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

  • 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

Response to Kanye West's Challenge to the Music Industry

Response to Kanye West's Challenge to the Music Industry

by Susan Basko, esq.

Kanye West recently tweeted out copies of the recording contracts he signed.  Like most artists that sign with major record labels, he found the contracts to be, essentially, a rip-off.  As with past complaints from other music artists, his main complaints seemed to be that the record label owned the copyrights to the sound recordings (Masters) and that the recoupment from royalties was never-ending and based on inflated costs.  These are the same complaints that have surfaced over and over again in the recording industry.

In response, I am tossing out a few ideas here:

The ownership of the Masters is how a record label owns anything.  The record label does not own the rights to the songwriting, as that is "owned" by the publisher.  To me, it seems that the record label could accomplish its goals by licensing the masters for a set period of time, rather than owning them.

Music artists who are dropped from their labels lose the right to distribute the music on their own.  Further, when record labels merge or shut down, many of the masters go dormant or are lost.  People or companies wishing to re-release the music meet practical and legal hurdles that cannot be overcome.  Back when a master was an actual hard metal platter from which vinyl records were pressed, the preservation and location of the master disc were of crucial importance.  Today, with masters usually meaning an infinitely-copyable set of digital tracks or a mixed down version of those, the location of the tracks on a hard drive is also challenging.  Even if someone at a recording studio has been careful about organizing and naming files, and even if the studio is still intact (two real big ifs), does the hard drive still exist and is it still electronically accessible or has it become outmoded and inaccessible because of an outdated operating system or outdated hardware?  If every music recording studio or every record label had the practice of transferring files to updated technology every few years, the preservation and accessing of older music would be physically easier -- even if it was still a legal challenge.  Hence, we come to copyright law, which forbids the copying of such materials without permission of the owner of the copyright.  It seems that it would make sense to give such permission automatically in contracts, and to give this job to someone as a matter of course.  And by someone, I mean some responsible entity, not a person, since people come and go, and eventually die.  If the music dies with "that recording engineer who kept track of things," then the music is probably lost.

Then there are the legal issues.  Sound recordings in the U.S. did not have federal copyright protections until 1972.  Before that, the recordings were subject to a mishmash of state laws.  That is a massive amount of popular music and rock music from the 1960s heyday that were federally protected only in retrospect.  The practices of the major record labels are still based on these factors of sound recordings having a valuable platinum master and not having copyright protection.  There simply is no longer any need for record labels to be structured as they were.  

Some small independent record labels have been successful, but mainly if they are owned by a songwriter- music artist who is selling his or her own music independently,.  

The second main complaint mentioned by Kanye West, as well as by others who criticize the contracts of the major record labels, is that recoupment is never-ending.  In a nutshell, this is how that works:  A major record label signs an artist and gives them an advance, which is a loan, which is repaid through recoupment through royalties.  Costs and expenses, which are highly inflated and often imaginary, are also recouped.  The vast majority of music artists are not re-signed and make no more money beyond the first advance.  The few music artists that become financially successful hold down the fort for everyone.  This set-up is inequitable and top-heavy.

In the meantime, many really good songwriters and music artists long to be "signed."  They dream of being able to make their music, make enough money, and having someone else take care of the business, legal, and financial end of things.  

What are good answers to these problems?  Let's see if we can find some good solutions going forth. 


Pool Boys Update. Chris Pool files for Subverse trademark

Pool Boys Update: Chris Pool filed for Subverse Trademark
by Susan Basko, esq.

As you may recall, in our last episode, Tim Pool aka @Timcast  on Twitter, filed for a trademark on the word, "Subverse" for use as online entertainment and news.  After Tim filed, a company called Zovolt in the UK filed a US trademark application for way too many categories of goods and services, all as "intent to use." Zovolt claimed their US application should be backdated because they had filed a few months prior in the UK for a trademark on the same word on some of the categories they were seeking in the US.  The USPTO agreed Zovolt's application predated Tim Pool's, and suspended Tim Pool's application until Zovolt's is decided.  The Zovolt application was exceptionally sloppy and Zovolt is being required to file a very detailed response to an Office Action by June 1, 2020.

After Tim Pool filed for the trademark, Chris Pool, Tim's brother, claimed that Subverse is his company and that Tim and his business partners stole it from him.  Chris Pool, known on Twitter as @itsreactor, made the rounds of some half-baked internet talk shows to tell his side of the story.  Other quarter-baked internet talk shows were busy telling Tim's side.  Chris Pool was raising funds to sue Tim via a gofundme.  Tim's business partners allegedly are someone named Emily, whom Chris Pool says has gone on trips to Paris, France, paid by Tim;  the other business partner is someone allegedly from Minds, which Google says is a social networking thing involved with blockchain and earning tokens.  

THE DRAMA IS HEATING UP.  Chris Pool has now filed for a trademark on "Subverse" in two of the exact same categories that Tim Pool listed on his application.  Chris Pool filed his application on April 3, 2020, a little less than a year from the April 8, 2019 application filed by his brother, Tim.  On his application, Tim claimed he had first used the mark and first used it in commerce on April 4, 2015.  On his application, Chris Pool claimed he first used the mark and first used it in commerce on October 25, 2015.  Now, this is interesting, since Tim's company is allegedly an extension of Chris' company, but Tim is claiming he used the mark 6 months before Chris did.

