Weekend Warrior Clothing vs Amazon

Amazon, Inc is engaged in a massive scheme that destroys the work and livelihoods of independent artists in the U.S. It is called Amazon Merch on Demand and Merch by Amazon. There is currently a federal lawsuit filed by independent artists who complain about Amazon stealing their art works and selling them printed onto t-shirts and other merchandise without their input or permission. The lawsuit is called Weekend Warrior Clothing, LLC v. Services, LLC. (1:23-cv-00752), District Court, S.D. Ohio.

Weekend Warrior Clothing is a company in Ohio started by two brothers, Daniel and Tim Whelan. The Whelan brothers made silly or funny designs, many involving beer drinking, and printed them on t-shirts. They sold the t-shirts on their own websites. The Whelan brothers complain that they discovered one day that Amazon was systematically stealing their designs, printing them on t-shirts, and selling them on Amazon.

The Whelans say that as soon as they came out with new designs, Amazon would systematically steal the designs and put them up for sale on Amazon. The Whelans say that they contacted Amazon and told them to take down their designs and stop printing up and selling shirts and other merchandise with their designs on them. They say that Amazon ignored or denied their take-downs. They go on to explain that Amazon repeatedly claimed that the take-down notices sent by Weekend Warrior were not valid or lacked some piece of information, and other excuses.

The Whelans found their Weekend Warrior Clothing business was being ruined by Amazon copying their designs and selling its own shirts. The Whelans filed a federal lawsuit for Copyright infringement.

Amazon did not take responsibility for its wrongdoing. Amazon did not apologize. Amazon did not offer to make good for the damage done to the Whelan brothers and their shirts business. Instead, Amazon blamed its users who are involved in its Merch on Demand “program.” Amazon claimed it was not to blame, even though Amazon created and hosted the website pages featuring the shirts for sale, Amazon took the orders for the shirts and received the payments, Amazon printed up the shirts, and Amazon delivered the shirts. Amazon profited off every shirt sold. Still, Amazon claimed it was not to blame.

Then you might think that Amazon would expect its Merch by Amazon users, whom Amazon says are to blame for stealing the Weekend Warrior art, to accept the blame and reimburse Weekend Warrior. Instead, Amazon took very unusual steps to hide the identities of its users involved in the scheme. What did Amazon do? Amazon did something I’ve never before seen in a lawsuit. Amazon filed a motion in the lawsuit asking the Court to allow Amazon to redact or “seal” all the information regarding its users. It also asked the Court to allow all information about pricing, profits, and all other pertinent information to be redacted and not visible to the public. The lawyers for Weekend Warrior said they agreed to this because they feared that if they took the time to fight this strange request, their answer to the lawsuit would be filed after the deadline. So they acceded to this demand.

The information in a lawsuit is supposed to be public. Amazon was trying to cover up the names and profits made by its users that Amazon claims are the ones responsible for harming Weekend Warrior. The Judge was required to decide whether sealing pertinent information from the public should be allowed. The Judge wrote a decision wherein he stated that Amazon claimed that important business information would be made public if it was not sealed, so the Judge allowed the information to be sealed.

This was a stunning, likely illegal and unconstitutional hiding of information that should have been made public in the lawsuit filings. Lawsuits are supposed to be public, not conducted in secret. Amazon requested to hide almost all pertinent information in its filings, Weekend Warrior acquiesced to this, but the Judge was supposed to protect the public interest. Instead, all subsequent court filings in this case have all the important information blacked out. Below is one example.

The filings made by both Amazon and Weekend Warrior Clothing are rife with blacked-out pages. The Court denied the public its right to see and read the filings and to know what Amazon was up to in its print-on-demand Merch scheme.

