Author: David

I am a the founder of a boutique intellectual property law firm based in Chicago, Illinois. In my role as a trusted advisor, I act as the primary transactional attorney for my clients, reporting directly to a company’s executive staff and/or its General Counsel. I provide advice to business units and executives on copyright, trademark, ecommerce, software/IT, media & entertainment and issues associated with creating and commercializing innovations and creative content, drafting and negotiating contracts and licenses, advising on securities laws and corporate governance and managing outside counsel. My clients frequently rely on me to successfully draft and negotiate complex commercial and intellectual property transactions such as supply/distribution agreements, IP development and license agreements and documentation related to mergers, acquisitions and divestitures.
Advertising, Affiliate Marketing, Business, FTC, Marketing

Ping® By Adlerlaw – FTC Notices Concerning Product Claims In Advertising

Advertisers delight in activating values and hidden desires of consumers using the language of the advertising claim. The “claim” is the part of an ad that makes some claim of superiority for the product being advertised. These days it is difficult to recognize those that are misleading and even downright lies, because most fit into the category of neither bold lies nor helpful consumer information. When consumers see or hear an advertisement, whether it’s on the Internet, radio or television, or anywhere else, federal law says that ad must be truthful, not misleading, and, when appropriate, backed by scientific evidence. 

Read the key take away from the Notice HERE.

Advertising, Branding, Business, Design, Infringement, Law, Trademarks

Ping® By Adlerlaw – The Importance of Trademarks for Lighting Designers.

A recent Trademark Trial and Appeal Board (TTAB) decision is noteworthy for the lighting-design industry. This trademark application rejection sheds light on strategies for lighting designers seeking to protect their trademarks. This begins with the approach to the application process itself. 

In In re B-K Lighting, Inc., Serial No. 88769422 (January 27, 2023) [not precedential], the USPTO refused to register “AGI2” for “lighting fixtures,” finding confusion likely with the registered mark “AGI & Design” for lights, lighting assemblies, and light fixtures for architectural signage. As is often the case, applicant B-K Lighting was left scrambling to distinguish its trademark from the cited “AGI & Design” registration. The TTAB’s analysis of nature and relatedness of the goods, the trade channels, and the classes of purchasers, may be helpful to other brands in the lighting industry when trying to protect their trademarks.

Read the full article here.

Business, Contracts, Design

Ping® By Adlerlaw – Illinois Evidence Rules on Admissibility of Cell Phone Video

This month’s issue of Ping® highlights Illinois rules regarding use of iPhone-recorded video in a criminal trial. In case you missed it, my article, “Six Things You Can Do to Improve Your Contracts,” from ASID Impact Illinois Magazine, Issue Two, 2022, is discussed below.

Six Things You Can Do to Improve Your Contracts.

In case you missed it, my article “Six Things You Can Do to Improve Your Contracts” appeared in ASID Impact Illinois Magazine, Issue Two 2022, pages 22-24.

Here’s a quick summary.

If you have questions about your business, or about contracts, or if you need assistance navigating the process, please feel to contact me for more information. (866)734-2568 and David [at] adler-law.com

Illinois Rules About iPhone-Recorded Video in a Criminal Trial.

Cell Phone Video. We all have it. We all use it. But what if we need to rely on it in a Court of law to prove – or disprove – a version of the story that’s being told.

We all know how easy it is to fake video and there’s a whole category that’s so credible is hard to prove it’s fake. A free press should tell the truth. But as Pontius Pilate asked, “What is truth?” Who decides what is true? And who should compel the press to “tell the truth”? 

In his article, “Illinois Supreme Court Rules on Admissibility of Cell Phone Videos,” Criminal Law FLASHPOINTS, January 2023, author Matthew R. Leisten of the Ogle County State’s Attorney’s Office, discusses People v. Smith, 2022 IL 127946, an Illinois Supreme Court case upholding the state’s use of iPhone-recorded partial video clips from a building’s surveillance cameras in a burglary trial. Read more here.