Chris Pool filed for "Subverse" as a standard character mark, meaning no fancy lettering and no logo or design.  He filed for these categories:

Goods and Services IC 041. US 100 101 107. G & S: Entertainment media production services for the internet; Providing entertainment information via a website. FIRST USE: 20151025. FIRST USE IN COMMERCE: 20151025

As his specimen to prove use, Chris Pool provided what appears to be an internet archive of his Subverse website from December 31, 2015, shown below.

WHAT HAPPENS NEXT?  Chris Pool appears to have "dibs" on the trademark if he was consistently using it since 2015.  Using a mark in commerce is how a trademark is acquired; filing with the USPTO formalizes and registers the use of that mark.  In their online brotherly feud, Tim Pool appears to be claiming that Chris Pool was not producing new content, but was instead playing World of Warcraft.  That claim, even if true, may have little merit since a trademark owner is not required to keep constantly producing on any set schedule, as long as they are still using the trademark in commerce.  Chris will likely be required to show he was using the mark in commerce since 2015.

Chris Pool may need to file challenges against potential use of the trademark by both his brother, Tim, and by Zovolt.  If he fails to file challenges, how will the Trademark Examiners know all this Subverse drama is going down out in the real world?

It usually takes about three to four months for a trademark application to be assigned to a trademark examiner.  That means Chris Pool's application won't even get to an examiner until about August, 2020.

In the meantime, the family feud between @timcast and @itsreactor is sure to provide some entertainment while we are all on Covid-19 lockdown.  Can these siblings stop fighting and come to a resolution?  And what about these blokes in the UK claiming the name is theirs, although they have never used it?  Lots of adventure ahead.

Tim Pool, Chris Pool, and the Subverse Trademark

Tim Pool, Chris Pool, and the Subverse Trademark
by Susan Basko, esq.

Disclaimer: I have had interpersonal dealings with Tim Pool, but do not consider myself biased for or against him in regards to his dealings with his brother, about which I know little. That is not the main topic of this blog post.

Tim Pool, also known as TimCast, and his older brother, Chris Pool, also known as Reactor, have been waging a family feud online.  The Brothers Pool, or the Pool Boys, as they might be called, are Tech Bro siblings from Chicago.  Tim got his start livestreaming Occupy Wall Street (OWS) and subsequent protests and moved on to reporting and entertaining with his own opinion Youtube channel and Twitter.  Chris is known as a tech innovator and content creator.  The feud involves Chris accusing Tim and his two business partners of stealing his business, Subverse, out from under him.  Chris is making the rounds of Youtube talk shows to give his side of the story.  Chris is raising money via gofundme to hire lawyers to sue his brother.  Tech geeks and Youtube show hosts are taking sides or remaining neutral while splashing into the deep end with The Pool Boys.

I have thoughts on this whole Pool Boys debacle, but those are not the topic of this article.  This article is about the trademark for Subverse, which is part of the intellectual property that Chris says Tim stole from him.  That's not even the topic of this article.  The topic of this article is the bizarre situation surrounding Tim's application for the trademark on the name, Subverse.  This is where we separate the legal geeks from the regular folks, because this is a playground for the legal geeks, especially those with an interest in trademarks.

The saga starts out with Tim Pool, acting on his own without a trademark lawyer, which is always a bad idea, filing a trademark application on the word, "Subverse," on the following categories of services:

IC 041. US 100 101 107. G & S: Entertainment media production services for the internet; Entertainment services, namely, providing online video games; News reporters services; Providing entertainment information via a website.

Note, the services Tim claims are all under category 41, which is entertainment.  He is claiming Subverse is a trademark used to identify media production services, video games, news reporting, and entertainment information on a website.

Tim applied to own this Subverse trademark in his own name, not the name of any company, but noted that he does business as Timcast.

He filed the application on April 8, 2019.  The application states that the trademark has been in use to identify the services since April 4 of 2015.  If I am not mistaken, that would have been when Chris Pool owned and ran Subverse.  

That application went along without a hitch, at least for a while.  The Trademark Examiner, who is a trademark attorney working for the United States Patent and Trademark Office (USPTO) found no conflicting trademarks.  The Examiner sent the trademark for publication in the official gazette, where it would be published for 30 days.  During those 30 days, anyone that thought the trademark would infringe upon or conflict with their own or that they would be damaged by it, gets that opportunity to file a letter complaining to the USPTO.  

And sure enough, an objection letter came in to the USPTO from a company called Zovolt Limited limited company (ltd.) UNITED KINGDOM 35 Connaught Avenue Great Yarmouth, NOR UNITED KINGDOM NR317LU.  Here, we'll call them Zovolt.