Why is this so important? First, there is the First Amendment of the US Constitution that allows the public and press the right of access to court proceedings. If Amazon gets to hide all the important information from its lawsuit filings, then the public is kept in the dark about Amazon’s defenses to the complaints made by Weekend Warrior Clothing. Further, since Weekend Warrior is also required to redact all the important information about what Amazon did to harm Weekend Warrior and the Whelan brothers, then the public is left even further in the dark. This has become, in fact, a secret trial. And that is not allowed under the First Amendment of the U.S. Constitution.

Second, it appears that many artists have had their art stolen or infringed by Amazon in its Merch by Amazon scheme. Those artists need to know and deserve to know what is being claimed by Amazon in this lawsuit. Amazon is highly likely to make the same excuses to the other artists whose art works turn up without permission on Amazon’s merch scheme.

Third, Amazon claims it is not liable for Copyright infringement, but that its users are the ones that submitted stolen art and are liable. Then why is Amazon hiding and protecting its errant users? Amazon itself made money off each shirt, sweatshirt, and other piece of merchandise sold. Amazon takes its cut first out of every sale. Yet, Amazon claims it is not responsible or liable for merchandise where Amazon hosts the art, provides the website pages, advertises the products on its site, takes the orders, receives the money, prints up the goods, and delivers the goods. Amazon says it is not responsible, but its “Merch” partners or users are. Yet, Amazon is hiding the identities of these people.

There is nothing secret about Amazon’s Merch on Demand program. Amazon posts information on how it works. It appears that Amazon is hiding information that is needed by the other artists whose art works and designs have been stolen, whose businesses have been harmed or destroyed. Everyone in the public, particularly artists, deserve to know all the information that Amazon is hiding.

You can download a lot of the court filings in this case on Court Listener, where they have been donated by people who have purchased them off PACER. This is the link to the docket in the case:

Weekend Warrior Clothing, LLC v. Amazon.com Services, LLC (1:23-cv-00752) District Court, S.D. Ohio

Photo by Parker Burchfield on Unsplash

Get Your Songs Ready for Music Supervisors

by Susan Basko, JD.

The other day, I attended a meetup with several top music supervisors - the people who help choose songs for movies, television, and ads. One thing discussed was Clearance -- the need to be able to legally clear your song quickly and surely. If your song cannot be cleared quickly and easily, the Music Supervisor has to skip your song and move on with others that are easy to clear.

That's because Music Supervisors have to move quickly and often there is very little time after a show is edited to the placement of songs to the time a show is turned in for airing. If you do not have your legal ducks in a row, they are forced to move on without your music. Don't waste your time pitching your music if you don't have your legal work done right so it cannot be cleared.

The WAY to make your song easily clearable is to have ALL your legal paperwork completed and ready. This means that you have CONTRACTS all signed with everyone who was involved as a musician or producer. It means you have the COPYRIGHTS already registered on the songwriting (if you own it) on the music and lyrics, and on the SOUND RECORDING. If it is a cover song, it means you already have the licensing from the songwriter(s) and their publisher. If you have used any beats, loops, or samples from anyone else or from any existing recording, you need to have contracts signed that clearly give you license to use those.

I AM A LAWYER AND I DO THIS KIND OF WORK. I write the contracts that are exactly correct for your situation. I register the Copyrights. I advise musicians so their paperwork is done perfectly in advance so they do not miss any synch placement opportunities.

It is now taking about 4 months to get a US copyright registered on a song. Copyright law is such now that the registration must be fully completed, meaning you must have the certificate in hand. So you have to be prepared well in advance if you are going to be sending your songs out to Music Supervisors. You need Copyrights on your Sound Recording and on your Song Writing -- completed and done properly. You need a Contract signed with every single person who was involved in the creation of that Sound Recording.

That's what I do. Feel free to email me if you want to discuss. Suebaskomusic@gmail.com

Drones: Basic Federal Law

Image by Free-Photos from Pixabay

Drones: Basic Federal Law

By Susan Basko, esq.

Drones equipped with cameras or other sensors are really popular now as a fun hobby or as a business venture. This article is to let the readers know the basic federal law regarding drone ownership and usage.

