Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

As a Buffalo copyright attorney I meet many new authors. A childhood friend of mine recently published a book of songs he wrote and I asked him to share some of his thoughts about the publishing process with my LoTempio law blog readers.

Here is what Alan Gembola had to say:

Can you give us a little background about yourself and how you decided you wanted to be an author of a book?

I’ve always loved music and listening to the radio. In the early 70’s I heard the rock operas ‘Tommy’ & ‘Quadrophenia’ by The Who; at that point I wanted to write.

I eventually got some words down on paper (mostly trash) but kept trying. I was further motivated by Peter Gabriel’s (Genesis) ‘Lamb Lies Down on Broadway’ & bands like Roxy Music (plus a little encouragement from friends).

Eventually I just wrote because it was fun. Around 2001, I decided to make a serious attempt at writing a diverse collection of song lyrics; a unique collection that had a CD & perhaps author notes & illustrations, the seed for ‘Silver & Leather’ was planted.

Ten years later, and a lot of long writing & recording sessions, “Silver & Leather’ is in stock and ready to ship from  Amazon and released on Christmas Day 2011.

How did you find a publisher?

I self-published Silver & Leather. Trying to find a publisher (for a first book author) – I felt – would have taken a lot of resources, with no guarantee of success. I decided to direct what limited resources I did have into creating, publishing, promoting, & distributing ‘Silver & Leather’.

What are some of things you learned about getting the book published?

Besides the numerous technical challenges I faced (with software, printing techniques, font conflicts, CD creation, laptops crashing, etc.) the biggest thing I’ve learned is once you do publish, the project isn’t over; the hard work of marketing and distribution is just beginning.

Can you put together a checklist of things a new writer should know and do?

Here are a few tips that helped me write & publish ‘Silver & Leather’:

• I learned from lyric writing, a good first step is to have a title, theme, or concept.
• Visualize, based on your title/theme/concept, what the finished product will be.
• Start writing (and have fun doing it!) – try to do a little every day (if you’re waiting for “inspiration” to write, you will probably never publish your book).
• Once you feel confident that you’re actually on-track to finish the book, publicly announce a release date – this was a critical step for me and forced me to push myself, to the point of exhaustion, to meet this date.
• When your first draft is complete – edit, edit, edit, edit, edit!
• It doesn’t cost too much to write a song lyric or book; but, publishing does cost. Expect to spend a little money along the way – printing fees, ISBN purchases, copyrights, software needs, giveaways, promotions, and in my case, CD labeling & creation/packaging costs, etc., etc...
• Cut a pre-release (beta copy) and send it select individuals for feedback – this really helped me a lot!
• Once you have the final, final, final version of your book – assign it an ISBN number & bar-code – you are now considered published and can copyright your book as such.

What were the most difficult things you had to overcome to write the book and get it published? What were the things you enjoyed the most about putting the book together?

Silver & Leather was over 9 years in the making; so, most of the actual song lyrics were already written (and many of the vocal tracks were recorded in 2006) – but – organizing them all into a standard format, making last minute corrections, and adding the author notes & CD created some challenges.

As far as the actual publishing, the most difficult obstacle was creating a master file for printing; any little changes can really confuse the printing process. What was enjoyable throughout all this was watching, slowly but surely, my original vision for ‘Silver & Leather’ coming to fruition in every detail.

What would you do differently if you had to do it over again?

Next time I’ll use a lot more outside people and resources. For ‘Silver & Leather’ I’ve done almost every job in the writing, publishing, & producing processes. I won’t for example, edit the book myself or manufacture and package the CD’s for the next project.

What were some of the administrative challenges?

90% of the lyrics were previously registered with the US Copyright Office in 3 different volumes as “unpublished” works (2004, 2005, & 2011). I also was going to copyright a sound recording (‘Silver & Leather The CD’) for the first time with a few new lyrics and other contributing artists.

Somehow, I wanted to combine the entire package into a single copyright for ‘Silver & Leather’ – including the CD. Now that ISBN numbers are assigned, I can proceed with the single copyright for the “published” collection.