Now, let's look at this application from Zovolt.  Tim Pool filed his application on April 8, 2019.  Zovolt filed its application on August 13, 2019, about 4 months after Tim Pool's application.  However, Zovolt claimed it has precedence under 44(e), which is a US Trademark rule that allows applicants to claim they came first if they have a valid foreign trademark registration or application, from a foreign nation that is in treaty with the U.S.  Zovolt claimed it had priority date of February 14, 2019, about two months earlier than Tim Pool filed his application.  However, Zovolt did not provide the USPTO with a copy of any such registration, as required by the rule.  The Zovolt application listed a UK application number, but did not provide a copy of that registration.  The USPTO issued an Office Action (letter) on December 1, 2019, telling Zovolt to provide a certified copy of their alleged UK registration.  Zovolt has 6 months to respond.  That gives Zovolt until June 1, 2020 to respond and provide the certified copy of the UK registration.   

 NOTE:  On the UK IP Office website, I did find an application by Zovolt for a trademark on Subverse dated February 2, 2019, as claimed in the USPTO application. However, that application is only for goods and services in Classes 9 and 42, mainly related to computer programming and computer software, and not for Entertainment, which they added in the US application.  The services claimed in the UK application seem significantly different from those claimed in the US application. 

The trademark application filed by Zovolt is a huge mess, aside from claiming priority with a foreign application but providing no copy of it.  The Zovolt application is made on a 1B basis, which means an "intent to use" basis.  This is unlike Tim Pool's application, which is made on a 1A basis, meaning he says he is already providing the three or four services he listed on his application.  In contrast, Zovolt says it plans to start providing a whole list of services.  Clue in here -- this is how you know when people applying for a trademark have absolutely no clue what they are doing -- the Zovolt application lists dozens of supposed services, many of which are redundant of each other.  The USPTO Trademark Examiner sent an Office Action rejecting most of these listings, stating that they were repetitions of each other and needed to be combined.  The Office Action gave Zovolt a deadline till June 1 to combine its claimed uses - or the USPTO will do it for them.  I will post the list of services Zovolt is claiming -- later below -- because it is so ridiculous and long, it will take up too much space.

When a trademark applicant makes a 1B (intent to use) claim, they get a certain number of months in which to actually start providing those goods or services and using the trademark to identify them.  The applicant then must file a Statement of Use (SOI. Failure to file a SOI or ask for an extension of time means the trademark application goes DEAD.

Zovolt filed an Objection when it saw Tim Pool's application go to Publication.  Tim Pool's application has thus been suspended until there is a resolution in the Zovolt application.  That resolution should come shortly after June 1, 2020, when Zovolt either does or does not file a certified copy of its UK application.   

The mystery deepens.  The Trademark Examiner working on Tim Pool's application, found no trademarks conflicting with his use of the trademark Subverse.  The Trademark Examiner working the Zovolt application, on the other hand, found that Zovolt's use of Subverse would conflict with already existing trademarks on the words  “SUBVERT”, “SBVERSL”, and “SUBVERSION”, as well as on Tim Pool's applied-for trademark on "SUBVERSE."  All of these existing and applied-for trademarks are on categories of goods and services identical or very similar to some of the hilariously many categories that Zovolt claims it will soon be engaging in.  

If Zovolt's trademark on Subverse would conflict with existing trademarks on Subvert, SBVERSL, and Subversion, how was it decided that Tim Pool's use of Subverse did not conflict with those same existing marks?  Thus are the mysteries of the USPTO.  Maybe the Pool Boy gets the Home Boy advantage or the "He is actually doing these things" advantage.

The application filed for Zovolt is a giant mess.  One sign that people have no clue what they are doing in trademark is when they file an application for an excessive number of categories.  In this regard, the Zovolt application ought to win an award for most ridiculous application ever.  Below are the categories Zovolt claims, all as "intent to use":

Here, (Zovolt) goods and services are identified as follows:

