Category Archives: Trademark and Copyright Practice

SAM Client Alert: It’s Time to (Re-)Register Your DMCA Agent

Regardless of whether your company has previously designated an agent to receive notification of claimed infringement under the Digital Millennium Copyright Act (the “DMCA”)—a United States copyright law which, among other things, provides certain safe harbors for internet service providers who may host infringing material—it’s time to do it (again).

Effective as of December 1, 2016, the United States Copyright Office (the “Office”) issued its final rule (codified as 201 CFR Part 201) regarding designation of DMCA agents via the Office’s new electronic system. Under the new rule, any service provider that previously designated a DMCA Agent must resubmit through the electronic system by December 31, 2017, or it will lose safe harbor protection notwithstanding any prior registration.

If you need to register, or re-register, here’s what you should do:

  • Create an Account. In order to designate a DMCA agent using the new system, you must create an account. You may also engage a third party, including your legal counsel, to complete the registration on your behalf.
  • Register Your Company. Once an account has been created, you or your designated representative can log in and register your company and its current agent within the system. The fee for online registration is $6 per designation, which is a substantial savings compared to the paper-based system’s fees of $140 or more.
  • Designate Your Agent. You may determine your agent in one of a number of ways, as it can be (1) an individual, (2) a title or position at your company, (3) a specific department within your company, or (4) a third party. You must then provide the name, address, phone number, and email address of the agent. If you do elect to register an individual agent, be sure to promptly amend the registration if that person departs your company or the relevant role within your company.
  • Verify Your Information. Verify that the information on your website matches the information you are submitting to the Office, and that both are correct. Failing to maintain accurate information and failing to ensure that the two match each create a risk of losing safe harbor protection under the final rule.
  • Re-Register Every Three Years. The Office’s electronic system will send automated reminders to review and renew your designation, and for that reason you should be sure to register with regularly monitored contact information to ensure you receive the reminders. You will also need to re-register upon any change in your agent, even if prior to the required renewal time; doing so will reset the clock on your renewal period.

If you haven’t registered a DMCA Agent, you should do it now—and if you have, you should renew. Failing to follow the new online DMCA agent designation procedures by the end of 2017 may result in the loss important legal protections.

For more information on this and other Safe Harbor topics, contact Nick Feldman at nfeldman@stubbsalderton.com or (818) 444-4500. Nick’s practice focuses on corporate transactions, including mergers and acquisitions, dispositions, private equity transactions and general corporate matters for both public and private clients, focusing on middle-market and emerging growth companies. In addition, Nick counsels companies in connection with entity formation, corporate governance, federal and state securities laws and compliance, joint ventures, employee incentive plans, executive employment agreements and other executive compensation matters.

 

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SAM Attorney Tony Keats Ranked in World Trademark Review’s WTR1000 2017

January 2017 – Stubbs Alderton & Markiles is pleased to announce that partner Tony Keats has been ranked in World Trademark Review’s WTR1000 2017- The World’s Leading Trademark Professionals. The WTR 1000 is a guide exclusively dedicated to identifying the world’s leading trademark legal services providers. Through an extensive research process conducted by a team of highly qualified, full-time analysts, the publication identifies the leading trademark law firms and individuals in over 70 global jurisdictions.

Nicholas Richardson, research editor for the WTR 1000, explains: “A strong brand is vital to success in today’s intensely competitive and increasingly globalized market. Trademarks are key tools through which businesses can protect the goodwill and reputation inherent in their brands, and build and maintain demand for their products and services. As a result, external advisers play a crucial role in developing and implementing brand strategies for both local and international markets and in protecting these vital assets in the face of infringement. It is thus imperative to choose the best legal counsel and the WTR 1000 serves as an essential guide in today’s brand-focused economy – as well as highlighting the health of the trademark marketplace.”

To full the full press from World Trademark Review release visit here. 

