USPTO Cancellation of Redskins trademark does not mean the end of the mark/name

The media is treating the TTAB’s cancellation of 6 of the Redskins’ trademarks as if this is the end of the name/mark (pending appeal).

But, as the TTAB itself points out, federal registration is not the totality of trademark protection. Should the Redskins desire to continue using the marks/name–even if they appeal the TTAB decision and lose–they can enforce under state registration and/or common law rights. This is certainly more onerous than having nationwide federal rights. And it runs the risk that there might be some senior users in particular jurisdictions. But there are plenty of state-based marks used as brands out there. A good sign is whether the mark is identified by “™” or “SM” rather than ®. The latter may only be used for federally registered marks.

Thus, whether one likes the name or not, nothing about this TTAB decision itself forces Dan Snyder and the Redskins to abandon the mark/brand.

Categories: Commerce, Goods/Artifacts, Intellectual Property, Law, Services

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Crowdfunding’s Impact on Start-Up IP Strategy

[The following is summarized from my forthcoming article in the George Mason Law Review]

Crowdfunding has been heralded as a revolutionary and democratic way to connect ordinary individuals with innovative projects they would like to support. The version involving equity investments in start-ups will be regulated under the U.S. JOBS Act of 2012.[i] But start-ups who use this legal pathway will become essentially “junior” reporting companies under the securities laws with significant public disclosure requirements. This blog post argues that such disclosures may negatively impact start-ups’ intellectual property (“IP”) portfolios.
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Categories: Art, Commerce, Commercialization, Corporate/Securities Law, Creativity, Entrepreneurship, Intellectual Property, Law, Technology

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Congressional testimony on Sec 512 of the DMCA “notice and take down” for websites

Testimony of Sean M. O’Connor, Professor of Law and Founding Director, Entrepreneurial Law Clinic, University of Washington (Seattle)

Before the Committee on the Judiciary
Subcommittee on Courts, Intellectual Property, and the Internet

Notice and Takedown Provisions under the DMCA, § 512

March 13, 2014

Chairman Goodlatte, Chairman Coble, Ranking Member Nadler, Members of the Subcommittee, thank you for the opportunity to testify today about the current state of notice and takedown provisions under the DMCA.

I am a law professor at the University of Washington in Seattle and the Founding Director of its Entrepreneurial Law Clinic. We deliver a full range of corporate, IP, and tax services, focusing on business planning and transactions, to start-ups, artists, and nonprofits. I have also served as Director of UW Law School’s Law, Technology & Arts Group and its Law, Business & Entrepreneurship Program. I currently also serve on the Academic Advisory Board of the Copyright Alliance. Before academia, I was a full time attorney at major law firms in New York and Boston. I have continued an active private legal practice, with current social media clients such as Kolidr, and was General Counsel to, a nonprofit arts organization for the digital and net art community. Before law school I was a professional musician and songwriter for 12 years, receiving airplay on college and commercial stations in the Northeast. Because of my multiple affiliations, it is especially important to state that my views here are my own and do not necessarily represent the views of any of the organizations I am or have been affiliated with.


The current litigation over the Innocence of Muslims video provides a timeliness to the hearing today, as the dispute started with a takedown notice from the actress, Cindy Garcia, to YouTube demanding that it remove the infamous video from its site. Putting aside the more complicated issues in that case, one of the defenses offered by Google (the owner of YouTube) was quite telling. Google asserted that taking down the video from YouTube would provide little relief to Ms. Garcia because it was so widely available on the Internet. Whatever the practical truth of this contention, Google’s claim that relief from infringing online content is essentially impossible reflects a common, disturbing narrative that we live in a post-copyright world where everything is available everywhere and there is nothing we can really do about it.

This attitude is both a cause and a result of the main failure of the notice and takedown system that I want to address today: the relentless reposting of blatantly infringing material. This is not material that the poster believes he has rights to, either by ownership, license, or transformative fair use. It is simply posted as an end run around copyright law for fun or profit. This end run is largely made possible by notice and takedown and the safe harbor for online service providers.
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Categories: Art, Commerce, Commercialization, Creativity, Electrical & Digital Arts, Entrepreneurship, Fine Arts, Information Technology, Innovation, Intellectual Property, Law, Technology, Technology Entrepreneurship

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Tel Aviv presentation and conference

Chief Judge Rader and I were in Tel Aviv in November at the “From IP to NP (Net Profit)” conference.

Here is my presentation on “Managing Know-How in Global Value Chains and International Tech Transfer.”

And of course, because we were at the same conference together, the Chief and I put on a Denovo concert!

Denovo Tel Aviv (2013)

We really missed our regular bandmates, Jon Knight, Joe Newman, Darrell Stark, and Mike King. But the young Israeli musicians who stepped in to back us up did a great job. Shout out to Nava Swersky Sofer, who connected us to a music teacher, Yahel Goldschmidt, who then arranged the players.

Israeli musicians: Almog Tebeka (bongos etc), Erez Ram (drums), and Yonatan Rozen (bass)

Also thanks to Seth Heller, Tal Band (and his firm S. Horowitz and Co.), Dorit Korine, AIPPI, WIPO, Israel Patent Office, Israel Ministry of Justice, and UW Law for organizing and/or supporting my participation at the event.


Categories: Art, Commerce, Commercial/Contract Law, Commercialization, Fine Arts, Intellectual Property, Law, Technology, Technology Transfer, Uncategorized

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Madison, IP and the Creative Class

In the emerging conflict between creators and content repackagers and conduits (e.g., social media and Google), it is good to remember what James Madison said about IP:

“With regard to Monopolies they are justly classed among the greatest nusances [sic] in Government. But is it clear that as encouragements to literary works and ingenious discoveries, they are not too valuable to be wholly renounced? . . . Is there not infinitely less danger of this abuse on our Governments than in most others? Monopolies are sacrifices of the many to the few. Where the power is in the few it is natural for them to sacrifice the many to their own partialities and corruptions. Where the power, as with us, is in the many not the few, the danger can not be very great that the few will thus be favored. It is much more to be dreaded that the few will be unnecessarily sacrificed to the many.

[Letter from Madison to Thomas Jefferson, October 17, 1788 (emphasis added)]

Madison was one of the drafters of the “IP Clause” in the US Constitution. He seems to have recognized that the many would want free access to the valuable creations of the few, and that thus this risk was far greater than the risk of the smaller creative class dominating the many through patent or copyright grants.

Today we have big social media and content repackaging sites treating creative works as just so much commodified, fungible stuff to feed the voracious appetite of the many. Meanwhile, the smaller creative class is trying to maintain some level of premium pricing for what are distinct individual creations. The creative class is losing the war, just as Madison feared.

Categories: Art, Commerce, Commercialization, Creativity, Electrical & Digital Arts, Fine Arts, Information Technology, Intellectual Property, Technology

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