 Class 009:  3D animation software;3D computer graphics software; AI software; Animated films; Animation software; Application software for mobile devices; Application software for mobile phones; Application software for smart phones; Application software for social networking services via internet; Artificial intelligence software; Augmented reality software; Augmented reality software for simulation; Augmented reality software for use in mobile devices; Augmented reality software for use in mobile devices for integrating electronic data with real world environments; Communication software for connecting computer network users; Communications software; Computer application software; Computer application software featuring games and gaming; Computer application software for mobile phones; Computer application software for mobile telephones; Computer application software for streaming audio-visual media content via the internet; Computer application software for use with wearable computer devices; Computer e-commerce software to allow users to perform electronic business transactions via a global computer network; Computer game cartridges; Computer game cassettes; Computer game discs; Computer game programmes; Computer game programs; Computer game software; Computer game software, downloadable; Computer game software downloadable from a global computer network; Computer game software for use on mobile and cellular phones; Computer game software for use with on-line interactive games; Computer game software, recorded; Computer games; Computer games entertainment software; Computer games programmes downloaded via the internet; Computer games programmes downloaded via the internet;Computer games programmes for simulating financial securities trading;Computer games programmes;Computer games programs; Computer games programs downloaded via the internet;Computer games programs recorded on tapes;Computer games programs;Computer games software; Computer gaming software; Computer graphics software; Computer programmes for interactive television and for interactive games and/or quizzes; Computer programmes for playing games; Computer programmes stored in digital form; Computer programs for enabling access or entrance control; Computer programs for playing games; Computer programs for pre-recorded games; Computer programs for processing digital music files; Computer programs for the enabling of access or entrance control; Computer programs for using the internet and the worldwide web; Computer programs for video and computer games; Computer software downloadable from the internet; Computer software downloaded from the internet; Computer software for entertainment; Computer software for facilitating payment transactions by electronic means; Computer software for mobile phones; Computer software for the administration of on-line games and gaming; Computer software in the field of electronic publishing; Computer software supplied on the Internet; Computer software that permits games to be played; Computer software to enable the provision of electronic media via the Internet; Covers for digital media players; Covers for smartphones; Covers for sunglasses; Displays for smartphones; Downloadable applications for use with mobile devices; Downloadable computer game programs; Downloadable computer game software; Downloadable computer game software via a global computer network and wireless devices; Downloadable computer games; Downloadable game related software applications; Downloadable interactive entertainment software for playing computer games; Downloadable interactive entertainment software for playing video games; Downloadable software applications; Downloadable video game programs; Downloadable video game software; Electronic game programs; Electronic game software; Electronic game software for handheld electronic devices; Electronic game software for mobile phones; Electronic game software for wireless devices; Electronic publications, downloadable, relating to games and gaming; Encoded smart cards; Entertainment software; File sharing software; Gambling software; Game development software; Game programs for arcade video game machines; Game software; Games cartridges for use with electronic games apparatus; Games software; Games software for use with computers; Games software for use with video game consoles; Gaming software; Gaming software that generates or displays wager outcomes of gaming machines; Head-mounted display apparatus; Head-mounted holographic displays; Head-mounted video display apparatus; Head-mounted video displays; Headsets for virtual reality games; Interactive computer game programs; Interactive entertainment software; Interactive entertainment software for use with computers; Interactive entertainment software for use with personal computers; Interactive game software; Interactive graphics screens; Interactive multimedia computer game program; Interactive multimedia computer game programs; Interactive multimedia computer games programmes; Interactive multimedia game programs; Interactive multimedia software for playing games; Interactive video game programs; Interactive video software; Labels with integrated RFID chips; Labels with machine-readable codes; Laptop bags; Laptop carrying cases; Laptop covers; Laptop sleeves; Machine learning software; Media software; Media streaming software; Mobile apps; Mobile app's; Mobile phone covers

 Class 041:  Entertainment Services; Organisation of games and competitions; Arranging and conducting of competitions; Electronic desktop publishing; Games equipment rental; Layout services, other than for advertising purposes; Providing online electronic publications, not downloadable; Electronic game services and competitions provided by means of the internet; Organization of electronic game competitions; Providing electronic publications from a global computer network or the Internet, not downloadable; Multimedia publishing; Publication of printed matter in electronic form on the Internet; Publication of printed matter; Video game entertainment services; Provision of online computer games; Publication of computer games; Audio, video and multimedia production, and photography

Class 042:  Development of computer hardware for computer games; Design and development of computer game software; Website design services; Website design consultancy; Design, creation, hosting and maintenance of websites for others; Hosting of digital content, namely, on-line journals and blogs; Providing temporary use of non-downloadable computer software for use in the creation and publication of on-line journals and blogs

Further below, you can find the USPTO Office Action (letter) telling Zovolt what replies it must give by June 1, 2020.

FORETELLING THE FUTURE: What is likely to happen?  Let's look at different possible scenarios.  

If Zovolt DOES NOT file any Response by June 1, its application will go DEAD and Tim Pool's application will proceed.  Then, very most likely, Tim Pool will get a trademark on Subverse, notwithstanding that there are supposedly conflicting existing marks on Subvert, SBVRSL, and Subversion.  If that topic does come up as a new Office Action with a denial, Tim can file a Response in which he seeks to differentiate the words or the uses.  

 If Zovolt DOES file a Response to the Office Action by June 1, we assume that Response will contain a certified copy of a prior-filed UK trademark registration.  If that happens, then Zovolt's application will be considered first in line before Tim Pool's application.  Zovolt will still need to consolidate its listings of goods and services.  Zovolt will also have to differentiate its trademark and uses from those already in use by the owners of the trademarks on SBVRSL, Subvert, and Subversion.  And then -- the biggest challenge of all -- Zovolt will need to start actually providing the goods and services it is claiming it plans to provide -- and file a Statement of Use SOI with the USPTO.  Assuming that Zovolt actually has a UK prior application, and assuming Zovolt can differentiate its trademark and uses from those existing, then Zovolt will have about 18 months from the date of its initial application to be able to prove it is providing that long list of goods and services shown above.  Zovolt's application was filed on August 13, 2019, which would give them till about February of 2021 to start running all those services and file a Statement of Use.

Thus, it is possible that Tim Pool's trademark application could be suspended until February 2021.  At that time, if Zovolt is actually providing all the services it claims it will, Tim Pool will most likely be shit out of luck, which is the legal term used by lawyers and professionals.

