The so-called “e-sign” law is a federal law that makes the signature on a contract valid if it is signed electronically, unless it is prohibited by agreement or by some State laws. Phil Green was the Chair of the California State Bar– Standing Committee on Cyberspace Law at the time the State of California was passing laws like the E-Sign law and was instrumental in integrating California law with Federal law.
We help our clients comply with privacy, contracts, and best legal practices. The "old days" are not gone however, and as simple as this concept seems today, proving an e-signature has not been easy, and it is still a challenge to prove there is an agreement made online. It is hard to show that a person clicking a box on her computer with a mouse on a screen image of an "OK" actually read and understood what the agreement is. Since e-Sign, the courts have come to accept that indeed clicking "OK or "I AGREE" or by checking "I have Read and Understood the Agreement," the customer has consented to those terms and conditions.
The law is 15 USC* § 7001. It says, “Notwithstanding any statute, regulation, or other rule of law (other than this title and title II [15 USCS §§ 7001 et seq. and 15 USCS § 7021]), with respect to any transaction in or affecting interstate or foreign commerce-- (1) a signature, contract, or other record relating to such transaction may not be denied legal effect, validity, or enforceability solely because it is in electronic form; and (2) a contract relating to such transaction may not be denied legal effect, validity, or enforceability solely because an electronic signature or electronic record was used in its formation….”
The reason for this was (in 2000 when it passed), that e-commerce was gaining in volume of sales over the ‘brick & mortar’ business and it was becoming clear that many agreements would need to be electronically signed. The issues were those of authentication, how do we know the person who “signed” in e-format is really the person who signed it? And confirmation, how do we know that the person signed knew what they signed and agreed to it?
As the law has progressed for over 13 years the courts have figured out ways to interpret it and best practices for e-commerce have evolved to make an e-signature a good as a pen-and-ink one.
*USC means United States Code.
Trademarks are words, symbols or devices used to distinguish the goods or services of one business from those of
others. Throughout this article the word "mark" us used to mean both Trademarks and Service Marks; the difference is the type of basic use, either for goods or services. What I state for marks generally applies to both.
THE LAW: § 45 (15 U.S.C.. § 1127).
The term “trademark” includes any word, name, symbol, or device, or any combination thereof--
(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
Service mark. The term “service mark” means any word, name, symbol, or device, or any combination thereof--
(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.
To understand the above we also need the following:
Titles, character names, and other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
The word “commerce” means all commerce which may lawfully be regulated by Congress.
The term “principal register” refers to the register provided for by sections 1051 to 1072 of this title, and the term “supplemental register” refers to the register provided for by sections 1091 to 1096 of this title.
Person, juristic person. The term “person” and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term “juristic person” includes a firm, corporation, union, association, or other organization
capable of suing and being sued in a court of law.The term “person” also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the
authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity. The term “person” also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this chapter in the same manner
and to the same extent as any non-governmental entity.
Trade name, commercial name. The terms “trade name” and “commercial name” mean any name used by a person to identify his or her business or vocation.
Enough definitions for now.
Trademarks are The Business: If your product or service has a name, that name is its Good Will. For example, if you seek investors for your business, the investors would want to know, in return for their funds, stock or other remuneration, that the mark is valid. It is the trademark this is the name that will sell your goods and services. Witness marks like KODAK®, Xerox®, Green & Green®. How would these sell if there was news that your products were not good? Or how would you get investors if the Mark was involved in claimants making claims against manufacturers, producers, distributors and others making and selling your products because the mark was not useable or was not secure? We help secure the Trademark with the owner, prosecute infringement actions against infringers, and protect it from such litigation or other disputes.
Is YOUR mark Infringed?
The basic standard of infringement is whether there is "likelihood of public confusion." Marks can be licensed, bought and sold for fees and/or licensed for royalties. They can serve as the basis for licensing a product. They create
distinctiveness, a mood, a theme or set a standard for excellence or a solid foundation for consistent advertising and "branding." Marks proclaim to the public the quality, Good Will, and nature of the goods and services behind the name and of the integrity of those behind the name.
On the internet Trademarks go and come fast and their use is international. On the other side of the world a person could attempt to register or use a mark owned by another and use it on the internet without permission. So that a person with a website bearing a Trademark in one part of the globe may have infringed the rights to a mark that originates far away. This presents questions of Jurisdiction (power of a Court to judge the case) that are complex and
expensive to work through.
What can a Trademark be?
A mark can be a color, or a distinctive sound. It can be a "sound alike," a face, a character, words, drawing (logo),
and many "trade dress" styles can be distinctive of a restaurant, or "package dress" as a way of packaging software, by way of examples. It can be a smell or label. A mark must not be descriptive or functional.