Drones are also known as UAVs, Unmanned Aerial Vehicles, or UAS, Unmanned Aerial Systems. More commonly they are just called drones. Drones can be used by hobbyists to get fun aerial shots. They can also be used by organizations to survey land, search for a missing person, or make a video to promote a school or park. Professional drone businesses use unmanned aerial systems, which may have different types of sensors on them, to inspect oil fields and oil rigs, storage tanks, water towers, cell towers, building sites, roofs, etc. Any inspection job where you need to see the top of anything, a drone can be a great tool. Most drones send video to a computer on the ground, where it is analyzed and reports made for the client.

The basic law regarding drones comes from the Federal Aviation Administration, of FAA. Although States and cities may have local drone laws, the basic laws that all drone owners and users in the U.S. must follow come from the FAA.

There are 3 basics in current federal drone law:

1) Do you need to register your drone?
2) Do you need to be licensed to operate a drone?
3) Does your drone need to be able to communicate its identification?

1) DO YOU NEED TO REGISTER YOUR DRONE?

VERY LIGHTWEIGHT DRONE USED ONLY FOR RECREATIONAL PURPOSE -- DO NOT NEED TO REGISTER. ALL drones must be registered unless they weigh under .55 pounds or less (under 250 grams) AND if they are flown ONLY under the Exception for Recreational Flyers. Recreational Flyers are those who are not flying for any organizational or business purpose.

DRONE OVER .55 POUNDS and up to 55 POUNDS -- MUST REGISTER. (THOSE WITH drones over 55 pounds must contact the FAA directly.) You register your drone with the FAA at the Drone Zone. THIS IS THE LINK TO THE DRONE ZONE: drondzone.faa.gov

Registration costs $5 and is valid for 3 years. You'll need a credit or debit card and the make and model of your drone handy in order to register.

Create an account and register your drone at dronezone.faa.gov. Select "Fly sUAS under Part 107."

Once you've registered, mark your drone (PDF) with your registration number in case it gets lost or stolen.

2. DO YOU NEED TO BE LICENSED TO OPERATE YOUR DRONE?

YES, If your drone is between .55 pound (half pound) and up to 55 pounds, AND if you operate it for an organization or business, you need to get your Remote Pilot Certificate.

Become an FAA-Certified Drone Pilot by Passing the Knowledge Test

To be eligible to get your Remote Pilot Certificate, you must be:

At least 16 years old
Able to read, write, speak, and understand English
Be in a physical and mental condition to safely fly a UAS

Study for the Knowledge Test
Review Knowledge Test Suggested Study Materials provided by the FAA.

Obtain an FAA Tracking Number (FTN)
Create an Integrated Airman Certification and Rating Application (IACRA) profile prior to registering for the knowledge test.

Schedule an Appointment
Take the Knowledge Test at an FAA-approved Knowledge Testing Center.

Complete FAA Form 8710-13
Once you've passed your test, for a remote pilot certificate (FAA Airman Certificate and/or Rating Application) login the FAA Integrated Airman Certificate and/or Rating Application system (IACRA)* to complete FAA form 8710-13.

Review the full process to get your Remote Pilot Certificate.

3) DOES YOUR DRONE NEED TO BE ABLE TO COMMUNICATE ITS IDENTIFICATION (REMOTE ID)?

Yes, drones must now have Remote ID. There are several ways to meet the requirements.

What is Remote ID?

Remote ID is the ability of a drone in flight to provide identification and location information that can be received by other parties.

Why Do We Need Remote ID?

Remote ID helps the FAA, law enforcement, and other federal agencies find the control station when a drone appears to be flying in an unsafe manner or where it is not allowed to fly. Remote ID also lays the foundation of the safety and security groundwork needed for more complex drone operations.