Tony Keats is a partner of the Firm and co-chair of the Trademark and Copyright Practice Tony KeatsGroup. Tony’s almost three decade legal career has focused on both the legal and business protection of brands and creative content from consumer products to entertainment, from designer goods to the Internet. Tony’s litigation background also includes related commercial matters involving unfair competition, contract disputes, rights of publicity violations, business torts, domain name infringement, and idea submission claims.

For more information about our Trademark & Copyright Practice, contact Tony Keats at akeats@stubbsalderton.com

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SAM & Traklight present: “IP Basics” with Tony Keats & Mary Juetten

 

 

Join Stubbs Alderton & Markiles, LLP &

Traklight for this exclusive event!

 

“IP Basics”
with SAM Partner Tony Keats, and Traklight’s Marty Juetten

 

Learn about the differences between trademarks, copyrights and patents, and the steps that you need to take to protect the intellectual property of your business, including the introduction of a free business risk assessment.

 

 

Thursday, November 10th, 2016
5:30 PM – 8:00 PM

* Food, Drinks, and Networking Included *

Stubbs Alderton & Markiles, LLP
1453 3rd Street Promenade, Suite 300
Santa Monica, CA 90401

 

Parking
4th Street/Broadway ramp or in the Santa Monica Place Mall

 

Register!

 

Featuring 

 

 

Mary Juetten, Founder & CEO, Traklight
Mary Juetten, founder and CEO of Traklight, has dedicated her more-than-30-year career to helping businesses achieve and protect their success. Specializing in leading companies in transition or start-up phases and helping them create sustainable, operational, and financial growth. Using her extensive education including Bachelor of Commerce degree from McGill and a Juris Doctorate from Arizona State, as well as her US and Canadian accounting and public accountant certifications, Mary created the only self-guided software platform that creates a custom intellectual property (IP) strategy plus assesses business risk. Traklight Pro is lead generation or triage for companies; business, startup & venture, and IP attorneys; CPAs; and other professionals. Mary is an international author, blogger, speaker, and mentor. She previously represented entrepreneurs on the Board of the Crowdfunding Investment Regulatory Advocates and is currently on the Emerging Enterprise Committee of the Licensing Executives Society. In 2015 Mary co-founded Evolve Law, a sales and marketing channel for Traklight and speaks internationally on change and technology adoption in the legal industry. Mary was named to the American Bar Association’s Legal Resource Technology Center 2016 Women in Legal Tech list and the FastCase Class of 2016. She now serves on the Group Legal Services Association (GLSA) Board.

                                                                                                                                                        

Tony Keats, Partner, Stubbs Alderton & Markiles, LLP
Tony Keats is a partner of Stubbs Alderton & Markiles, LLP and Co-chair of the Trademark and Copyright Practice Group. He was a founding partner of Keats, McFarland & Wilson LLP, in Los Angeles, and intellectual property practice team leader for the national law firm Baker & Hostetler. Tony’s almost three decade legal career has focused on both the legal and business protection of brands and creative content from consumer products to entertainment, from designer goods to the Internet. Since he commenced practice, he has provided counsel and has litigated cases on behalf of many of the world’s largest consumer product and entertainment companies, as well as individual entrepreneurs, actors, and musicians. Tony’s litigation background also includes related commercial matters involving unfair competition, contract disputes, rights of publicity violations, business torts, domain name infringement, and idea submission claims.

 

 

Special Thanks to our Sponsors! 

 

Stubbs Alderton & Markiles, LLP is a business law firm with robust corporate, public securities, mergers and acquisitions, entertainment, intellectual property, brand protection and business litigation practice groups focusing on the representation of, among others, venture backed emerging growth companies, middle market public companies, large technology companies, entertainment and digital media companies, investors, venture capital funds, investment bankers and underwriters. The firm’s clients represent the full spectrum of Southern California business with a concentration in the technology, entertainment, videogame, apparel and medical device sectors. Our mission is to provide technically excellent legal services in a consistent, highly-responsive and service-oriented manner with an entrepreneurial and practical business perspective. These principles are the hallmarks of our Firm. www.stubbsalderton.com

Traklight is the only self-guided software platform to identify business risks and capture the value of ideas and intellectual property for small and medium sized businesses (SMBs). In addition to helping SMBs and investors accurately identify and minimize business and legal risks and maximize the value of intangible assets, Traklight licenses its platform to attorneys, other professionals, and software platforms to streamline the client intake process, prequalify and educate customers, and generate additional billable hours or revenue. The company’s leadership role in helping SMBs leverage their company value is supported by a Partnership Program that includes Federally sponsored organizations, trade associations, and industry. Traklight is privately held and headquartered in Arizona. Visit traklight.com to learn more.