Business, Copyright, Creative Content, Entertainment, Scriptwriting

Ping® by AdlerLaw – Important Reasons To Register Your Copyright

Copyright law protects the expression not the idea.

Many writers worry about “idea theft,” using it as the reason they don’t tell people about their projects, won’t publicaly post their loglines, or won’t apply for contests and fellowships. But the fact is, copyright law only protects the expression of an idea, not the idea itself. Lots of films and television shows have similar concepts.

But what do you do if you believe your actual script or deck, or other materials were stolen? I recently received a call from a prospective client with that very concern. Read more here.

Uncategorized

Ping® by AdlerLaw Nov. 2022 – Fair Use, Trademarks & Cybersecurity

November 2022

Check out the November 2022 issue of Ping® by AdlerLaw. This issue looks at emerging Copyright & Fair Use issues, tools for protecting Trademarks and cybersecurity best practices. Read More Here Read more here: https://www.conta.cc/3ElC7MH

Business, Contracts, interior design

Ping® by AdlerLaw – Structuring Interior Design Purchasing Fees

I originally intended to call this article Challenges For Structuring Interior Design Purchasing Fees and Mark-ups, but felt that might be too alarmist.

Nevertheless, Interior Designers often find it challenging to craft the best structure and find the right way to charge clients for interior design services, as well as related services like purchasing and project management. Whether you plan to start up an interior design business or you are already a seasoned interior designer, having clear terms on charges for art, furniture, finishings, fixtures, and other decorative items (sometimes generally referred to as “FF&E” for convenience), will avoid problems in the future. I find a lot of designers tend to skew toward vague and general terms about how marks-ups are calculated and charged.

Another wrinkle arises if the Designer obtains items exclusively through trade-only sources, since there is no “retail” equivalent. The Designer has developed relationships with vendors and service providers enabling Designer to receive pricing and availability not accessible to the public at large. 

Interior Design contracts cases rarely make headlines. That’s why a recent case in Virginia is worth noting.  In the U.S. District Court for the Eastern Dist. of Virginia case of Tanya M. Johnson v. Robert Shields Interiors, Inc., the contract for interior design and decorating services, including purchasing furniture, authorized a ten percent (10%) markup on shipping and related services but did not provide for any other markups, commissions, or fees. Johnson v. Robert Shields Interiors, Inc., Civ. No. 1:15cv820, 20 (E.D. Va. May. 11, 2016)

At trial, plaintiff proved that the designer never provided any receipts, vendor invoices, or purchase orders, to show commissions or rebates received from the vendors, and the designer further refused to provide proof of the furniture charges and shipping costs when asked. Discovery revealed that the designer was secretly marking up most of the furniture sourced for the client by anywhere from 35 to 100 percent. Although the Court entered a default judgment for the plaintiff for the defendant’s failure to appear at trial to defend himself, the court did analyze the breach of contract claim and did state that the designer’s “undisclosed markups on items procured for plaintiff are a breach of the Agreement.”

Also worth noting is the Court’s analysis of the claim for violation of the Virginia Consumer Protection Act (VCPA). The Court stated that the failure to disclose “rebate and commission arrangements with its vendors” and “charg[ing] … undisclosed markups for many of the furniture items procured,” such as “$4,800.00 for a lounge that only cost $2,481.00, and $11,000.00 for a table that only cost $5,999.40” satisfied the VCPA’s prohibition against using deception, fraud, false pretense, false promise, or misrepresentation in connection with a consumer transaction.” 

Link https://casetext.com/case/johnson-v-robert-shields-interiors-inc

Given my experience working with interior designers, the designer in the Johnson case no doubt believed that because the contract was silent on the amount of the mark-up that he could charge, he had discretion to charge whatever mark-up he chose.

To avoid these headaches, it is important to be clear about how purchasing fees are structured. This can be done several ways. First, if you intend to charge for your time spent during the purchasing process, then include that in your contract. For example “Designer shall charge it standard hourly rate for all time spent on the procurement of furniture and decorative items.” 