There are three ways drone pilots will be able to meet the identification requirements of the remote ID rule:

Operate a Standard Remote ID Drone (PDF) that broadcasts identification and location information about the drone and its control station. A Standard Remote ID Drone is one that is produced with built-in remote ID broadcast capability in accordance with the remote ID rule's requirements.
Operate a drone with a remote ID broadcast module (PDF). A broadcast module is a device that broadcasts identification and location information about the drone and its take-off location in accordance with the remote ID rule's requirements. The broadcast module can be added to a drone to retrofit it with remote ID capability. Persons operating a drone with a remote ID broadcast module must be able to see their drone at all times during flight.
Operate (without remote ID equipment) (PDF) at FAA-recognized identification areas (FRIAs) sponsored by community-based organizations or educational institutions. FRIAs are the only locations unmanned aircraft (drones and radio-controlled airplanes) may operate without broadcasting remote ID message elements.

Much of this information is taken from the FAA website on UAS. Please go there to read more detailed information. This blog post is a basic summary. You will need to learn so much more to become a drone pilot.

TRADEMARKS: If you are starting a drone business, it's a good idea to protect the name of your business with a registered trademark. I am a lawyer who registers trademarks, and I recently applied for a trademark for a drone business. This gave me reason to spend a lot of time searching the trademark database for drone trademarks. There are two basic categories -- businesses that sell drones as goods, and businesses that run a drone service, such as drone photography, drone inspection, drone search, etc. You will want to get in with a good drone business name before the best ones are all registered by someone else. The success of your business can hinge on having a good professional trademarked name.

Wixen v Triller: Music Apps Need to License the Songs

Wixen v Triller: Music Apps Need to License the Songs

by Susan Basko, esq.

Wixen Music Publishing has filed a lawsuit against the Triller app claiming the songs Wixen controls have been infringed by Triller. Triller is an app run by CEO Mike Lu. The app allows users to create 15-second music videos and share them with friends and contacts within the app. The app makes many songs availavle to the users for use in the videos. Some of those songs are controlled by Wixen. Triller allows its users to choose a song, choose which 15 seconds of the song to use, and to make a little music video.

Wixen is run by Randall Wixen, who is one of my personal longstanding music heroes. Randall Wixen came into music publishing as an accountant who would collect the publishing money owed and take a percentage. This differs from the traditional music publisher, which usually takes 50% of the publishing rights and notoriously does almost nothing to earn it. At the time Wixen started, his service was groundbreaking and a cure for the traditional music publishing grab that robbed so many songwriters. This is how and why Wixen has an impressive A-list of songwriters who sign with the company to have their money collected at an affordable price. These are veteran songwriters who do not need any "help" getting their songs out there. The Wixen Publishing Client List of over 2,000 songwriting music artists includes Tom Petty, Rage Against the Machine, Santana, Andrew Bird, Neil Young, The Doobie Brothers, Barry Mann and Cynthia Weil, The Doors, The Beach Boys, Steven Stills, Stevie Ray Vaughan.

By US Copyright law, use of a song in a motion picture, including a music video, requires a Synch license from the publisher, as well as a Master's Use license from the owner of the copyright on the Sound Recording, which is usually a record label. This lawsuit does not address the Master's Use license, because Wixen is a music publisher, not a record label. I don't know if the song recordings used by Triller are original recordings owned or controlled by record labels, or if perhaps Triller has had sound-alike recordings made. In either case, this particular lawsuit only deals with the publishing, by which is meant the songwriting, not the sound recording. Songs have two copyrights -- the songwriting and the sound recording. The songwriting copyright is usually controlled by a publisher, and will remain constant no matter which musicians have created a particular recording. If Triller has used sound recordings without getting a Master's Use license, then it is possible there will be other lawsuits filed by record labels.

Over the years, I have watched a good number of music start-ups fail and have to close up, and most of those were at least in part due to their lack of understanding of music law and /or their failure to get proper licensing for the music. Music law is complex and most people do not understand it. Further, music licensing is a gigantic, expensive pain.