As is defined above, a Trademark needs to be USED in COMMERCE. In the USA, that is what is required. The first to use a mark is the first to own it. But how do you PROVE that you were the first user? If another uses your mark or if you want to use a mark, how do you know that it is OK? The answer is - REGISTER your Trademarks. That way a court will fully acknowledge your ownership. Registration shifts the burden to the claimant to prove the mark is not yours. This saves many hours of potentially expensive litigation costs, compared to the "proof" of first use, in commerce and ownership.
For a Trademark to get registered should be as fanciful as possible; witness: "Kodak®" that 100 years ago might be a misspelling for a bear (kodiak) and is famous for camera products; likewise, XEROX® for photo copiers. GREEN & GREEN ® for legal services. These marks do not describe the products. They are fanciful. A mark may fall within the spectrum of Fanciful (allowed) to Descriptive (not allowed) and be "Suggestive" of the goods or services. Registration in the USA (and most countries) is done by applying to the US Patent and Trademark Office (PTO). Only a governmental agency can register a mark officially in any country. Beware of trickster private companies that profess to register your mark.
Register your Marks if you Value them. To qualify as a registrable mark one must properly use it. A "Use in interstate or international commerce" and "commerce that can be regulated by Congress" is the key to U.S. rights.
Especially today where Domain Name rights and trademarks are interwoven, registration is imperative. Trademark rights in the U.S. have "some territorial effect" in the rest of the world, depending on registration in other countries and fame in use there. International use is Internet use. Instantly. Other uses, the older methods, include putting the mark on the goods, on packages or labels for the goods, a point of sale device, in advertising, and a few other methods.
NOTE that mere registration of a Domain Name (URL) is NOT a "use" in commerce of the words in the URL. It is a right to use an address that will direct a user to a particular web site and no more. A URL can become a Mark if used in the technical sense.
Note that registration is NOT essential to establish rights (in the USA only) but failure to register may render useless any complaint if another gets a similar URL. IN that case, you will need the registration to prove ownership to WIPO and to cut the cost of your proof in Court.
Registration is usually on the Principal Register, for marks that qualify, that are "fanciful" and getting real "use." A mere posting of the mark on a site for purposes of "branding" without a real service performed is not good enough. Place an "SM" (for services) or "TM" for goods near the mark until it is registered. There is a "supplemental register" for marks that may be deemed "suggestive" and may not qualify for the principal register.
Registration is essential to secure a mark and notify the world of the Registrant's exclusive rights to the use thereof and to quickly establish a prima facie exclusive, nationwide and world-wide right to use, sell, license, assign or buy,
settle, mediate and litigate a mark used in international and/or interstate commerce.
What are the benefits of registration?
1. In Federal court, one can ask for Customs seizures of goods bearing infringing marks, damages based on the infringer's profit, injunctions and the owner can press criminal charges.
2. A registered mark may be registered with the Treasury Department to prevent importation of goods bearing an infringing mark.
3. It is impractical to have a great mark if the owner cannot move quickly to stop an infringer. Therefore the need for federal registration is great, for without it, one may only have a "colorable" right in the mark and spend thousands more, wasting time, and have to go through an expensive and time-consuming proof of FIRST use and other proof of facts behind it.
4. Federal registration is absolutely necessary in any program to protect the rights of a trademark owner, both defensively and offensively. Without it, a claim against another person for using your mark in another country will come to deaf ears. a WIPO arbitration will not likely fly at all.
5. A registration, has "registration priority" so that a later comer to the PTO may find his attempt to register your mark blocked and made more difficult.
REGISTRATION MUST BE MAINTAINED and we do the maintenance for our clients. If a mark registration is not maintained it can be Cancelled by the PTO.
CAUTION> 5th to 6th year: the owner MUST make a declaration of continued use in the 5th year – 6th with proof of use by sending in a specimen, or the registration is cancelled under Section 8.
CAUTION> 10th year after registration. Marks are renewable very 10 years (if not renewed they Expire on the Register).
Trademarks are Valuable:
Marks are "property" of a corporation, LLC or other business and need to be insured by registration against loss from such things as: infringement, dilution, importation of "bogus" goods, international piracy, "passing off" their identity as yours, and many other types of rip-off.
Marks can be Licensed – used by a contractually permissible user for a payment (royalty, flat or other) for a limited time and in limited territories.
Marks may be Assigned (sold) -- which is an outright transfer to another with no limits.
Marks can be Mortgaged, or used as collateral for a loan. Famously, Ford used its famous Trademark to avoid Federal bailout, and repaid the loan.
Stay tuned for other articles on the many aspects of Trademarks.
What about Paraphrasing?