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AOP Ventures, Inc. Prevails Against Defendants One Hit Wonder, Inc., Steam Distribution, LLC, Steam Wholesale and Anthony Tellez III for Trademark Infringement of its the Milkman Mark

dclogoStubbs Alderton & Markiles, LLP (SAM) announced today that its client, AOP Ventures, Inc. (AOP), a leading provider of electronic cigarette liquid, prevailed in its motion for summary judgment filed in the United States District Court for the Central District Of California against defendants Steam Distribution, LLC; One Hit Wonder, Inc., Havz, LLC d/b/a Steam Wholesale, and Anthony Tellez III.

At issue in the case was whether the Defendants had acquired sufficient common law rights to their mark MILK MAN based on local sales by Tellez in Whittier, California, sufficient to gain priority over AOP, who launched its popular THE MILKMAN e-liquid nationwide in January 2015.

In her order granting summary judgment to AOP on its claims for trademark infringement, false designation of origin, and unfair competition, the Hon. Virginia A. Phillips, Chief United States District Judge, permanently enjoined Defendants from distributing e-liquid under their infringing MILK MAN mark, ordered the cancellation of Defendants’ California state trademark registration for MILK MAN for e-liquid, and awarded AOP $6,487,861.00 in damages. In so holding, the Court stated:

The Court enjoins Defendants, their officers, agents, servants, employees, attorneys, parents, subsidiaries and related companies, and all persons acting for, with, by, through or under them [“Defendants’ Affiliates”] having notice of this Order by personal service, electronic mail, or otherwise, and each of them, from marketing, advertising, distributing, offering to sell, or selling any product, packaging, or any other item that was named or labeled with the marks MILK MAN, MILKMAN, THE MILK MAN, or THE MILKMAN, or otherwise using said marks in commerce.  The Court orders Defendant’s California MILK MAN trademark cancelled and awards Plaintiff damages in the amount of $6,487,861.00.

Although Defendants had filed counterclaims against AOP and claimed priority based on Tellez’s local sales, the Court rejected Defendants’ arguments and dismissed Defendants’ counterclaims with prejudice.  In doing so, the Court held that Tellez’s sale of eight bottles of e-liquid to two local vape shops were token use, de minimis, and insufficiently public to create trademark rights at common law.  In addition, the Court found that six of the eight Sleekcraft factors for a likelihood of confusion supported a finding of infringement by Defendants.  Most notably, the Court found that the marks MILK MAN and THE MILKMAN were legally identical, and that the goods being sold by direct competitors were legally identical.  Finally, the Court found that Tellez’s sales were unlawful, because the bottles of e-liquid contained nicotine, but did not provide a public warning.  Nicotine is a controlled substance that the State of California has listed as triggering a Proposition 65 warning since 1990.  Because the sales were unlawful, Tellez’s sales could not create trademark rights.

“We are pleased with the Court’s decision, which has vindicated our long-standing position that One Hit Wonder, Inc., Steam Distribution, LLC and Steam Wholesale infringed our well-known THE MILKMAN mark in order to profit from the goodwill we have built up in the mark since its launch in 2015,” states AOP’s CEO, Mike Zhang.  “Aggressively enforcing our trademarks is critical to ensuring that our customers receive the exceptional quality they have come to expect from AOP and our brands. As a global consumer products company that sells to customers across North and South America, Europe, the Middle East, and Asia, AOP is committed to protecting and preserving its rights to its trademarks worldwide.”