What makes music licensing such a pain? First, there is no real central database that lists who controls what songs. There are a mishmash of databases and they can be helpful, but there is no centralized registry. Second, a song may have multiple songwriters, and each one may be represented by a different publisher, and by different publishers in different nations. Third, since songwriters can move their songs from publisher to publisher, what is true one year may not be true the next. Further, publisher merge, get bought up, go out of business, etc. Songwriters die and their estates take over, and often the legal status of the publishing will be tenuous at best.

So, let's say you have discovered which publishers control the songwriting / publishing rights to a song. Let's say you eagerly want to get a synch license to use the song in a video. Well, the publisher can say yes or say no, and they can even say nothing if they see you request as unworthy of a response. Publishers always want to know a lot of information before granting a synch license, including which part of the song will be used in the motion picture, what the film or video will be like, who is producing and directing and starring in it, where it will be shown, how long it will be shown there, how many people will see it, and what the overall budget is and what the music budget is. If the publisher grants the synch license, it can set any price and any terms it likes.

With all that, how does an app negotiate to get synch licenses for thousands of songs, to be used in any way that the app users wish to use them? As you see in this lawsuit, the easiest way is to skip getting synch licenses and deal with the consequences as they come. Maybe that's not such a great idea. Maybe music publishers should wake up and make themselves and the music they represent more available and affordable. Use of a song in a video, even an amateur or fan music video, is good free publicity for the song -- usually, not always. Sometimes a video can harm a song or do things the songwriter does not like, and that is one of the many reasons why publishers require information about the video before granting a synch license.

Bulk licensing is possible, but a publisher rarely wants to deal with a music start-up company, with its finances as shaky as its reputation and future. This is why, it seems, many music tech start-ups choose to ignore the complexities of music licensing. The Wixen lawsuit complaint states, "The President and CEO of the National Music Publishers’ Association (NMPA), a trade group to which Wixen belongs, criticized Triller for not fully licensing NMPA members’ songs, stating that “Triller’s popularity is largely based on music. It boasts ‘millions of songs at your fingertips,’ however many of those songs have not been properly licensed. The pattern of tech platforms asking for forgiveness instead of permission to use songwriter’s work must stop. Triller must legitimize its business by properly licensing all music on its platform.”

However, there are reasons that "tech platform" ask "for forgiveness instead of permission to use (a) songwriter's work." Those reasons, I think are lack of understanding of music law, lack of access to a music lawyer, lack of financial resources in the start-up phase of a company, and complexity in getting synch licensing and Master's Use licensing.

Wixen's complaint hopes to dispel any notion that Triller was unable to afford synch licensing by alleging that Triller has been lavishing money on its social media influencers. "However, rather than pay Wixen and the songwriters Wixen represents to use their Works, Triller pays “social influencers” substantial sums of money and provides them with Rolls Royces, mansions (with housekeeping), weekly sushi dinners at Nobu, and, in at least one instance, a helicopter." This is a no-go with Randall Wixen, who has built his business on being impeccably fair with his roster of songwriters.

Wixen Publishing's website has a page called "How to Clear Music." It includes a list of "How Not to Clear Music," which includes the admonition, "Don't chat up the receptionist." None of this list (below) sounds like Wixen is open to negotiating with a music start-up for synch licensing of its songs en mass. To the contrary, this all sounds intimidating, foreboding, and expensive. Nothing says a music publisher has to be open to working with music apps or social media. But, those platforms are the present and future of music, so it would seem a good idea to get on board with the things that music lovers enjoy today. Just sayin', it might be more productive than filing lawsuits after the fact.

This music street runs both ways and there is enough fault going around for everyone to take their share. A songwriter and their music publisher do legally own the rights and control what can be done with their songs. But it is the music fans who have made the songs what they have become. Rejecting tech and social media platforms or making it nearly impossible for them to use music is the historical equivalent to if songwriters had refused to allow their songs to be played on a Victrola or record player, or on the new-fangled radio. Music is being used in new ways, giving the fans the ability to create their own video media. Will music publishers remain in their castle towers surrounded by a moat -- and don't chat up the receptionist on the way into the castle, please -- or will they get with the times? This remains to be seen.