We are frequently asked, "how much might I copy?" Paraphrasing is a matter of degree and whether or not en unlicensed use of another's work is a parody or other "fair use" defense may apply. Technically any copying and/or republishing of any copyrighted work is an infringement. If however a very insubstantial or de minimus amount of text is "taken" or if the rephrasing is to "comment" on the original work it could fall into the defense of Fair Use the topic of a concentrated article.
If you only take an idea from a book, film or other work it would be arguably not a "copy" but you would be using the idea to further expand. Don't forget - copyright protects against someone plagiarizing, not using ideas. The basic premise is not to prevent the expansion of use of ideas, for this would stifle creativity forever, but to prevent others from using the fruits on one's labor to profit. one court stated, "It is hardly an inducement to [an author] to do the years of research and scholarship needed to produce an authoritative text if an untrained writer may paraphrase major portions and make a competing text out of it"); Donald v. Zack Meyer's T.V. Sales & Serv., 426 F.2d 1027, 1030 (5th Cir.Ct. App. 1970) and again, "A resemblance in details of setting incident, or characterization that falls short of close paraphrase may be enough to establish substantial similarity and infringement." Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 488 (9th Cir. Ct. App. 1984).
Factual Works Differ:
Subsequent authors wishing to express an idea contained in a factual work such as a history, mathematical book, scientific text, and films of historical events like "Titanic" and "Amistad" often can choose from only a narrow range of expression. For example, Landsberg's work states that "[t]he poor player simply attempts to make as many points as possible each turn." The idea contained in that statement cannot be expressed in a wide variety of ways. Just about any subsequent expression of that idea is likely to appear to be a substantially similar paraphrase of the words with which Landsberg expressed the idea. Therefore, similarity of expression may have to amount to verbatim reproduction or very close paraphrasing before a factual work will be deemed infringed. The Amistad film raised a similar issue, whether the author of the book "Echo of Lions" could prove an infringement. The court stated that it was not an infringement because, "Copyright protection does not extend to historical or contemporary facts, material traceable to common sources or in public domains, and scenes a faire." (CHASE-RIBOUD vs. DREAMWORKS, INC 45
U.S.P.Q.2d 1259, (9th Cir. Ct. App. 1997).
The Duration of Copyright:
1. Copyright lasted until November 1998 for the life of the author plus 50 years. In order to more fully come into the modern e-world of long lasting copyrights in billions of dollars in intellectual property, the U.S. has now passed the "Sonny Bono Copyright Term Extension Act." (S. 505)
a. The Act extends the life of copyrights from life plus 50 years to life plus 70 years for works that were created on or after January 1, 1978, the effective date of the Present Copyright Act of 1976. 17 USC Sec. 302.
b. The life of copyrights for works created before January 1, 1978 is extended by 20 years from 47 to 67 years
beyond the original 1909 Act term of 56 years after publication. NOTE: This will soon be a topic of a detailed new article on the Duration of Copyright and other Modern Issues.
c. In software, since there is a USE for the copyright material (the function of the software as used by hardware) there are several layers of this problem; the equation includes these three parts of the expression of ideas in software. Thus, one must "fix" the PROCESS, METHOD and USEFUL elements in a tangible medium before copyright can be claimed. If the method of a work is useful, then the work might ALSO have a PATENT possible, the topic of a future article.
NOTES ON THE FUTURE:
Congress has passed the Digital Millennium Copyright Act, changing the negative effect of holdings of many cases that have held that copyrights can be enforced even for a brief, though useful "copy" of the operating system of a computer that resides in the RAM (random access memory) of another, but unauthorized, computer. See MAI vs. Peak. There is one consistent theme regarding copyrights and the digital world, Internet, and the coming networked age, and that is CHANGE. Weekly copyright laws are challenged by the changing and rapidly advancing and expanding universe of Internet users. Not only is policing more important than ever but registration upon completion of a work for use on the Internet is a must. Cases like MAI will be within an exemption to infringement of copyright since the act of copying an OS onto another computer for the legitimate licensor of the OS for the purposes of maintenance of the OS, is not an infringement under the definition of the DMCA. A new article will soon appear on this topic.
The quantity of copyright infringements is on the increase due in part to the "easy" technology available to all to publish and "lift" images, film, video, photographs, text sounds and other matter. NAPSTER almost destroyed the music industry. These are so many that they might not be as easy to detect. New "spiders" and "bots" are used to watch for a "watermarked" image files; the source for the image it finds may be a pirate has made an infringement. The complex world of infringement on the Internet is the subject for future articles. Stay Tuned!
Check out the US Government Official Copyright Office website: www.copyright.gov.
What Copyright DOES NOT Protect?