What are some of the marketing techniques you use to get your book noticed?

I started with teasers about the release date and progress of the project on Facebook. I then issued a pre-release package of materials to select individuals encouraging them to provide feedback to info@gembolalyrics.com and to share the materials with family & friends.

I opened a website gembolalyrics.com (which by the way is the official publishing company of ‘Silver & Leather’) that provides a link to my exclusive Amazon distributor, Insight Media.

Finally, I created a special workbook edition of ‘Silver & Leather’ designed specifically for my #1 target audience – musical composers. My distributor & I have a lot of great marketing ideas and will have the 2012 plan in place by the end of January.

Who proofread and edited your book for you?

I did the editing myself – never again – a very time consuming and inefficient process that I’m sure didn’t catch all the details it needed to. As far as the research of names, dates, and events called out in the author notes and song lyrics, they were checked by the new internet research company www.onlythefactsman.com.

Are you considering writing a second book? How did you get on Amazon? How did you get an ISBN number?

I have plenty of ideas for a second project but will probably spend most of 2012 promoting ‘Silver & Leather”

I was very fortunate to partner with the well-established, highly rated, Amazon seller, insight_media, who is currently the exclusive distributor for ‘Silver & Leather’s’ hardcover edition, special workbook edition, and electronic edition; insight_media specializes in books and CD’s.

No book critic, retail or online book outlet, library, or school is going to recognize your work without an ISBN number (along with a bar-code, indicating the retail price) assigned to each edition; this serves to clearly identify the details (like binding & number of pages) of your book for the buyers’ information.

ISBN numbers and bar-codes are sold to publishers. In my case I self-published (Gembolalyrics.com) and purchased a block of 10 ISBN numbers and three bar-codes from Bowker (an authorized broker company); as far as I know, this is the only place you can get an ISBN in the United States. If you have a publisher, they will probably have a number & barcode for you.

Is there anything that you would like to share that I didn't ask regarding the process of writing a book and getting it published for sale?

I just want to say thank you to LoTempioLaw.com for the interview and suggest we get together again in a year to see how the marketing plans have worked out. 

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As a Buffalo patent attorney I often get asked questions from would-be authors about publishing and copyright. Dave Kocak tennis pro at the Miller Tennis Center wrote a book called "Tennis for the Rest of Us" and I asked him to share some of his thoughts about the process of writing and publishing a book.

Here is what Dave Kocak had to say:

I've been a tennis pro for about 30 years. I've taught in many venues, resorts, private clubs, country clubs and public clubs. I've worked with nationally ranked juniors, beginning juniors and adults at all levels.

While I've enjoyed teaching them all my favorite groups are beginning and lower level adults. Over 30 years I think I've learned a lot about how to teach adults and I have tried to narrow down the essentials to rapidly becoming the best tennis player you can be.

Believe me when I say "rapidly" I only mean as fast as you can. Unfortunately, there is usually nothing rapid about it.

Most books on tennis tend to be focused on young players with an eye to them becoming outstanding players competing at a high level.

The difference between that individual and a 40 year old woman who has never played a sport in her life is huge. I think those books set up someone like that to fail by creating unrealistic expectations or overwhelming them with information.

I had never seen a book designed for beginners covering all aspects of the game.

My book gives them the essentials of proper technique, simple advice on equipment, leagues, clubs, strategy, advice on selecting pros, getting your kids involved and some of the things to be avoided.

While I think I covered just about everything, I did it in 140 (my readers say humorous, easy to read pages) and not some manual that no one ever reads.

I knew exactly the book I wanted to write because I knew my audience so well. I thought I could self-publish without too much expense and I was right. Going through a conventional publisher seemed either overwhelming (no one likes rejection) or too time consuming.

I'd waited 30 years to write, I wanted to get it out there NOW! There are lots of sites that can help you self-publish, from cover preparation to editing to promoting.