A lawsuit such as this one filed by Wixen is enough to financially kill off a platform like Triller. I have seen many a music start-up killed off by the expense and demands of music licensing. Will Triller and Wixen be able to work out a deal? We'll all find out.

HOW TO CLEAR MUSIC

How to Clear Music

Allow adequate time to obtain approvals. In many instances, we have to track down a touring songwriter for approval of your request, and this can take time.
Provide us with complete written details of the proposed use. For books, TV shows and films, we require plot descriptions and text pages showing the in-context placement of the proposed use.
Send your completed request via mail, FAX or by email to licensing@wixenmusic.com.
Any proposed changes to a quote or license must be requested in writing.

How NOT to Clear Music

Don’t tell us how low your budget is. If your request is approved, we will quote based on our perception of the fair market value, not your budget.
Don’t expect us to educate you in the clearance process or copyright law because you’ve never cleared anything before. You should know what you’re doing before you contact us. Consider hiring a clearance professional.
Don’t expect approval on a request just because you’re a bona fide good-deed-doing charity. Many of our clients get dozens of charitable requests per week and they cannot all be approved.
Don’t ever send us a letter stating that if you don’t hear from us, you will assume that the use has been approved. This will prompt an immediate and permanent denial.
Don’t change our forms of the terms of a license unless you have sent us a written request asking to do so, and we have approved such request.
Don’t chat up our receptionist. It has zero bearing on whether your request will be approved or the speed in which your request will be considered.
No means no. It is not an invitation to appeal a decision or send further information that you meant to send in your original request.
Don’t call our client or his or her manager or attorney directly to appeal their decision after receiving a response from this office.

Wixen v Triller Copyright i... by SusanBasko

Wixen Complaint List of Son... by SusanBasko

Trademarks and Your Side Hustle - 10 Quick Ideas

Trademarks and Your Side Hustle

10 Quick Ideas

by Susan Basko, esq.

You may be planning a small business for your retirement or as a side hustle now. Trademarks are a backbone of a solid small business. Here are some basics to know:

1. A trademark is a word (or set of words) or an image or a word and image combination that lets the potential buyers know the source of goods or services. A trademark is often the name of a company or the name of a product (goods) or service that is sold by a company.

2. A trademark can be real personal. It can even be your own name or your pen name, DJ name, music name, or the name under which you make jewelry, bake cakes, babysit, or mow lawns.

3. Marijuana-related services and goods cannot get U.S. registered trademark. That's because, while the sale of marijuana is legal in many states, it is still illegal federally. If you apply for a trademark for a marijuana-related service or goods, the US Trademark Office will make "inquiries" of you. It does not matter what you reply, because the Trademark Office in the end will deny your registration. Period. Selling terra cotta pots? You can get a trademark. Selling pot? No trademark. Don't waste your time or money.

4. Work with a lawyer on choosing your business name and the names of your goods or services BEFORE you settle on a name. That's because you want a name that can be registered as a trademark. Do not sink your time and money into a name that you will have to change.

5. Merely descriptive. Trademark registrations are refused for being "merely descriptive." "French Bakery" will be rejected by the Trademark Office if it is for a bakery selling French pastries. However, if "French Bakery" is the name of a perfume, it might be accepted.

6. Geographic names will be rejected if they describe the location of the business. "Mildred Street Saloon" will be rejected if it is a saloon on Mildred Street. However, it might possibly be able to go on the Supplemental Register.