“The issues decided in this case are critical to any business relying on common law rights in the absence of a federal trademark registration,” stated AOP’s attorney, Konrad Gatien.  “Not only in the e-liquid space, but also in the growing market for medical marijuana, because that market is regulated from state to state and the United States Patent and Trademark Office is not granting federal registrations for marks used in connection with those goods.”

About AOP Ventures, Inc.

California-based AOP Ventures, Inc. does business as THE DRIP CLUB, and is the creator of THE MILKMAN brand of e-liquid as well as its popular ANML VAPORS, ANML UNLEASHED, and MODUS VAPORS brands of e-liquid. The Drip Club aims to significantly reduce the six million preventable deaths that take place each year around the world due to tobacco and cigarette-related illnesses. AOP is a leader in sales of e-liquid worldwide. The company is led by serial entrepreneur Mike Zhang, and has a diverse and experienced management team comprised of senior managers who have held roles at Goldman Sachs & Co., Facebook, U.S. Bank, and PricewaterhouseCoopers. For more information about AOP and its brands, visit http://www.thedripclub.com/.

About Stubbs Alderton & Markiles, LLP

Stubbs Alderton & Markiles, LLP (SAM) is a California law firm with robust intellectual property, litigation, corporate, public securities, mergers and acquisitions, and entertainment practice groups.  SAM focuses on the representation of emerging growth companies, middle market public companies, large technology companies, celebrities and entertainment companies. SAM’s mission is to provide technically excellent legal services and outstanding results in a highly-responsive, service-oriented, and cost-effective manner. These principles are the hallmarks of our firm.  For more information about SAM and its attorneys, visit http://stubbsalderton.com/

Media Contact:

Heidi Hubbeling
Director of Marketing
Stubbs Alderton & Markiles, LLP
(310) 746-9803
hhubbeling@stubbsalderton.com

 

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Stubbs Alderton & Markiles, LLP Announces Launch of SAM Legal Triage™

SAM High Res Logo 1SAM believes every business venture should have a solid legal foundation. To that end, SAM has partnered with Traklight to help identify your company’s strengths and weaknesses and to provide a road map for investment readiness, future growth and execution of exit strategies. Stubbs Alderton has implemented SAM Legal Triage™, an in-depth questionnaire that will enable entrepreneurs to understand the elements needed to achieve success whether their business venture is high-tech, brick and mortar, B2B, SaaS or mom and pop.

For more information and to take the FREE 10-minute questionnaire, visit www.stubbsalderton.com/sam-legal-triage.

About Traklight

Traklight is the only self-guided software platform that creates your custom intellectual property strategy. By empowering small businesses, entrepreneurs, and inventors to identify their intellectual property (IP), Traklight enables them to protect and leverage their ideas, and to become more educated about the strategies, costs, and implications of their IP.

About Stubbs Alderton & Markiles, LLP

Stubbs Alderton & Markiles, LLP is a business law firm with robust corporate, public securities, mergers and acquisitions, entertainment, intellectual property, brand protection and business litigation practice groups focusing on the representation of, among others, venture backed emerging growth companies, middle market public companies, large technology companies, entertainment and digital media companies, investors, venture capital funds, investment bankers and underwriters. The firm’s clients represent the full spectrum of Southern California business with a concentration in the technology, entertainment, videogame, apparel and medical device sectors. Our mission is to provide technically excellent legal services in a consistent, highly-responsive and service-oriented manner with an entrepreneurial and practical business perspective. These principles are the hallmarks of our Firm.

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Brexit and Intellectual Property Rights

brexitThe withdrawal of the United Kingdom from the European Union will have many consequences for businesses around the globe. However, it appears to be the consensus of expert commentators on the law of the UK and the EU that it is unlikely that there will be any immediate dramatic changes to how intellectual property rights will be treated in the UK.  To read the full publication in the Los Angeles Daily Journal, written by Tony Keats, click here.

