration previously, does not mean that you will receive approval the second time.

Second, you want to make sure that you are checking your trademark registration every so often on the USPTO Search System (TSDR) to ensure that your mark has not lapsed. Sometimes notices get lost in the mail or email so it is always important to do a quarterly check on your intellectual property registrations to ensure that they are still adequately protected.

Third, and this is extremely important, you MUST update your correspondence address, owner address and email address with the USTPO immediately of any changes in this information. If both the ownership and correspondence address are to the same address, you must update both. The USPTO uses this information to send vital information about your registration and your rights. Failure to update this information is not an excuse you can use to save yourself from a cancelled or lapsed registration. Thus, keep all this information up to date to make sure that you are informed on your rights at all times.

Finally, it is up to you to protect your rights. A trademark is only good if you police it and not allow other people to infringe.

Think of trademarks as like a house. If you let other people squat in your house and you do not evict them, then they end up having rights to your house. If you let a squatter go long enough, they can claim ownership of your house!

Trademarks are the same. If someone infringes (even if you do not know about it) and it goes long enough, you lose your trademark protections. So you must monitor your mark!

Registration is not the end of the process. As the registration holder, it is up to you to ensure that no other parties are infringing on your rights by using similar or identical marks, counterfeiting your goods, etc. The USPTO is not involved in ensuring that your registration is not infringed upon, they merely ensure that you have met registration standards. This will mean that you must keep up to date with your market, search your mark on the internet, and keep a general eye on the lookout for anything that might harm your trademark.

Ultimately you are your own best brand ambassador.

As part of our Plus and Pro Trademark Packages, Bellatrix PC protects our clients with trademark monitoring, trademark enforcement, and keeping track of renewals. That’s one of our many ways we give our valued clients Peace of Mind .