7. Geographic names that show the source of origin are tricky. There are rules for source of origin of things such as cheeses, beers, and wines and spirits. You should absolutely work with a lawyer from the get-go on any of these. The rules are complex. For example, a mark that names the geographic origin of wines or spirits will be rejected as being geographic. On the other hand, a trademark that incorrectly names or implies that wines or spirits are from a geographic region will also be rejected. If a geographic terms is considered generic for those goods or services, it might be allowed, but disclaimed. For possible example, the word "Burgundy" is a geographic location, but is also a generic term for a type of red wine, so a trademark such as "Parasol Burgundy," might be allowed, with the word "Burgundy" disclaimed in the application. Wines and spirits from a geographic location might be better suited to getting a certificate of origin, which is a process different than a trademark. This is all very tricky and not a do-it-yourself activity.

8. Your trademark cannot conflict with already-existing or already-pending trademarks for the same Class of goods or services. They don't have to be the exact same goods or services -- just in the same Class. For example, leather goods are a Class. If someone has already registered a trademark for Pashmina Wallets, you are not likely to be allowed to register a trademark for Pashimina Belts.

As another example, a trademark for a company that sells drones will be registered as goods. A trademark for a company that performs searches or photography or inspections via drones is a service. As it happens, these two are in different Classes. However, it is not likely a conflicting word mark would be allowed, even though these are different classes, because they both involve drones. So it is not likely a trademark examiner will allow Skyway as a drone seller if there already exists Skyway as a drone photography service.

9. A trademark will often be considered to conflict with an existing trademark if they have one of the same words in the mark, even if the whole trademark is not the same. The two marks may conflict if they are spelled similarly, but not exactly the same. Alternative spellings may conflict. Let's say a trademark is Campus Capers. An alternate spelling of Kampus Kapers for a same or similar class of goods or services will be considered a conflict and the trademark will not likely be allowed.

10. TRADEMARK IS NOT A DO-IT-YOURSELF ACTIVITY. I register trademarks. To succeed in registering a trademark, I take a lot of time with the initial search and the choice of trademark. I counsel the clients on whether the registration is likely to succeed. If it is not likely to succeed, then the person should choose a different trademark, unless they want to take their chance and be willing to risk their money on a possible rejection. I spend a lot of time on choosing the proper specimen (sample of the trademark in use) to accompany the application. The overwhelming vast majority of trademark applications fail. It takes about a year for a trademark application to go DEAD. If you want to succeed and end out with a registered trademark, do not try to do-it-yourself.

Good News from the Trademark Office

Good News from the Trademark Office

by Susan Basko, esq.

Today, the U.S.Trademark Office sent out the good news below that one of the scammers who has bilked thousands of trademark applicants and holders out of millions of dollars has been arrested. The sad news is that there are many more such scammers. The good news is that the U.S. Department of Justice has finally gotten serious about taking down these persistent frauds.

The way these scams work is that after a person applies for a trademark, they start receiving very realistic-looking bills via U.S. mail, email, or text. The bills claim to be from the Trademark Office, and are for random amounts in the hundreds or thousands of dollars. Many people have been fooled into paying recurring monthly bills. There are no such fees or services required by the U.S. Trademark Office.

Most of the people who get roped into paying these fake bills are do-it-yourself trademark applicants or those who use those scammy website things. If they were working with a real lawyer, the lawyer would remind them the bill is fake. It is ironic that people who skimp on legal fees by doing it themselves then go and pay thousands of dollars in fake fees.

Developments on fraudulent solicitations

This week, the United States Department of Justice announced that Viktors Suhorukovs, a citizen of Latvia, was sentenced to more than four years in federal prison and ordered to pay over $4.5 million in restitution after pleading guilty to mail fraud in a multi-million-dollar scheme to defraud owners of U.S. trademark registrations. Suhorukovs established and operated Patent and Trademark Office, LLC, and Patent and Trademark Bureau, LLC. These entities gave the false impression that they were, in fact, the United States Patent and Trademark Office (USPTO), scamming more than 2,900 U.S. trademark registrants out of millions of dollars for inflated, and often fake, renewal fees.

This is one of many schemes that confuse and defraud owners of U.S. registrations with solicitations that are intended to look like official USPTO correspondence. These schemes often falsely promise to take required maintenance actions on behalf of the registration owner, or they scam registrants into paying for services they don’t need.

