Archives for December 2014 | Intellectual property and business law blog

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Steve O'Donnell, Ph.D. Registered Patent Attorney

Ow! My Balls!

idiocracy3 Remember a little while ago when the Washington Redskins lost their trademark registration because the office decided the name was offensive and everyone that didn’t know anything about trademark law got upset and blew it into a story? Good times, good times.

Anyway, although it doesn’t happen a whole lot, the trademark office will reject marks it things are offensive. Case in point, Comfyballs ™ men’s underwear.

If you can’t tell from the name, the underwear has a pouch in front to cradle and caress (my words, not theirs) the wearer’s wedding tackle. The picture is giving me disconcerting flashbacks to David Bowie as the Goblin King in Labyrinth.

The trademark examiner rejected the application because “balls” (meaning testicles) is considered vulgar. The applicant fought back and argued “balls” isn’t a vulgar term, but the trademark office still disagreed. As of now, there is not registered trademark for Comfyballs, but they might appeal and win. We’ll just have to wait to find out.

So, what does this mean? Can you run out and start selling your own knockoff Comfyballs underwear (presumably next to your knockoff Washington Redskins gear)?

Not really.

A federal registration gives the applicant significant advantages, but the lack of registration doesn’t mean that the owner totally lacks trademark rights. Assuming that Comfyballs and the Redskins are known or available in your state, they have trademark rights and can go after counterfeiters and people that use the marks without permission.

I’m sure the Redskins are known in every state and have a local fan base. Comfyballs might not be sold in every state, I really have no idea, but it looks like they’re trying to get deeper market penetration (heh, heh).

Read your Creative Commons license

Creative Commons is a sharing-friendly license. Creatives post their work online under a Creative Commons license if they’re generally ok with people using their stuff, often with some restrictions.

There are a few flavors of the license that retain more rights than others, so you can make it clear, for example, that people can use a photo or drawings you’ve posted for non-commercial reasons (like their personal blog) as long as they give you attribution. Other licenses will let anyone make commercial use of your work. It seems most people doing allowing commercial uses envision a small business owner using their file on packaging or a website, but what if the commercial use is something more? What if instead of selling a product using someone’s Creative Commons licensed photo on the package, the sale is of the photos themselves?

That’s what’s going on over at Flickr.

Flickr is built on two pegs, the first gives people a place to store their images and lets them order prints of their stuff, the second encourages people to find each other’s images. Flickr allows 7 different license options, so a photographer can allow as much, or as little free-use of their photos as they like. The more liberal Creative Commons license photos on Flickr make up a fair percentage of the pictures found on Wikipedia as well as many other sites.

Some people, like those wonderful, kind people that want people to be able to use their photos however they want, choose the least restrictive licenses. Flickr has run with that and is selling prints of photos licensed for commercial use without cutting the photographer in.

Is that legal? Yup. The photographer has explicitly license the works for free commercial use. Is it wise? I’m not so sure. Flickr has not won many fans this way. If I was Flickr, I would have made it clear that I might be selling prints without compensation instead of just doing it...of course, how many people would agree to that? A better option probably would have been to sell the prints, but cut the photographer in on it. Of course, I’m not Flickr. Flickr is a web service, I’m a man. Still, if someone at Flickr asked me about this, I would have counseled them to cut the photographer in.

Although, maybe that’s their plan. What better way to get some advertising and let people know that they can use Flickr to find images they can use (or buy) than to do something like this? I wouldn’t be surprised if Flickr announces plans to cut the photographer in on print sales to keep them happy and possibly even increase the number of photographers allowing Flickr to sell prints. If so, they’re very clever. If that wasn’t the plan, I think they should take another look at it.

But, I’m not Flickr.