Second, if you intend to charge a flat fee for the purchasing process, then be clear about whether that fee includes your fees. For example, the following clause comes from another case [Marcus v. Marlene Dennis Design, LLC] https://www.virginiabusinesslitigationlawyer.com/wp-content/uploads/sites/52/2022/07/Marcus-Complaint.pdf that also made headlines.

Here is the clause at issue:

“Furnishings, rugs, artwork, decorative lighting and accessories not to exceed $250,000. Designer and client to review Furniture Plan and agree on the items to be re-purposed and to confirm that $250,000 is an appropriate amount given the items required.”

This clause is simply too vague. For example, it is unclear what is included in the $250,000 sum.

Key Take Away:

Contract language that governs fees on purchasing services, commissions on the goods, and/or third-party services, must be clear and unambiguous as to how the fee is calculated, what purchases are subject to the fee, whether discounts are available, and how they’re applied, if at all.

For answers to these and other mission-critical business issues faced by designers, please contact us today for a no-fee, limited, no-obligation consultation. (866) 734-2568. http://www.adler-law.com

Uncategorized

Ping® by AdlerLaw A Note On Protecting Descriptive Words

When a party seeks to protect a mark that is unregistered, the plaintiff has the burden to establish its entitlement to protection under the Lanham Act due to the “distinctiveness” of the mark. Platinum Home Mortg. Corp. v. Platinum Fin. Grp., Inc., 149 F.3d 722, 727 (7th Cir. 1998).

“The first step in determining whether an unregistered mark or name is entitled to the protection of the trademark laws is to categorize the name according to the nature of the term itself.” Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1085 (7th Cir. 1988). “Marks are often classified in categories of generally increasing distinctiveness . . . they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); see also Packman v. Chi. Tribune Co., 267 F.3d 628, 641 (7th Cir. 2001).

A generic term is “one that is commonly used and does not identify any particular source and therefore, is not entitled to any trademark protection.” Platinum Home Mortg., 149 F.3d at 727. A descriptive mark “describes the ingredients, qualities, or characteristics of an article of trade or a service” and may be protectable. Id. (internal quotation marks omitted). A suggestive mark “stands for an idea which requires some operation of the imagination to connect it with the goods.” Id. (internal quotation marks omitted).

While a term that is suggestive is automatically entitled to trademark protection, if a term is merely descriptive, the plaintiff must show that it has acquired “secondary meaning in the collective consciousness of the relevant community.” Id. Courts consider several factors when deciding whether secondary meaning has been established: “(1) the amount and manner of advertising; (2) the sales volume; (3) the length and manner of use; (4) consumer testimony; and (5) consumer surveys.” Id. (internal quotation marks omitted).

Sometimes this issue arises in the context of competing restaurants. Courts will focus on the ‘salient portion’ of the marks. Sullivan v. CBS Corp., 385 F.3d 772, 777 (7th Cir. 2004)) The Court compares the parties’ marks in the context of what happens in the marketplace, not necessarily by looking at the two marks side by side. Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 898 (7th Cir. 2001). Where “the public will encounter the marks in written as well as spoken form . . . it is essential to consider the marks’ visual characteristics” as well. Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1044 (7th Cir. 2000). 

If you do choose a descriptive name for your restaurant, the name may not be subject to attack based on dictionary definitions linking that term to eating, drinking or entertainment establishments, and on news articles with uses of either in relation to such establishments.