10 Tips About the Process of Writing a Book:

1. You can do it. If I can, anyone can. I took all of the pictures in my book with a cheap digital camera and I've never owned a camera in my life. I've never written anything longer than two typed pages before either.
2. If you tell everyone you are writing a book, pretty soon you have to actually write it.
3. Don't be afraid to let other people read it (not the spouse). Your friends won't want to hurt your feelings but that doesn't mean they won't give you some honest criticism. Listen to their advice, but remember it is your book.
4. If you do not have pictures that are important to the book, Print-on-demand is the only way to go. At least in the beginning, and at least for your first book. You can get as many copies as you like for a few dollars apiece for your own sales and Amazon and Barnes & Noble will carry it online with a very attractive royalty structure.
5. I got 1,000 copies printed because it wasn't much more than getting 500. The difference is that I have an extra 10 boxes of books in my attic attesting to the fact that I don't know how to market. Keep that in mind.
6. My layout was done by a university student who worked on the school magazine and my proofreading was done by a college business writing teacher. Both were excellent but even college kids are kids.
7. If you are writing fiction a lot of this may not apply. I don't know anything about writing fiction.
8. Don't write it if you are not passionate about it. Even then, it's work. second book doesn't have the same internal imperative that the first one had (I HAD to write that one) and consequently is going a little slower.
9. To get a book on Amazon or anywhere else you need an ISBN number. The one or two main companies that handle them sell them in groups of 10 (everyone is likely to write 10 books?) for about $250. You can get individual ones for less than $100. check out the self-publishing sites. There are many that sell them now.
10. An excellent guide to getting self-published is the "The self publishing manual" by Dan Poynter.

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When starting a new business one of the first things that needs to be done is to create a brand. Branding establishes the first impression that your target audience has of your business. Existing businesses sometimes need to re-create their brand.

I once asked an attorney "why does the public perceive you as the best personal injury attorney?" And he simply replied “because we told them in our advertisements.”

So if you're starting a new business or you own an existing business and your look is getting old and you need to upgrade or simply change and you need a fresh set of eyes to look at the situation where do you go?

I found Reagan Burns the owner and creative director at Lime Creative. Reagan and I had a nice conversation and she answered a few questions for me regarding marketing and branding issues.

What are some things a new business should be aware of regarding branding?

So when you're starting a new business you need to create advertising material, packaging, and trade dress of your actual place of business that says "this is who we are."

• Branding
• Advertising
• Marketing

Branding equals "look and feel of the company." The logo operates to allow consumers to identify with the company. We help determine what the company needs such as a logo, slogan or tagline.

How do you come up with new ideas without stepping on other people's legal rights?

When coming up with new ideas we have to be aware of trademark issues and copyright issues. This is where it's important to find a trademark attorney to perform a trademark search and file an application for trademark or copyright registration. Our company will pass clients onto patent and trademark attorneys to determine whether or not a federal trademark has previously been registered.

How do you come up with new ideas?

Our job is to determine what theme you're looking for. For example, a modern versus traditional look in which the target audience can relate. What is the look and feel of the company? How do you present yourself to the world?  Who do you want to become?

You can worry about efficiency while we worry about branding. In fact, not only do we love branding, but we also love worrying about advertising, and marketing, and designing, and inventing creative ways to add a little pizzazz and flavor to your business.

What do you do as far as following up with your branding plan?

Once we come up with a marketing plan it's important to implement it with consistency. Advertising should be memorable and uniformly consistent. Things like color codes and JPEG pixelation's should be consistent throughout the branding. Everything should have a unified feeling and the marketing plan should repeat the trademark over and over.

What rights does the branding company maintain?

Our client maintains all rights to use their logos as they see fit, whereas we maintain portfolio rights in all our work. Portfolio rights allow our company to maintain examples of our work to promote our business.

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Protecting intellectual property on the Internet has been a dilemma for the music and movie industry since peer-to-peer technology emerged with the original Napster.

Recently in an effort to curtail copyright infringement the government has shut down peer-to-peer webpages and the music and movie industry have filed and threatened to file lawsuits against individuals who illegally obtained or shared copyrighted material.

The US government has shut down webpages that facilitate illegal file-sharing through the Immigration and Customs Enforcement (ICE) office of Homeland Security Investigations which executed court-ordered seizure warrants against a number of domain names.