On the other hand, if Zovolt fails to Respond to the Office Action by Jun 1, 2020, then Zovolt is up a creek without a paddle and Tim Pool will most likely get his trademark.  And if that happens, THEN what happens?  Why, Tim Pool and Chris Pool can battle it out in a feud to rival the Hatfields and McCoys, or they can embrace in brotherly love and divvy things up in a more rational way.  

Whichever way this goes, the Summer of 2020 will be one to watch The Pool Boys and see how they resolve this situation.  By the way, if you've never seen the movie, "The Social Network," right now might be a good time to watch it as a primer in how easily business ownership in a tech business can be created.  

NOTE:  I don't know what the trouble is with this document on Scribd.  It is set to Public, and it is supposed to be downloadable and cut and paste.  The full document has been uploaded.  It is a publicly-available government document.  I'll see if I can re-upload it or figure out what the problem is.  

Inventors: Beware of Scams!

Inventors: Beware of Scams!
by Susan Basko, esq.

If you have invented something, you might want to get it patented.  The patent process is difficult and expensive.  And -- it is made more difficult by scammers who are ready and willing to take advantage of you.  This instruction sheet provided by the United States Patent and Trademark Office (USPTO) is quite useful.  Please read it and steer yourself clear of scammers. 

Trademarks for Creative People

Trademarks for Creative People
by Susan Basko, esq.

A trademark is a mark that signifies a good or a service that is in commerce.  Most trademarks are a word or a short set of words.  Some trademarks are a logo.  A few trademarks are a sound.  

Federal trademark registration takes at least a year to complete.  There are many phases to trademark registration.  The process starts with a good search by a lawyer to see if it is likely that your trademark will register successfully.  When I am registering a trademark, I consider the initial search the most important part! If I decide that a trademark is not likely to register successfully, I will tell this to the client.  If I think it will register successfully, but with some legal wrangling, I also let the client know.  If the trademark is not likely to succeed, I offer to help the client come up with a trademark that is more likely to be successful. If your proposed trademark conflicts with an existing trademark, you won't likely be able to register it, and you might get a cease and desist letter telling you to stop using it.

 It is best to have a robust trademark that is unique, creative, original, and all your very own.  A strong trademark helps build a strong business.  Most larger businesses start with one main trademark and then develop and register other trademarks over time.

The next step is to choose the right category of goods or services in which to register your trademark.  This can be very complicated, with many factors involved.  This is why it is important to use an experienced trademark lawyer.

The next step is the application, paying the fee, and uploading "specimens," - which are examples of your trademark in use.  There are lots of very specific rules on what kind of specimens are considered proof for which kinds of goods or services.  The specimen might be a tag or label with the trademark that is attached to the goods for sale.  A specimen might be the trademark used on a website or on a point of sale for a service.

After the application is completed, we sit back and wait.  Then, after about 4 months, a trademark examiner is assigned to the case.  Then, there will be a series of back-and-forth communications between the examiner and the trademark lawyer.  Sometimes the lawyer has to respond to the examiners "office action" or letter with a legal argument or set of facts trying to overcome the examiner's nonfinal refusal.  If everything can get ironed out, the trademark will then go to publication for a month, where anyone can object.  If there are no valid objections, a certificate of trademark is issued about 12 weeks after it went to publication.  That's a long process and one filled with details and lots of work, but a trademark is a very valuable asset.  

Some of the creative people who should consider registering trademarks are:

Bands or music artists should consider registering trademark on their names if they are playing paying shows or if they have sold a series of sound recordings under their name.  If you have the name trademark registered, your name is protected.  If you get a big recording or touring deal, you won't be forced to change your name (and lose the goodwill inherent in the name) because of fears of confusion with a different group.  Your name will be yours.

Online businesses should consider registering the name of their company and/or the names of their services or features. Twitter and Facebook went to great trouble and expense to get trademarks on their names.  If you start an online business, it is best to consult first before you decide on a name.  That way, you can come up with a name that is original and unique to your company.  Then, your trademarks will be much easier to register.  

 Trademarks are a valuable asset.  They signify to your potential customers that the goods or services are authentic and created by you.  A trademark can last the lifetime of the business, as long as it is still being used in commerce.  Think of some of the all-time great trademarks: Nabisco, Kleenex, Clorox, IBM, Apple, Facebook, Twitter, Microsoft, McDonald's, Greyhound.  These trademarks are part of our American life.  Each one of these very strong trademarks signifies to us a set of valuable goods and services, and we expect a certain quality from them.

Trademarks for Cannabis, Hemp, and CBD Products

Hemp Forest.  Photo by Barbetorte. CC license.

Trademarks for Cannabis, Hemp, and CBD Products
by Susan Basko, esq.

