Negotiating New York Royalty Agreements

When negotiating the use of your intellectual property, patent or process in exchange for royalties, these three basic tips are key when commencing negotiating New York royalty agreements and royalty agreements throughout most of the world. This week, we discussed some lessons learned from the recent news that the famed Broadway troupe Blue Man Group was sued over a dispute over royalties brought by a composer as an example of how not to handle setting up a royalty agreement. Here, we’ll discuss factors to keep in mind while negotiating a royalty agreements so you can (hopefully) avoid issues. Words Matter – as do Nuanced Agreements Definitions, requirements and terms do not always mean what you think they mean. That is why you should include a section defining material terms in your agreement. These definitions can be crucial, and must be discussed with your attorneys so that the final document is clear and

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U.S. Patents for New York businesses

The common types of U.S. patents that are available to innovative New York entrepreneurs seeking to protect their  intellectual property falls into three common categories based on the type of invention in question: design, utility and plant patents. Utility patents are chiefly concerned with how an invention functions.  A utility patent may be applied to a wide range of unique and innovative new products or processes. It prevents others from manufacturing, selling, using or distributing your invention.  Utility patents last for 20 years running from the date that the patent application was filed.  In addition to the initial patent filing fees, inventors must submit maintenance fees throughout the life of the patent in order to keep the patent’s protection. Design patents are any enhancement or adornment applied to an existing item or the design for a new product. It protects the aesthetic appearance and can be issued for the appearance, design,

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Use A Cease and Desist Letter in New York

Proper use of a cease and desist letter is the first measure a business can take to protect itself from copyright and trademark infringement – as seen in recent news articles.  GiGi New York sent Gigi Hadid and her Tommy Hilfiger collaboration a cease and desist letter because of the similarities in the styling of their name of a new line of clothing called “GiGi,” which GiGi New York believes has the potential for customer confusion between the brands. GiGi New York has owned their trademark, “GiGi New York” for certain leather goods it produces, but only filed an application for the trademark “GiGi” after Hadid’s recent runway show. A cease and desist letter is a tool that businesses use for any number of reasons including to stop harassment, assert ownership rights, or when they just want to formally tell someone to stop doing something harmful to their business. It

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The Most Common Ways NY Small Businesses Land In Court & Ways To Avoid The Court Room

Everyday, New York small businesses are served with lawsuits that could have been avoided had they implemented some simple practices that help avoid the court room. On average, a business with revenues of $1 million per year will spend about 2%, or about $20,000, per year in legal fees. That means many small businesses pay more, and some spend a lot more, than the average. Since every business needs to keep expenses down to survive, business owners need to recognize the most common legal pitfalls that result in litigation: Sued By An Employee: Employment disputes are some of the most common lawsuits that small businesses face because they come in many forms, including employment discrimination claims, wage claims, claims of unsafe work conditions and EEOC actions.  Putting in place an employment compliance system and understanding some basics of employment law, normally, leads to a less of an opportunity to being sued

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What NYC Businesses Can Learn From The Blue Man Group Royalties Dispute

There are lessons to be learned by fledgling NYC businesses from the recent legal battle over royalties between Blue Man Group and a collaborator. If you are a New Yorker, or a tourist visiting New York City, then you probably know of Blue Man Group, a troupe of street artists that have grown into a global brand.  The group has entertained millions annually.  Recently, a collaborator and songwriter has sued them for breach of a royalty agreement.   Ian Pai’s lawsuit contends that the parties agreed he was entitled to a fixed percentage of box office revenue from performances allocated into a “pool” for composer royalties for 20 songs used in the original Blue Man Group show. Pai alleges that, over time, he noticed a significant decrease in the percentage allocated to the royalty pool and that he is entitled to more money for his songs. Royalties are paid to legal

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Can a Hashtag Be Registered As A Trademark?