We have worked hard to fight these solicitations and assist law enforcement in cases like Suhorukovs'. Learn more about our ongoing efforts to combat scams on our website.

Justice and Justin Bieber

Justice and Justin Bieber

by Susan Basko, esq.

Justin Bieber has been sent a Cease and Desist by the French electronic music duo called Justice. Justice registered the trademark on the left, in the French trademark system, but not in the U.S. The Justice duo claims that the cover of Justin Bieber's latest album, called Justice, seen on the right, infringes upon their copyright.

Let's look at why this claim is not likely to succeed. There are many reasons. First, Justice did not register their trademark in the U.S. Second, Justin Bieber has not (yet) filed a trademark on this design.

Third, "justice" is a generic term, and this electronic duo has no hold or control over the name. If their name were unique, such as "Megadeth" they might have some legit claim over the word. As of now, there are 1014 live trademarks in the US trademark system that contain the word, "justice."

Fourth, Justice claims that Bieber's design on the word, "justice" is too similar to theirs, because they claim the "t" is elongated to create a Christian cross. Look at the two designs. Justice uses a graffiti writing style, with little arrows coming off the ends of the letters. Bieber uses a totally different typeface, a very sleek, chunky, modern sans serif lettering.

The overall line of the lettering on the Justice trademark swoops down and then up again. Bieber's lettering has a straight bottom line. In fact, Bieber's letter "t" is not elongated and has the same bottom line as the rest of his letters.

If we were discussing copyright, which is different from trademark, we would note that font styles do not have copyright. Also, titles of albums do not have copyright. Also, one cannot copyright a single word. Also, a common symbol such as a cross does not have copyright.

Then there is the idea of consumer confusion. I doubt any fans of Justin Bieber's music have ever heard of the electronic duo, Justice. Justice's fans have likely heard of Justin Bieber, but they are not likely to confuse these two highly divergent music artists.

I did a search of the US Trademark database to find trademarks that incorporate the word "justice" and also a design of a cross. I found a short list, and most of them are dead.

Then, I looked at each of these. I found three that had any possible similarity to the Justice trademark or to Justin Bieber's album cover. This is the first -- the Medical Justice League, with a crest including a cross. There is no similarity to either Justice's trademark or Justin Bieber's album cover design.

Next, there is an abandoned trademark using the word "justice" and a cross. Again, not similar.

Third, there is a live trademark for insurance claims that is uses a cross and the word, "justice." It is the most similar to the French Justice music trademark and to Bieber's album cover design. Even still, it is not similar to either. The point here is that anyone can use the word "justice" in a trademark, along with a Latin Cross, and this does not mean it infringes.

I've read that Justin Bieber has a "Justice" clothing line planned. He should probably get busy and file a trademark on that, before someone beats him to it.

There's another issue some people are complaining about. Justin Bieber used some wording from Dr. Martin Luther King, Jr., as lyrics in some of his songs. He did so with the blessing of the King family. There is a triple blessing to Bieber using MLK's words as lyrics. The family/ estate holds the copyright on many of Dr. King's famous writings and speeches. They use the copyright to protect the integrity of the writings, as well as to make money for the family and estate. This is most helpful since Dr. King died very young and was therefore not around to support his family. His words lived on, and protected by copyright, have helped support the family.

Some people have complained that Justin Bieber named Dr. Martin Luther King, Jr as "co-writer" on at least one song. This is legally a correct thing to do. The lyrics are written by MLK and therefore, he is a co-songwriter. This also means that MLK's family or estate is entitled to publishing royalties on the song. That could add up to quite a bit of money for the family.

Justin Bieber is not usurping or misusing the MLK name, he is introducing MLK's words and ideas to a new generation. He is helping spread MLK's ideas about justice. By doing so, Justin Bieber is helping the MLK family and estate to make money. By doing so, Justin Bieber is promoting justice in ways that are available to him as a very famous music artist.