Ben Sisario wrote an article for the New York Times entitled "U.S. Shuts Down Web Sites in Piracy Crackdown” where he stated that

The new seizures also come as a new bill, the Combating Online Infringements and Counterfeits Act, is making its way through Congress. The bill, which was approved by a Senate committee, would allow the government to shut down sites that are “dedicated to infringing activities”... Critics have said the law is too broad, and could affect sites that have nothing to do with file-sharing.

The Electronic Frontier Foundation, an online civil liberties group, has called it “an Internet censorship bill-- a reckless scheme that will undermine global Internet infrastructure and censor legitimate online speech.”

Among the domains shut down was torrent-finder.com and sites that specialized in music: onsmash.com, rapgodfathers.com and dajaz1.com.  it has been reported that at least 70 other addresses had been shut down, most belonging to sites related to counterfeit clothing, DVDs and other goods.

In another attempt to fight copyright infringement and make some money, under the name of the US Copyright Group, the attorneys of Dunlap, Grubb & Weaver are sending out thousands of offers of settlement in lieu of a lawsuit threatening large statutory damages to people for the alleged illegal downloading of certain movies like Hurt Locker and Far Cry.

The Tech Dirt Blog has been following this US Copyright Group closely and has posted a series of articles that cover this story very well.

Dunlap, Grubb & Weaver has sent out letters to thousands of people with this type of language:

Our law firm has filed a federal copyright infringement lawsuit in US District Court for the District of Columbia on behalf of our client is Voltage Pictures LLC we are sending you this letter as a courtesy before we are required to take more formal legal action which would involve adding you as a named defendant in the lawsuit.

The suit was filed against 5000 Doe defendants. We subsequently obtained identifying contact information for many of the defendants from the Internet Server Providers (ISPs) your contact information is supplied to us by your ISP as one of the defendants who illegally obtained or shared our clients copyrighted motion picture through peer-to-peer networking (Gnuttella, BitTorrent etc.) we are sending you this letter is a courtesy before we are required to take more formal legal action which would involve adding you as a named defendant to the lawsuit.

In this letter the "US Copyright Group" cites recent cases against individuals for peer-to-peer file sharing on the Internet where juries awarded large statutory damages. Some incredibly large statutory damages have been awarded by juries in a couple of cases.

• Joel Tenenbaum, a graduate student, was found to have infringed the copyrights in 30 songs and was slapped with damages of $675,000 (Sony BMG Music Entertainment v. Tenenbaum).
• Jammie Thomas-Rasset, a single mother of four, was found to have infringed the copyrights in 24 songs and was hit with damages of $1.92 million. (Inand Capitol Records, Inc. v. Thomas-Rasset).

So basically the jury said for copying about $25 worth of songs the record industry was injured by almost $2 million. How do you justify such a huge award? Talk about crazy runaway juries!

Although these awards were well within the range of statutory damages set by Congress, the federal district courts struck them down, ruling that the damage awards were, respectively, "grossly excessive" and "simply shocking." They’re still going through the appeal process now.

 "Statutory damages must still bear some relation to actual damages." Hon. Michael J. Davis, Dist. Judge, U.S.District Court, Dist. Minnesota, January 22, 2010, Capitol Records v. Thomas-Rasset

Do you or your kids download free songs or movies on the internet? Nate Anderson reported  at  Ars Technica.com that the consequences of an award like these could be life-altering to the average Joe defendant in these types of cases.

Dunlap, Grubb, & Weaver could take her to court, where the lawyers would try to prove her actions "intentional." And once they did that, "our client will be seeking the maximum statutory damages allowed by the Copyright Act in the amount of $150,000 per infringement, attorneys' fees and costs."

A group calling themselves the USCopyrightGroupIsAScam thinks that US Copyright Group is

“extorting through the legal system thousands of people for the supposedly illegal downloading of certain movies like Hurt Locker and Far Cry. Smaller picture companies Like Voltage and others are trying to use these extortion methods to make profits and possibly gain back monies lost to illegal downloading and pirating of their movies."