Trademarks for cannabis and hemp products are extremely limited.  I have seen quite a number of applications for trademarks, even made by lawyers, that will surely be rejected as they are assigned to an examiner.  I saw an application today that has about 5 lawyers from one law firm listed; apparently none of them bothered to research the law before filing the application.  The application seeks trademark registration on CBD oil used as a dietary supplement; the Trademark Office has specifically stated it cannot register trademarks for any CBD product sold as a dietary supplement.  What will happen?  The trademark examiner will run the lawyers through a long series of inquiries and then will reject the application.  It will be about a year or more until the clients will find out they are not getting a registration.  That whole process will most likely cost the clients tens of thousands of dollars.  The whole thing is a shame because the Trademark Office has been very clear and forthright about how it is handling trademark applications on marijuana and CBD products.

These are the facts as they stand today.  It's not a pretty picture, but this is what it is: 

US Trademarks follow federal law.  All cannabis and THC products are illegal under the federal Controlled Substances Act (CSA), and so trademarks are refused on any such products or services with regard to those products.  Even if medical or recreational marijuana or THC is legal in a State, it is illegal under federal law, and so the US Trademark Office will refuse to register a trademark. Trademarks are also refused on any goods that are considered "drug paraphernalia," which is interpreted very broadly.  Drug paraphernalia is defined and examples listed below. 

The 2018 Farm Bill removed cannabis products from the CSA if they are considered hemp products, meaning they have less than 0.3% THC on a dry weight basis.  This means that CBD (cannabidiol) products that derive from hemp and have less than 0.3% THC are no longer illegal under the CSA -- however, they might still be illegal under the Federal Food Drug and Cosmetic Act (FDCA).  The FDCA prohibits CBD products that are food, beverages, dietary supplements, or pet treats from being in commerce, and therefore, trademarks are refused on these products - since they cannot legally be in commerce.  

CBD products that are food, beverages, dietary supplements, or pet treats are illegal under federal law and so cannot get a US registered trademark.

The FDA states that it has only approved one CBD product as a drug treatment for two rare forms of epilepsy.  The FDA has not approved any other CBD product for treatment for any other illness or condition.  The FDA states it is inquiring regarding the safety of CBD products and lists liver injury and other potential hazards. 

At this time (early 2020), the US Trademark Office WILL REFUSE to register a trademark on the following goods or services:
  • Marijuana, Marijuana extract, or THC as goods, even if the sale is legal in the State in which it is being sold and even if it is medical marijuana.
  • Goods related to marijuana, such as vaporizers, and any "drug paraphernalia," which is listed below.
  • Services related to these goods, such as a marijuana store, delivery services, growing services.
  • CBD (cannabidiol) containing more than 0.3% THC. 
  • Any CBD product containing less than 0.3% THC if it is a food, beverage, dietary supplement, or pet treat.  This would include such things as CBD gummies, drinks containing CBD, CBD capsules or oil to be taken as a supplement, or pet treats containing CBD. 
SO, WHAT CBD PRODUCTS ARE LEFT THAT CAN GET A REGISTERED TRADEMARK?  Possibly CBD oil that contains less than 0.3% THC that is not meant to be ingested and about which no medical claims have been made.  I do not know yet of any trademark that has been registered in this category, but that seems to be the only possibility.  

Trademarks also cannot be registered on "drug paraphernalia," which is defined by the federal Controlled Substances Act as:

"The term "drug paraphernalia" means any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under this subchapter. It includes items primarily intended or designed for use in ingesting, inhaling, or otherwise introducing marijuana, cocaine, hashish, hashish oil, PCP, methamphetamine, or amphetamines into the human body, such as—

(1) metal, wooden, acrylic, glass, stone, plastic, or ceramic pipes with or without screens, permanent screens, hashish heads, or punctured metal bowls;
(2) water pipes;
(3) carburetion tubes and devices;
(4) smoking and carburetion masks;
(5) roach clips: meaning objects used to hold burning material, such as a marihuana cigarette, that has become too small or too short to be held in the hand;
(6) miniature spoons with level capacities of one-tenth cubic centimeter or less;
(7) chamber pipes;
(8) carburetor pipes;
(9) electric pipes;
(10) air-driven pipes;
(11) chillums;
(12) bongs;
(13) ice pipes or chillers;
(14) wired cigarette papers; or
(15) cocaine freebase kits.

(e) Matters considered in determination of what constitutes drug paraphernalia

In determining whether an item constitutes drug paraphernalia, in addition to all other logically relevant factors, the following may be considered:
(1) instructions, oral or written, provided with the item concerning its use;
(2) descriptive materials accompanying the item which explain or depict its use;
(3) national and local advertising concerning its use;
(4) the manner in which the item is displayed for sale;
(5) whether the owner, or anyone in control of the item, is a legitimate supplier of like or related items to the community, such as a licensed distributor or dealer of tobacco products;
(6) direct or circumstantial evidence of the ratio of sales of the item(s) to the total sales of the business enterprise;
(7) the existence and scope of legitimate uses of the item in the community; and
(8) expert testimony concerning its use.

(f) Exemptions

This section shall not apply to—
(1) any person authorized by local, State, or Federal law to manufacture, possess, or distribute such items; or
(2) any item that, in the normal lawful course of business, is imported, exported, transported, or sold through the mail or by any other means, and traditionally intended for use with tobacco products, including any pipe, paper, or accessory.