Tony-Keats-v2Anthony Keats, co-chair of the Copyright & Trademark Practice. Tony’s almost three decade legal career has focused on both the business and the legal protection of brands and creative content from consumer products to entertainment, from designer goods to the Internet. Since he commenced practice, he has provided counsel and has litigated cases on behalf of many of the world’s largest consumer product and entertainment companies, as well as individual entrepreneurs, actors, and musicians.

 

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Don’t Miss This! June 30th – EXPOSED: Digital Imagery, Drones, Publicity And Privacy

shutterstock_373521769

EXPOSED: DIGITAL IMAGERY, DRONES,
PUBLICITY AND PRIVACY

 

What: 

Join us for a discussion with industry experts about the issues related to Video, Photography, User Generated Content (UGC), and Privacy on the Internet and how it relates to companies here in the Los Angeles entertainment community and Silicon Beach.

When: 

Thursday, June 30th 2016
5:30pm – 8:00pm
Register!

Where:

Parking is in Lot #5 on the corner of 4th Street and Broadway or in the Santa Monica Place Mall

Who:

 

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Five Stubbs Alderton & Markiles’ Attorneys Listed as 2016 Southern California Super Lawyers

Stubbs Alderton & Markiles, LLP is proud to announce that five of their attorneys have been listed in the 2016 Southern California Super Lawyers edition.  Congratulations to Scott Alderton, Joe Stubbs, Kevin DeBré, Tony Keats, and Michael Sherman.

What is Super Lawyers? Super Lawyers is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high-degree of peer recognition and professional achievement. The selection process includes independent research, peer nominations and peer evaluations.  To view the digital publication, click here.

A little bit more about the attorneys:

Scott_AldertonScott Alderton – a founding partner of the Firm, Managing Partner, and a member of the Firm’s Executive Committee.  Scott is co-chair of the Firm’s Venture Capital and Emerging Growth Practice Group and chair’s the Firm’s Interactive Entertainment and Video Games Group.  Scott advises both public and private clients across a number of industries, including technology, manufacturing and distribution of goods in commerce, finance, the Internet, interactive video games, and new media industries.

Joe_StubbsJoe Stubbs –  Joe Stubbs is a founding partner of the Firm, and a member of the Firm’s Executive Committee.  He is co-chair of the Firm’s Venture Capital and Emerging Growth Practice Group, and of the Firm’s Mergers and Acquisitions Practice Group.  Joe practices in the areas of corporate and securities law, emphasizing the corporate representation of both publicly-held and privately-held emerging growth and middle-market companies, venture capital and private equity firms, angel investment groups and investment banks.  He acts as outside general counsel to numerous emerging growth and technology companies, advising on a wide range of legal and strategic issues at all stages of their evolutionary path.  He particularly concentrates on advising companies in preparing for and successfully completing their angel, venture capital, private equity and debt financing transactions, their merger, acquisition and divestiture transactions and their initial and follow-on public offerings.  He also serves as outside general counsel to various publicly-held companies, providing advice on all aspects of their business activities, including securities law compliance and corporate governance matters.  His experience also includes corporate partnerships, restructurings and technology licensing.

Kevin_DeBreKevin DeBré – Kevin D. DeBré is the chair of the Firm’s Intellectual Property & Technology Transactions Practice Group.  Kevin advises entrepreneurs and companies that use intellectual property to build their businesses.  Kevin has particular expertise in structuring and negotiating technology commercialization and patent licenses, strategic alliances, research and development collaborations, trademark licensing and brand merchandising agreements and manufacturing, distribution and marketing arrangements.  He also counsels clients on compliance with data security and privacy laws and regulations.  Kevin is a business lawyer, a registered patent lawyer and a former engineer.  He focuses on representing software companies, semiconductor design firms, mobile commerce businesses, e-commerce enterprises, electronics and hardware manufacturers, media companies, content developers and publishers, biotechnology companies and medical device manufacturers both in the United States and abroad.

