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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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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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 Alert – “.sucks” gTLD – End of Sunrise Period Quickly Approaching

.sucksAs the Internet Corporation for Assigned Names and Numbers (ICANN) has released new generic top-level domains (gTLDS), clients concerned about protecting their trademarks and famous names need to review their positions with respect to “defensive” domain name registrations.  The new gTLD receiving a surprising amount of attention is “.sucks”. Owners of registered trademarks who register prior to June 19, 2015 ( end of ‘Sunrise Period) with the Trademark Clearing House of ICANN will have the first opportunity to purchase the “.sucks” gTLD domain names. Those trademark owners who do not register or are not registered may still have an opportunity to acquire this gTLD . Unfortunately they may also face having to buy the “.sucks” gTLD from cybersquatters or those who seek to criticize the business or activities of the trademark owner.

The Trademark Clearing House fee to acquire the “.sucks” domain name during the Sunrise Period is higher than after the window closes as no priority is guaranteed. So the rights holder must consider how far it needs to go in defensively protecting its reputation or famous marks. Is it important to stop all gTLD’s using your trademark or name? Do you want to have to manage a portfolio of non-productive domain names? While critics of a company or individual might use the new “.sucks” gTLD to launch a website that contains criticism, how much of a difference would such a website make to the business or career of the target?  Couldn’t the same critics more easily use social media such as TWITTER or FACEBOOK to communicate the same criticism and possibly with greater impact and less effort?  A rights holder must also consider how difficult it will be under the current law to be able to stop such websites based on trademark infringement as such websites have been found not to violate owners’ trademark rights. Although the content of the site may be the basis for other legal claims.

Nevertheless, there are certain businesses and personalities for whom the existence of a critical or seemingly defamatory web presence cannot be tolerated. In such instances, obtaining the “.sucks” gTLD as well as “.XXX, .porn, and .adult” gTLD’s makes sense and provides a comfort level knowing that someone cannot post on these websites or hold up the rightful name owner for large sums of  money to acquire these gTLD’s.

Please contact your principal attorney at SAM or SAM’s Intellectual Property Group to assist you in obtaining any of the new gTLD’s during the sunrise period or thereafter.

 

Please contact:

Kevin DeBre-Kdebre@stubbsalderton.com or (818) -444-4521

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Stubbs Alderton & Markiles to Host Silicon Beach Fest Legal Panel: “Dispute Resolution 1.0”

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For the third year in a row, Stubbs Alderton & Markiles will be a sponsor of Silicon Beach Fest LA.  This year, SAM is the featured Legal Panel on June 19th, hosted at our Santa Monica office, with a reception to follow.  Here’s the low down:

 

“Dispute Resolution 1.0 – What Every Startup Needs to Know About Disputes and How to Minimize the Risk of Litigation”

 

 

June 19th, 2014

4:00-6:00 pm – Panel Presentation
6:00-8:00 pm – Reception in 2nd Floor Courtyard

**You MUST register on the SIlicon Beach Fest site in order to be admitted to the event**

Register!

What You’ll Learn: 

 

Experience shows that the average cost to a business for participating in a breach of contract dispute, IP/trade secrets dispute, employment dispute or other business-related dispute runs hundreds of thousands of dollars in legal fees alone.  Basic does and don’ts on licensing, non-competes, founder disputes, cybersecurity – all of these can sink a young business.  There are ways for a company or entrepreneur to minimize the risk of becoming embroiled in a dispute.  Equally important, how a company or entrepreneur handles disputes oftentimes is the difference between business success and failure.

Hear our panel of national experts drawn from the world of start-ups/entrepreneurs, trial and IP lawyers, and professional mediators provide some basic advice on how to best position your company to avoid those types of disputes in the first place, and to also provide some strategies about what steps to take if and when a dispute that cannot be easily resolved, is brewing.

The Panel

 

Moderator:  Daniel Garrie, one of the most sought-after computer forensic experts and special masters to advise federal and state judges around the country. In addition to his law degree, he holds a masters in computer science and appears as comfortable talking with entrepreneurs as he is with developers, as he is with lawyers and judges.  His national reputation in the intersection of computer forensics and the law makes him a sought-after speaker and expert in the field, and just last week he was featured in a New York Time article on cyber-security and law firms; you can view the link at: http://dealbook.nytimes.com/2014/03/26/law-firms-scrutinized-as-hacking-increases/

Panelists:

Bruce Friedman –   During his 20+ years practicing law, Bruce received just about every professional accolade out there, served as large law firm general counsel, represented name brand companies, and carved out a niche as an expert in professional liability and insurance coverage.  Since becoming a full time mediator in 2013, he has seen his career flourish, as more and more lawyers and clients in LA realize what an outstanding addition Bruce makes to the mediation marketplace.  He is presently with ADR Services in Century City.

Tony Keats – Partner, Brand Development and Content Protection Chair, Stubbs Alderton & Markiles, LLP. 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, top designer fashion brands 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 is also the author of the best-known treatise on brand protection and counterfeiting on the market today, widely used by practitioners.  Not coincidentally, as part of his trademark/brand protection practice, Tony has served as a mediator in many IP-related disputes.

 Michael A. Sherman – Partner, Business Litigation Chair, Stubbs Alderton & Markiles, LLP –  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 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”.

Chris Colvin –   Chris is a former engineer with a technical degree from Princeton, who went on to law school and a stint as a partner in a major NY firm (Kramer Levin) before he started his own NYC-based IP firm a few years back.  In addition to his “day job” as an attorney specializing in IP litigation, Chris founded two social networking sites, Ivy Life, focused on alums of the Ivy League, at http://www.ivylife.net  and In The House, focused at In House Counsel, at http://i-t-h.org.