But what is protectable? And how are companies trying to come up with innovative theories of law to combat what they deem as infringement? 

What if you were to purchase software on a CD in a box and never opened it and wanted to sell it? Timothy Vernor was sued by Autodesk for copyright infringement for selling unopened boxes of software on eBay.

Vernor, claimed his actions were protected under the "first sale doctrine" (codified in Section 109 of the Copyright Act).  Vernor argued that once Autodesk sells its software to a customer, the company shouldn’t be able to control any resales. Vernor asked the court for a declaratory judgment that he was legally allowed to resell the software.

Steven Seidenberg reported in InsideCounsel.com that the “The 9th Circuit panel held, in Vernor v. Autodesk, Inc., that simply by adopting the right legal terminology, copyright owners can license their works instead of sell them-and the resulting licenses can limit what anyone, even third parties, may do with the works. Copyright owners who license their works rather than sell them can limit customers' use."

How will that change the landscape in copyright infringement? Is it too restrictive? The digital age has put a new twist into an old theory of law. For example it used to be you would buy a vinyl record with eight or nine songs on the record. You could play those songs on a record player at your house or your friend’s house and you could physically bring that record from place to place.

But now in the digital world digital songs can be shared by simply e-mailing or plugging your digital player into someone else’s computer. Should  you have a right to listen to that song anywhere on anyone’s computer or digital playing device? Or once you buy a song should you have to keep it on one computer?

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How do you protect your intellectual property? What is intellectual property? Is a special sandwich that you make better than anybody else intellectual property? Imagine you are the owner of a new restaurant who has created a new edible masterpiece. And subsequently, to your surprise, you discover that a copycat sandwich is being made across the street, without your permission.What do you do? What are your remedies?

In a new television commercial, Burger King's mascot breaks into the headquarters of McDonald's and steals the recipe to the Egg McMuffin.

I don't think they can register the work with the U.S. Copyright Office and obtain a certificate of copyright. Can they file an application for patent registration of the sandwich structure?

Remember for something to be patentable subject matter it must be a new, useful and a non-obvious improvement over something that's already out there. You don't see too many patents on food recipes and sandwiches. Maybe a design patent (.PDF), but I doubt that will give them much protection.

It may be argued that the business conduct of Burger King in this instance is actionable under federal unfair competition provision of the Lanham Act. While the Lanham Act, in general, focuses primarily on obtaining, maintaining, and enforcing trademark and service mark rights, Section 43(a), allows for suits for false designation of origin. But I don't think there is a false designation, Burger King comes right out and says we're making our own version of this old sandwich.

And it's not a copy of a trade secret (like the McDonald's special sauce) so I don't think there's any grounds for McDonald's to bring a suit. There is probably not much McDonald's can do to stop Burger King from making their version of the egg McMuffin.

What is protectable is the brand name or the trademark. What Burger King is tacitly saying in this clever breakfast commercial is that, McDonald's doesn't own the rights to eggs, sausage, cheese or English muffins. McDonald's owns the trademark "Egg McMuffin(.PDF)."

John DeVore, recently wrote a Special article to CNN entitled "Big burger boys burgle breakfast." about the commercial showing how Burger King's new BK Breakfast Muffin Sandwich's is just a copy of the classic Sausage McMuffin.

But are McDonald's executives upset with this campaign? Have lawyers been rallied and accusatory calls been made?"We haven't received any direct feedback from competitors," said Brian Gries, Burger King's vice president of marketing impact. Gries further defends his company's choice to be up-front about the similarities between the BK Breakfast Muffin and the McMuffin, saying, "We are not above taking a product that we know customers like and delivering it to our guests at a great price."

I love the guile of Burger King making a full admission in the commercial that they are copying this sandwich. I would love to see the internal memos from the lawyers arguing about whether or not they should allow this commercial to air. It is not like McDonald's has not been involved in a number of lawsuits involving trademark issues in the course of its history. But I think if McDonald's brings a lawsuit in this instance it would fuel of a lot of bad press and they would have little chance of success.