First, remember that it is not necessary to have a registered trademark to create and use a trademark.  USE of a mark to denote the source of a good or service is how trademarks are created.  You can do that without any registration! Therefore, while the US Trademark Office will refuse registration on trademarks on goods and services that are illegal under federal law, if you are in a State where it is legal to sell marijuana or CBD products, you can use the trademarks of your choice.  Be sure to create your trademark words or images/ logos that are creative and original and that do not infringe on anyone else's trademarks.  You may want to create a file of evidence of your use of the trademark, in case the federal law ever changes.  Then you will have proof you have been using your trademark, where and when you have been using it. 

 It will be interesting to watch and see if marijuana and CBD-based businesses will try to prevent other such businesses from infringing on their unregistered trademarks using State law claims.   Within a State where marijuana and/or CBD sales are legal, it seems likely that businesses will try to prevent each other from "stealing" their names, logos, slogans, etc.  

Second, some States register trademarks.  Illinois, where marijuana has become legal for medical and recreational use, has an Illinois trademark registry.  You can see the Illinois Trademark Registration application form HERE.  

Some other States also register trademarks for goods and services being sold within their States.  These in-state trademarks seem ideally suited to the situation involving marijuana and CBD products, where the US Trademark Office simply will not register trademarks, even if the goods or services are legal in the State.  But, keep in mind, a State trademark provides protection from infringement from within the State, not in other states.  However, since marijuana businesses are State-specific, there is less likelihood that buyers will confuse similarly-sounding businesses in other states.  Still, you might want to choose your trademarks carefully to make them original and unique, even from those used by businesses in other states.  ALSO, you may want to choose trademarks that fit the general rules of the US Trademark Office, so that you will be able to register your mark with the Feds if and when the rules change.  

I used to think of State trademarks as useless and foolish in this day of the internet.  I now see how the State trademark registries could be quite useful when a good or service is refused trademark registry by the US Trademark Office.  

So, a solid trademark plan could be:

1. FEDERAL TRADEMARK?  Find out if your good or service is eligible for a US Trademark.  If it is a marijuana good or service, it is not eligible for a US Trademark.  If it is a CBD (with less than 0.3% THC) good or service, it is not eligible for US Trademark if it is a food, beverage, dietary supplement, or animal treat.  If your good or service is eligible, create a unique and original trademark that does not conflict with any existing trademarks and apply to register it at the US Trademark Office.  Keep in mind, registration is a process that takes about 18 months and has many facets to it.  A trademark registration for a CBD product will require a great deal of interaction between the trademark examiner and your lawyer.  The trademark examiner is required to engage in a series of inquiries regarding all applications for trademarks on CBD products or for other potentially illegal goods or services, where the potential illegality appears on the face of the application.

2. STATE TRADEMARK? If your goods or services are not legal under federal law, but if they are legal under State law, check and see if your State registers trademarks.  Create a trademark or service mark that is unique and original and does not conflict with any already-existing trademarks, and apply to register it with your State.  If you create a trademark that meets the other requirements of US Trademarks, then you will be set to apply to register with the US Trademark Office if and when the laws change.  

3. USE IT ANYWAY!  If you find you cannot register your trademark federally or in-state, you can still use it!  You can create brand awareness with the name and/or symbol you use to denote the source of your goods and services, and you can do that without registering anything at all.  Just do a solid search to be sure you are not infringing on anyone else's trademark.  

4. Get a trademark lawyer.  Don't try to do this on your own.  What I have written here is complicated, and it is the tip of the iceberg.  Trademark law is very complicated!  In the case of trademarks on marijuana and CBD products, a trademark inquiry involves not just the extremely complex trademark law, but also the Controlled Substances Act (CSA) and the Food, Drug, and Cosmetics Act (FDCA).   

5. Prepare in advance for changes in the law.  Keep pictures of your use of your trademark with your goods or services on products, on ads, on websites.  Keep a whole file of evidence as proof you have been using the trademark so you can register it with the US Trademark Office if and when the laws change.  It may take years for the laws to change, but they will likely change at some point, and you want to be prepared.  

Up Down Periscope!
Twitter's New Logo Not Creative Enough for Copyright

Up Down Periscope!  Twitter's New Logo Not Creative Enough for Copyright
by Susan Basko, esq

Back on September 9, 2016, Twitter applied for a trademark registration on the logo shown above, for use on its Periscope service.  The Trademark Examiner at the U.S. Patent and Trademark Office (USPTO) did a good deal of thoughtful work to change the wording and category of service to make it fit the international trademark being sought.  On October 3, 2017, the trademark received a certification for the following uses: 

Providing online entertainment and real time news information, namely, providing news, information and commentary in the fields of entertainment, sports, fashion, education, recreation, training, blogging, celebrity, culture, namely, entertainment, sports and popular culture, and current events via the internet and other communications networks; current event news reporting services; entertainment services, namely, providing audio and audiovisual programs featuring entertainment, namely, news, information and commentary in the field of entertainment, and real time news content delivered by streaming via the internet and other communications networks.