The Courtyard Party! 

6pm-8pm
2nd Floor Courtyard
1453 3rd Street Promenade

FREE to attend when you flash your Silicon Beach Fest pass!  

Enjoy free food and drinks with like-minded entrepreneurs and startup leaders fueling innovation in Los Angeles!  Stubbs Alderton & Markiles, LLP invites you to join us at ourSilicon Beach Fest Courtyard Party in our newly expanded Santa Monica office on 3rd Street Promenade.  

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SAM Client Alert – New Domain Names and the Trademark Clearinghouse

Important Business News From

Stubbs Alderton & Markiles, LLP

New Domain Names and
the Trademark Clearinghouse

 

The new generic top level domains (gTLDs) are continuing to launch in 2014. While there were previously only 22 top level domain names (e.g., .com, .net) and the various country code registries (e.g., .co.uk, .de), within the next year there may be as many as 1,500 active top level domains, each with their own registries.

To assist you in protecting your trademark rights as much as possible, The Trademark Clearinghouse will allow trademark holders to submit their trademark information to a one-stop shop centralized repository. After verification, the trademark holder will be able to register its corresponding domain name(s) during the pre-registration period of multiple TLDs – also known as the “Sunrise period”. Trademark holders will also have the option to be notified when someone registers a domain name that matches their record in the TMCH.

An application to the Trademark Clearinghouse serves two main purposes:

1) Participation in the Trademark Clearinghouse is the only way to pre-register brands in the sunrise-phase which precedes all new gTLD launches. This process will greatly reduce the administrative burden and associated costs for trademark holders.

2) During the Trademark Claims period 60 days after the Sunrise period, trademark holders may choose to be notified immediately when someone registers a domain name, in any of the new gTLDs, that match the registered trademark.

For more information about how to register your marks with the Trademark Clearinghouse, or if you would like more information about our Brand Development & Content Protection practice, contact Jeff Gersh at jgersh@stubbsalderton.com.

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Important Business News from Stubbs Alderton & Markiles, LLP – New California “Do Not Track” Law Goes into Effect January 1, 2014

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Important Business News

from

Stubbs Alderton & Markiles, LLP

New California “Do Not Track” Law Goes into Effect January 1, 2014

 

Beginning January 1, 2014, AB 370, an amendment to the California Online Privacy Protection Act (CalOPPA), will require owners of commercial websites to disclose how they respond to “do not track” signals and to inform users of these websites if their online activities are being tracked. “Do Not Track” technology enables a web browser to express the user’s preference not to be tracked by websites. When this feature is activated, a user’s browser signals to advertising networks and other websites the user’s choice to opt out of being tracked.

This new law does not make it illegal to ignore “do not track” settings on web browsers. Instead, it requires each business to disclose whether or not they ignore these settings. The law also requires each business to disclose whether its website tracks over time and across other websites the online activity of consumers residing in California who visit the website or if the business allows third parties to track the website’s visitors. Failure to comply with the new law could lead to significant fines enforced by the California Attorney General.

Here are some suggested business practices for adapting to the new law:

  • Conduct an audit of your website. Determine how your website responds to “do not track” browser settings and signals and whether your business permits third parties to conduct tracking activities on your website.
  • Update your website’s privacy statement. California business owners should update their website’s privacy statement by January 1, 2014 to include disclosures about how the website responds to “do not track” signals.

How Stubbs Alderton & Markiles, LLP can help. We are a business law firm with particular expertise in privacy and Internet law. Our attorneys have extensive experience in developing effective and legally compliant privacy statements for websites. Please contact us directly if you would like assistance in updating your website’s privacy statement to comply with the new “Do Not Track” law.

For any questions, please contact Kevin DeBré, Scott Alderton or Stephen McArthur.

Kevin DeBré
kdebre@stubbsalderton.com
818.444.4521

Scott Alderton
salderton@stubbsalderton.com
888.444.4501

Stephen McArthur
smcarthur@stubbsalderton.com
310.746.9823

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SAM Attorney Stephen McArthur Featured on Gamasutra.com – “Responding to Intellectual Property Theft: How to Protect Your Game Without Damaging Your Company’s Reputation”

Stephen McArthurSAM intellectual property attorney, Stephen McArthur’s article, “Responding to Intellectual Property Theft: How to Protect Your Game Without Damaging Your Company’s Reputation” is featured on the front page of Gamastra.com

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Over one billion people worldwide will spend a total of $65 billion this year playing video games.[1]  That makes the video game industry bigger than the Hollywood film industry and twice the size of the music industry.  These lucrative numbers are highly attractive to copycatters looking to grab even a tiny slice of that market share.  We’ve seen it with mobile apps copying Tetris[2], the countless League of Legends clones that seem to pop up every week, such as 300 Heroes[3], and more worryingly, even the boutique studios often have their work ripped off, such as Spry Fox’s Triple Town[4].

In this article I’ll provide guidance to game developers who need to protect their brands, creative work, and other intellectual property (“IP”).  I will explain six options a video game company should consider whenever its IP is at risk: an open letter to the media, a polite cease and desist letter, an aggressive cease and desist letter, a DMCA takedown notice, mediation, and, finally, litigation.  For each of those options, I will provide real life examples of how a company handled the exact situation and what the result was.

To read the full article on Gamasutra.com, click here.

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For further information on intellectual property law pertaining to video games, please contact Stephen McArthur at (310) 746-9823 or smcarthur@stubbsalderton.com

 

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