Copyright does not protect the idea itself, in fact, ideas are as "free as the wind." There is a "Common law copyright" in unfixed ideas, and this subsists in the expression of the ideas on "canvas." Once fixed in a tangible medium the protections and evidentiary effects of the Copyright Act applies in the USA.
What Copyright DOES Protect?
Copyright protects the original expression of the ideas. In copyright law there exists in logic the "IDEA-EXPRESSION DICHOTOMY", or THE ''PROCESS-EXPRESSION, METHOD-EXPRESSION, AND USEFUL-EXPRESSION distinctions.'' This seems esoteric but it is saying that since Copyright does NOT protect the idea, but only the "fixed" expression of the idea, when someone "copies" an idea, there is usually limited if any copyright protection for that "copying". If, however, one copies the expression as fixed in some tangible form, there can be infringement
liability because there is a "copyright" on the "fixed" original expression to copy. Whether or not liability may exist, the copyright owner cannot enforce it court unless it is registered.
"Whether or not liability may exist, the copyright owner cannot enforce it court unless it is registered."
For example if Doe tells a film Producer (the money behind a film) friend of his about his idea for a great film (assuming the Producer will listen). Later Doe watches a film that he swears was his idea. He needs to prove it was "his": a copy of the script or treatment for the screenplay he wrote, or a book he wrote containing these ideas or other form of tangible copyrightable matter to show that he indeed wrote it and to claim for royalties or an injunction. Doe also must register it or he cannot go to court to sue for the infringement. That is not the end of the story but an example of the dichotomy.
Copyright Holders Have The Right To:
1. TO REPRODUCE the copyrighted works exclusively.
2. TO PREPARE DERIVATIVE WORKS BASED UPON THE WORK (such as a translation or film adaptation of a game, etc.).
3. TO DISTRIBUTE THE WORK TO THE PUBLIC BY SALE OR OTHER TRANSFER OF OWNERSHIP, OR BY RENTAL, LEASE, OR LENDING (This was the right mainly violated by Napster and illegal downloads).
4. TO PERFORM THE COPYRIGHTED WORK PUBLICLY.
5. TO DISPLAY THE COPYRIGHTED WORK PUBLICLY
NEW: (as of 1995, the most recent time copyright law was significantly changed)<br><br>
6. IN THE CASE OF SOUND RECORDINGS, TO PERFORM THE COPYRIGHTED WORK PUBLICLY BY MEANS OF A DIGITAL AUDIO TRANSMISSION.
7.Other Rights above basic protections.
IMPORTANT: To protect these exclusive rights and to be able to enforce them, they MUST be registered with the Copyright Office of the Library of Congress.
Work in Which a Copyright can Subsist Under U.S. Law is Defined As:
"An original work of authorship fixed in a tangible medium of expression. (17 USC 101) This basic definition shows that copyrightable works can be based on any actual expression, but not the ideas behind the expression of them. It is a Right, not a copywrite, and there is no "copywritten", if you will, so please don't make the mistake of spelling ir thinking of it as "copywritten" or "copy write." Some copyrights have their own definitions, for example, "an “architectural work” is the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features." Now that we have a basic definition and have eliminated alternative homophonic spellings, let's dig a little deeper, shall we...
"The Copyright subsists (begins) upon the creation of the work. However, it 'vests' for legal purposes in a work in the U.S. when it is registered in the US Copyright Office..."
Copyrightable works also include ('now known') current formats, as well as those formats developed after the copyright was issued ('later developed'). The ability to Copyright begins upon the creation of the work. However, It vests for legal purposes in a work in the U.S. when it is registered in the US Copyright Office, IF the expression is "fixed" in a tangible medium, such as film, CDs, DVS, Memory Chips, books, and the like. One does not mail the work to someone else and have them mail it back, that is nothing for copyrights.
"Copyright law has adapted to all of the new forms of expression and all new types of expression media will be recognized by the Copyright Act."
These media are the common types copyright history has had to deal with: sounds and music, visual arts, performances, text, and three-dimensional works, film and the like. It really began for example for music with the "Lead Sheet." Before that it was for Royalty (Kings and Queens) and so the payment for use of a copyrighted work is called royalties. Copyright law has adapted to all of the new forms of expression and all new types of expression media will be recognized by the Copyright Act. In the "old days" multimedia works, which are really a blend of many of the more familiar forms were recognized, and now of course web sites, Cloud-based media and media for mobile devices are all covered. These forms now known or later developed may form the basis of new laws to handle them and their registration. All forms of copyrightable material must be able to be PERCEIVED, EPRODUCED, OR OTHERWISE COMMUNICATED, EITHER DIRECTLY OR WITH THE AID OF A MACHINE OR DEVICE. Contracts must be made very clear in this growing complex area of the law.