The Design Search Codes used to search the database for possible conflicting designs were:

01.11.02 - Moons, crescent
01.11.02 - Moons, half
01.11.02 - Partial moons, including half moons and crescent moons (not a moon with craters)
01.15.08 - Raindrop (a single drop)
01.15.08 - Single drop (rain, tear, etc.)
01.15.08 - Teardrop (a single drop)
26.01.21 - Circles that are totally or partially shaded.

Trademark protects a mark, which designates the source of a good or service. A trademark might be a word, a design, or even a sound. In this instance, Twitter registered a service trademark on both the word, "Periscope," and on the logo shown above.

Twitter also applied to register a Copyright on the logo, but the U.S. Copyright Office refused to register the design, saying it was not creative enough. Twitter asked for a reconsideration and was denied again. Twitter asked for a second reconsideration and was denied yet again.

Copyright law states that works of visual art made of standard geometric shapes cannot be registered. That includes such shapes as circles, squares, ovals, parallelograms, cylinders, and all other common geometric shapes. Copyright law also precludes other stock elements such as letters, numbers, punctuation marks, the marks on a keyboard, smiley faces, etc. However, arrangements of those elements that are sufficiently creative can have copyright. In denying a copyright for the Periscope logo, the Copyright Office stated that it “does not contain a sufficient amount of original and creative graphic or artistic authorship to support a copyright registration.” The third refusal letter explains, "that there are no elements or features in the design, alone or combined, that are eligible for copyright protection."

The Copyright Board concluded that the logo was the same as a vector point on a map, with slight variation.  "Hence, the Board finds that the selection and combination of the Work’s design elements are not sufficient to render the Work original, because the Work is a mere variation of a standard map pointer vector."

The refusal letter continues, "Further, to the extent that the removal of a small portion of the red circle by placement of a white semi-circle causes the interior of the Work to represent an eyeball, the depiction is simplistic and does not exhibit sufficient creativity to render the Work copyrightable. Rather, the evocation of an eyeball in the Work does not amount to materially more than the layering of one uncopyrightable geometric shape upon another. See Feist, 499 U.S. at 359 (“There remains a narrow category of Works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent.”). Therefore, this basic and elemental rendering of an eyeball does not generate the necessary creative expression. Relatedly, the decision to center common and familiar shapes within a standard industry design does not exhibit the creativity to support a registration."  (The full refusal letter is shown below.)

Okay, so Twitter no doubt paid a small fortune for some designer to create this logo, it managed to pass muster at the USPTO, and the Copyright Office slammed it by relegating it to the “narrow category of Works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent.”

But aren't logos supposed to be simple but memorable?  This and other Copyright refusals on logos leaves me thinking there should be a Copyright category specifically for logos.  Trademark exists to protect logos, but Copyright has other protections.  

Years ago, I did tech work at one of the most famous art museums in the world.  As part of my work there, I attended hundreds of lectures about art, architecture, design, art conservation, etc.  The lectures about modern art works were especially enlightening for me.  There would be an incredibly simple design, or what looked like a sloppy smearing of paint.  The lecturer would explain the process and the meaning of the art work, and by the end of the lecture, I would have a much greater appreciation for the work of art.  

I think perhaps the Periscope logo fits into this same category of modern art.  I see it as simple, but elegant.  Maybe the Copyright Board lacks appreciation for modern art and design.  Have the people at the Copyright Board making these decisions had any formal training in art and design, or have they simply been educated in Copyright law and precedent?  Under the logic of their decision, a gaudy busy design, which could be considered very poor by logo design standards, would most likely be considered worthy of copyright protection.  

Copyright law does not allow several things to be considered in whether to grant Copyright on a work of art.  The amount of time, work, effort, and money it took to create the work cannot be considered.  The underlying meaning or connotation cannot be considered.  That rules out all those meanings explained by art appreciation lecturers.  To an art lecturer, the eyeball shape in the Periscope logo might represent the individual's view of the world around him or her, but at the Copyright Office, it is an eyeball shape, stock, and not protectible by Copyright.  

This might seem like a simple matter, but quite a few other logos have been denied Copyright, even if they have been given a Trademark certificate, which is no small feat in itself.  There is a bit of a logo crisis.

What protections does Copyright offer a logo that cannot be had by Trademark?  Try to think up examples.  The abuses that people can think up seem far-fetched, until they happen.  For example, someone could probably take the Periscope logo design shown above and print it on notebooks, clothing, umbrellas, or toys.  The Trademark only protects the logo in its use to designate the source of those online services in the description.  The logo in itself is not a protected design, does not have Copyright. 

I propose that the Copyright office and/or Copyright law create a new category of two dimensional visual art work specifically for logos.  Logos should be simple.  Logos should be memorable, and thus, should relate to images already known.  Logos will often consist of an arrangement of other elements that in themselves, cannot have copyright, such as letters and shapes.  I propose that a logo department of the Copyright office would be staffed by people who are trained in art and design, as well as trained in Copyright law.  They would be trained to understand and appreciate simplicity of design.