If the term is found to be “highly descriptive,” you will need to prove that the term has acquired “secondary meaning. This can be done by:

  • Showing the term has a double meaning in the minds of your customers 
  • Showing your sales and advertising 
  • Showing how third parties refer to your mark on social media, in articles, or in communications.
Business, Contracts, Design, Entrepreneurs, Law, Legislation, llinois, New York

Ping® by AdlerLaw July 2022 – Recent State Laws in Illinois & New York Affect Contractors, Interior Designers

This month’s issue of Ping® highlights recent changes in State laws in Illinois and New York. Effective January 1, 2023, Illinois joins at least 18 other states to have a Title Act authorizing Registered Interior Designers to seal any bound set or loose sheets of technical submissions. This change can only benefit everyone in the industry including, designers, tradespersons, and most importantly, consumers. Also noteworthy is New York’s legislative approval of NY State Senate Bill S8369B relating to protections for freelance workers. The Freelance Isn’t Free Act (the “Act”) if signed, would amend the New York Labor Law to establish rights for covered freelance workers such as the rights to receive a written contract, receive timely and full payment, and freedom from retaliation. 

Illinois: Legislation relating to Registration & the Scope of Practice of Interior Designers

Effective January 1, 2023, Illinois joins at least 18 other states to have a Title Act authorizing Registered Interior Designers to seal any bound set or loose sheets of technical submissions. This change can only benefit everyone in the industry, designers, tradespersons and most importantly, consumers as it will expedite some customary but often needlessly duplicated tasks.

The Title Act puts no stumbling blocks before those who wish be interior designers. These statutory provisions and rules do not regulate the practice of interior design – anyone can offer to provide and provide interior design services in Illinois. The Illinois act only regulates the use of a specific title – “Illinois Registered Interior Designer.”

Illinois is one of 19 states, including neighboring Minnesota, Wisconsin and Iowa, that have voluntary title registration for interior designers with no permitting authority. In addition, 21 other states, including Michigan, have no title laws or permitting authority for interior designers at all. Proponents of regulating interior design submit that interior designer registration requires industry recognized credentialing and rigorous testing.

If you have questions about the Act’s application to your business, or about the pros/cons of becoming a Registered Interior Designer, or if you need assistance navigating the credentialing process, please feel to contact me for more information. (866)734-2568 and David [at] adler-law.com.

New York: State Legislature Approves Statutory Protections For Independent Contractors

New York’s legislative approval of NY State Senate Bill S8369B relating to protections for freelance workers. The Freelance Isn’t Free Act, if signed, would amend the New York Labor Law to establish rights for covered freelance workers such as the rights to receive a written contract, receive timely and full payment, and freedom from retaliation. 

The Act establishes protections for certain freelance workers providing services for entities located in the City. The New York State Legislature had earlier this month approved a bill providing similar protections to freelance workers throughout the state. If signed by the Governor, the Act will take effect 180 days after signing and apply to contracts entered into with certain independent contractors on or after that effective date. The Act mirrors the City-specific text in almost all respects and amends the New York Labor Law to establish protections for covered freelance workers, including establishing rights for covered freelance workers such as the rights to receive a written contract, receive timely and full payment, and freedom from retaliation.

Independent Contractors

If you or your business is contracted to perform specific work for an “employer,” according to your own process, using your own resources, and outside the daily control of the employer, you are an independent contractor. Independent contractors are not considered employees. This creates risk and benefits for both parties. Considered self-employed, independent contractors do not receive most of the rights and benefits that employees receive from employers or by virtue of federal and state employment laws, particularly the Fair Labor Standards Act. In addition, independent contractors are responsible for paying all applicable federal, state and local taxes from the income you receive. However, civil rights law does apply to independent contractors in their relationship to employers. Independent contractors go by many names, including, freelancer, contractor, or consultant.

However, unlike an employee, the terms of the relationship between an independent contractor and the employer are subject to negotiation and may not always be presumed or mutually understood. For example, the terms of your work assignment, and who owns the finished (or in process) work product. For example, if you are a photographer working as an independent contractor, you retain the copyright to your photos even after delivering it to the employer, unless you have a written agreement explicitly stating the services are “work-made-for-hire,” specially commissioned, or otherwise assigned away. As an independent contractor, you will be paid according to the terms of your agreement, not according to the employer’s customary payroll. One of the biggest challenges for independent contractors is getting paid, but these risks can be addressed by properly considering  this issue prior to commencing work.