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Tweet of the week

Thanks to Peter Black @PeterBlackQUT for tweeting this week about the importance of teaching children to respect the intellectual property rights of others.

Ben Child, Guardian film writer and blogger wrote that Lord David Puttnam the president of the Film Distributors' Association voiced his concern of the need for new methods to stop  copyright infringement of films through internet piracy.

In a recent keynote speech as president of the FDA Puttnam said that:

"young people needed to be educated at an early age that it was wrong to illegally download copyrighted material"...."The concept of intellectual property and its value needs to be embedded inextricably into the school curriculum."

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A fairness hearing regarding the Google Book Settlement was held on Thursday, February 18, before Judge Denny Chin in a federal US district courtroom in New York City. The copyright class action lawsuit  related to the Google Books Library Project is entitled The Authors Guild, Inc., et al. v. Google Inc., Case No. 05 CV 8136 (S.D.N.Y.).

The lawsuit pits the internet giant Google against thousands of authors, publishers and other right holders, National governments and multi-national corporations, claiming that Google has violated their copyrights and those of other Rights holders of Books and Inserts by scanning their Books, creating an electronic database and displaying short excerpts without the permission of the copyright holders. Google denies the claims.

Today, Judge Chin was hearing statements from interested parties before deciding whether changes made to the settlement could withstand constitutional scrutiny.

The New York Times reported

“Supporters of Google’s effort to create the world’s largest digital library on the Internet told a federal judge in Manhattan on Thursday that the library would benefit society, while opponents said it would infringe on copyright protections and violate the privacy of readers.”

Chad Bray of the Wall Street Journal blog reported “Thursday, U.S. District Judge Denny Chin in Manhattan said he wants to write an opinion at a later date outlining his views, noting there have been “voluminous materials” submitted in the case.”

The Judge will have to decide whether the benefits of the Google Books Library Project outweigh the rights of copyright holders. Is the Google Books Library Project a virtual library that the general public can benefit from or a commercial way to exploit authors without adequate compensation?

Even though the parties appear to be far from settlement some believe that an approvable settlement might be achievable, by requiring rights holders to opt in to the settlement. Amazon, Microsoft and Yahoo oppose the Google settlement.

There is an administration website for the Google Book Search Copyright Class Action Settlement. The site has a claim form for copyright holders to claim a Cash Payment for Books or Inserts digitized by Google on or before May 5, 2009 that must be submitted March 31, 2011 (extended from January 5, 2010). Although there is no absolute deadline to file an Amended Settlement Claim Form.

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I got the opportunity to be a guest on the "On Target" radio talk show hosted by Judge Penny Wolfgang on Buffalo Entercon Radio (WWKB, WWWS, WLKK, WKSE, WTSS).

I really had a great time in the studio recording the half-hour discussion about IP Law. Penny Wolfgang is truly a marvelous interviewer and host. I think she could make any topic interesting. We discussed many of the things an inventor should be aware of regarding patent, trademark and copyright law.

I have to share with you my experience walking into the studio, I ran into a great ambassador for Buffalo, my friend, classmate from St. Joe's high school and now client, the Buffalo "Wing King" Drew Cerza.

As we're walking into the studio we met and shook hands and said, "What are you doing here?" And we both answered, "I am here to do a radio talk show with Penny Wolfgang." Each of us thought maybe we wrote down the wrong day that we were supposed to be a guest on the show. As it turns out two shows were scheduled to be recorded back-to-back. We had a good laugh.

Since Drew's interview was recorded first I got a great opportunity to listen to the President of the Buffalo Niagara Convention & Visitors Bureau talk about all the great things that are happening in Buffalo today. I couldn't help thinking that what makes a place great are the people who live there and people like Penny Wolfgang and Drew Cerza certainly make Western New York a better place to live.

Drew is no stranger to protecting his intellectual property rights. He has registered his mark for the National Buffalo Wing Festival, National Hamburger Festival and his moniker known by one and all across the country the "Wing King.

For specific times on when Penny's show airs, see after the jump.

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