Talking to a colleague today, we both came upon an interesting legal question: is a social media hashtag a trademark that one can register? For those who are not familiar with hashtags, it is a word or phrase preceded by a “#” that accompanies text. Hashtags are used to categorize the content of a social media posting on Facebook, Twitter and other platforms, group content together and make social media postings searchable. Businesses use hashtags to promote product and engage audiences throughout social media. Social media platforms have even developed a stream of revenue by allowing businesses and individual to “promote” hashtags and receive preferential listing on their websites. The emergence of social media hashtags has had a huge impact in social media marketing. It is a great way to communicate social media messages, build brand loyalty and associate identifying characteristics with a brand and its audience. According to the

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Recent Intellectual Property Law News: From iPhones and Flight Simulators To Cheerleader Uniforms

Intellectual property rights remain a significant issue throughout the world, as outlined in the variety of claims brought around the world over a wide variety of IP issues. In June, the Beijing Intellectual Property Bureau ordered Apple to stop sale of the iPhone 6 and iPhone 6 Plus for violating a Chinese company’s patent on exterior design.Chinese regulators claimed that Apple violated a patent held by a Chinese company, Shenzhen Baili, for the exterior design of the 100C smartphone. According to Jurist, Apple plans on ending production of the restricted models while planning to appeal the decision. This ruling could create a harmful precedent for Apple throughout the entire country, which has seen its business negatively affected by obstacles of a growing Chinese technology field. In May, a US jury concluded that Google had not violated copyright laws where it used Oracle’s Java programming language to develop its own operating system,

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Federal Trademark Basics: What You Can Learn From The “New York Fashion Week” Trademark Controversy

A growing controversy over the use of a widely-known phrase in the New York fashion industry is a perfect example of why you need to protect your trade names and marks immediately. If you are fashion-forward, or a New York resident, then you have probably heard of the phrase “New York Fashion Week,” which signifies a week-long grouping of events where designers reveal their latest creations put on by the Council of Fashion Designers of America (“CFDA”) and WME-IMG (formerly known as William Morris Endeavor.) Recently, CFDA and WME-IMG were sued by Fashion Week, Inc. for infringing upon its use of the trademarked phrase “New York Fashion Week.” The lawsuit follows a ruling from earlier this year by the Trademark Trial and Appeal Board (TTAB) determining that CFDA and WME-IMG do not have legal rights to the name. In that trademark proceeding, CFDA argued that the trade organization and “its predecessors-in-interest

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Vimeo Prevails in New York Copyright Infringement Appeal

Vimeo, an internet service provider that allows users to upload audio and video content, is not liable for copyright infringement  in New York after the Second Circuit Court of Appeals reversed a Manhattan Federal Court decision. By reversing and remanding the decision of a Manhattan Federal Court, the Second Circuit Court of Appeals has affirmed that the Digital Millennium Copyright Act (DMCA) grants an internet service provider a “safe harbor” from infringement claims, regardless of the publish date of recordings. In the matter of Capitol Records v. Vimeo, Capitol Records sued in Manhattan Federal Court for copyright infringement, claiming that Vimeo should be held liable for users publishing copyrighted materials, including music recorded before 1972. The Second Circuit disagreed, holding that construing DMCA as leaving service providers like Vimeo subject to liability for the acts of users posting materials that may infringe copyright “defeats the very purpose Congress sought to

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Protecting your Intellectual Property in New York: NY IP Law Basics

All businesses, including New York businesses, must take steps to protect their trademarks, brands and other IP.  Our international lawyers work throughout Asia and North America and have seen too many issues because of not implementing an IP Protection Strategy, not registering IP, not understanding the domestic value of IP and not considering the global value and differences in foreign law to U.S. law. Here is what we recommend you must do, at a minimum, to secure your Intellectual Property: Form an IP Audit Team.  Form a team to audit your intellectual property – trademarks, service marks, books, manuals, patents, etc. – to determine what assets you have and what needs to be protected. Your attorney should head, or at least, assist this team. Register your Intellectual Property.  Protect your trademarks by registering them with the USPTO (United States Patent & Trademark Office), which will provide your business, logos, symbols

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IP Infringement vs. Fair Use? Protecting Federal Trademarks in New York State

Seems like a lot of high-profile trademark issues are happening all over New York. A recent federal matter outlines the basics of federal trademark litigation and the arguments a New York business may use to attempt to enforce a trademark against a violator of your trademark. A federal judge in New York State recently ruled that The Car-Freshner Corporation – which makes the pine tree-shaped air fresheners that hang in millions of vehicles across the country –  has demonstrated that it may lay claim to the tree-shaped symbol through its various federal trademark registrations and more than 60 years. Car-Freshner claims that Sun Cedar, a non-profit business based out of Kansas, violated the Lanham Act and New York Law by making and marketing a car air-freshener in the same tree-shape and using a virtually identical symbol that Car-Freshner has registered as its trademark as early as 1961. It further argued

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