Tony-Keats-v2Tony Keats – Tony Keats is a partner of the Firm and Co-chair of the Trademark and Copyright Practice Group. He was a founding partner of Keats, McFarland & Wilson LLP, in Los Angeles, and intellectual property practice team leader for the national law firm Baker & Hostetler. Tony’s almost three decade legal career has focused on both the legal and business protection of brands and creative content from consumer products to entertainment, from designer goods to the Internet. Since he commenced practice, he has provided counsel and has litigated cases on behalf of many of the world’s largest consumer product and entertainment companies, as well as individual entrepreneurs, actors, and musicians. Tony’s litigation background also includes related commercial matters involving unfair competition, contract disputes, rights of publicity violations, business torts, domain name infringement, and idea submission claims. Tony developed intellectual property protection programs for some of the largest entertainment properties in Hollywood history.

Michael_ShermanMichael Sherman – Michael Sherman is a Partner of the Firm and Chair of the Business Litigation practice group.  Michael is an accomplished trial lawyer in high-stakes, “bet-the-company” litigation, and has represented both large and early-stage companies as well as entrepreneurs in all facets of business and complex commercial litigation. He has evenly split his litigation practice on both the plaintiff and defense side of cases, has first-chaired numerous trials in complex matters in industries as varied as energy, securities, healthcare, environmental, consumer products, technology, project development/finance, advertising, real estate and apparel, and is highly skilled in class actions and unfair competition law. Michael’s trial skills and courtroom success resulted in his being named several years ago to the “Top 100 Lawyers” in California list, published by the Daily Journal newspaper chain. He has consistently been named to “Best Lawyers in America”.  Michael has been recognized as a leading trial lawyer by his peers and featured in the press for some of his significant victories on behalf of clients. He is a recent past president of the Los Angeles Chapter of the Association of Business Trial Lawyers. He is a frequent speaker and writer on business litigation and trial advocacy.

For more information about Stubbs Alderton & Markiles, contact Heidi Hubbeling at hhubbeling@stubbsalderton.com or (310) 746-9803.

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SAM ALERT: FEDS TAKE ACTION AGAINST TRADEMARK PROTECTION SCAMS

Trademark RegistrationClients have received unsolicited official-looking mail notifications offering to register their trademarks with various international registries or to have additional trademark protection work done by the soliciting company. The notices often require the trademark holder to pay thousands of dollars for the promised services. As set forth in a federal grand jury indictment unsealed on Wednesday, January 20th, two individuals in Los Angeles, Artashes Darbinyan and Orbel Hakobyan doing business as Trademark Compliance Center and Trademark Compliance Office, were indicted for mail fraud and aggravated identity theft in addition to other related crimes.

The sophistication of these frauds is outlined in detail in the indictment including use of call-answering and mail-forwarding services in multiple cities in California and the Washington,D.C. metro area; setting up these accounts under false names; setting up banking accounts under false names with at least one account transferring funds to a gold dealer, and use of VoIP phone lines which are harder to detect. The indictment is seeking forfeiture of at least $1,850,000 of illegal proceeds in addition to other penalties.

If you receive these types of unsolicited offers and before signing up for such trademark protection services or a listing in a trademark directory, please contact SAM’s trademark and copyright attorneys (818) 444-4500 or info@stubbsalderton.com.

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SAM Partner Anthony Keats listed in the World Trademark Review as one of “The World’s Leading Trademark Professionals”

Tony-Keats-v2Stubbs Alderton & Markiles’ Partner Tony Keats was mentioned in the World Trademark Review’s  2016 list of “The World’s Leading Trademark Professionals.”

The article states: “Anthony Keats has carved a niche for himself in the enforcement sphere, particularly the battle against counterfeiting – he has even co-authored a book on the subject. Having cut his teeth at an IP boutique, he has developed strongly trademark-focused substantive and practical knowledge. His location – the Stubbs Alderton & Markiles office in Santa Monica, colloquially known as ‘Silicon Beach’ – is the perfect platform for his work with start-ups.”

For more information about our Trademark and Copyright Practice, contact Tony Keats at (310) 746-9802 or akeats@stubbsalderton.com.

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