Focus | Vision | Perspective | Passion

Executives and creative professionals face an often confusing and dynamic set of challenges trying to ensure that their business remains legally compliant. Yet few can afford the highly-qualified and versatile legal staff needed to deal with today’s complex and inconstant legal and regulatory environment.

Adler Law Group is a boutique Entertainment, Intellectual Property & Media law firm created with a specific mission in mind: to provide businesses with a competitive advantage by enabling them to leverage their intangible assets and creative content in a way that drives innovation and increases the overall value of the business. Although we are a highly-specialized law firm, we counsel on a broad range of interconnected issues by leveraging synergies created where Intellectual Property Law, Contract Law and Corporate Law overlap.We approach our relationship with each client as a true partnership and we view our firm as an extension of their capabilities. Our primary value is our specialization on relevant and complex issues that maintain the leading edge for our clients. We invite you to learn more about the services we offer and how we differ.

Advertising, Affiliate Marketing, Business, FTC, Marketing, Social Media

Ping® June 2022 – FTC Updates Endorsement Guides 2022 Part I

The Federal Trade Commission (“FTC”) approved a request for public comment related to updating its Guides Concerning the Use of Endorsements and Testimonials in Advertising. These are better known as the “Endorsement Guides” or just the “Guides.” The current version of the Guides can be found at 16 CFR part 255. These updates were released in May 2022.

The proposed updates are fairly sweeping and touch many aspects of the Guides. I recently discussed these updates at AM Days as part of Affiliate Summit East in New York. Here are the highlights from responses to the questions I get most frequently.

Read the article HERE.

Advertising, Affiliate Marketing, Business, Compliance, Content Development, Facebook, Influencer Marketing, Law, Marketing, Technology

Ping® May 2022 – Improving Affiliate Engagement

Affiliate Marketers: Want to learn best practices, strategies, and tactics from a seasoned legal professional who works with businesses and regulators at the federal and state levels? 

David Adler takes clients through the ins-and-outs of providing advertisers, merchants, agencies and affiliates the tools they need for running a trustworthy and successful business.

On May 25, 2022 David Adler is presenting Trafficking in Trust: How to Enhance Affiliate Engagement an AMDays Workshop at Affiliate Summit East 22. In case you can’t make the presentation, here’s an excerpt of one of the topics covered:

The 3 C’s of Affiliate Marketing Disclosures: Clear Conspicuous Content. 

Clients often seek my counsel on issues related to Affiliate Marketing legal disclaimers and disclosures. For example, this might require guidance on the substance and placement of legal disclaimers for a consumer-oriented, product review and ratings website. This type of website needs to include at least two different, but related, disclosures. First, it must disclose that it is compensated when a user clicks on a link. Second, it must disclose certain material connections. 

Affiliate Disclosure Content

There are several factors to the affiliate commission disclosure. Appropriate disclosures have both the necessary content and the correct placement within a specified context.

What needs to be in your affiliate commission disclosure? 

The disclosure must make clear that you earn a commission if a user buys something after clicking on a link on your site.

Affiliate Disclosure Context

Where is the optimal location for the disclosure?

Although there is a general practice of putting disclosures on the bottom of the website pages, it can be somewhat obscured and less effective. A location at the bottom of the page, in the same font style, font color, size, and placement as the rest of the text on the bottom of the page, does not help it “stand out.”   

The key to proper affiliate link disclosures is making sure the disclosure is “clear and conspicuous.” This depends on both context (placement and proximity to the relevant content) as well as the content of the disclosure itself.  The general rule is that the closer the disclosure is placed next to the relevant message, the better.

Although not required, it is recommended to add the affiliate link disclosure on the home page, above the fold. While there is no explicit requirement, FTC disclosure cases and guidelines suggest that, in their view, this is required for adequate disclosures. 

What should I do now? Always seek experienced counsel. A seasoned lawyer will help you address other considerations including prominence, distractions, industry vertical (i.e. healthcare, financial services) requirements, and language.