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What is a California Statement of Information And When Does It Need To Be Filed?

By: Doug Bend A Statement Of Information provides information about your legal entity to the California Secretary of State’s Office. For example, it includes who are the officers of your corporation or if there is a Manager for your LLC.  Legal entities are required to file their first Statement of Information within 90 days of registering with… Read More

By: Doug Bend

A Statement Of Information provides information about your legal entity to the California Secretary of State’s Office. For example, it includes who are the officers of your corporation or if there is a Manager for your LLC. 


Legal entities are required to file their first Statement of Information within 90 days of registering with the California Secretary of State’s Office. 


Corporations are then required to file a Statement of Information each year thereafter beginning five months before and through the end of their registration anniversary.

LLCs are only required to file a Statement of Information every other year, beginning five months before and through the end of the month of their registration anniversary. 

The Statement of Information is a public document that can be viewed on the Secretary of State’s website. 

It only takes about 10 minutes to prepare the filing and if all of the information is still the same you can merely check the first box that there has been no change.

In addition, the filing fee is relatively minimal ($20 for LLCs and $25 for corporations), but the failure to timely file the Statement of Information can result in hefty late filing fees.  You are supposed to get a postcard reminder in the mail, but we recommend our clients also set a Google calendar alert to help make sure they do not miss the filing deadline.

If you have any questions or would like our help submitting your Statement Of Information, please do not hesitate to contact us at info@BendLawOffice.com.

This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Why Trademark Registration is Crucial for E-Commerce

By: John Butcher In the world of online sales, branding can be the main factor that leads to a business’s success or failure. 21st-century consumers have no shortage of options, and with many companies vying for similar markets, the difference between them comes down to the brand more than the product. This is where trademarks… Read More

By: John Butcher

In the world of online sales, branding can be the main factor that leads to a business’s success or failure. 21st-century consumers have no shortage of options, and with many companies vying for similar markets, the difference between them comes down to the brand more than the product. This is where trademarks come in.

What are Trademarks?

Trademarks fall under the general category of intellectual property law, or IP law. They are one of four primary elements of IP, the other three being copyrights, patents, and trade secrets.

Whereas copyrights and patents can protect a brand’s creative work and inventions, and trade secrets protect confidential information, trademarks exist to protect the brand itself. Trademarks shield elements related to brand identity from imitation or impersonation. This extends from the obvious aspects such as company names and logos, to more subtle details like brand color schemes, soundmarks, and slogans.

Trademarks do not legally have to be registered if business is being done only in one geographic location, but in the case of e-commerce that point is moot. Customers online can come from anywhere in the US and abroad. In this case, a trademark should be registered with the U.S. Patent and Trademark Office (USPTO) in order to be able to litigate against brand identity theft.

Why Register a Trademark?

The small “TM” or “R” symbol next to a brand name may seem innocuous, but with it comes an association of trust and identity. Registered brand names ensure that other companies cannot try to impersonate them without fear of litigation. Without a registered trademark, the original owner has little to no protection against infringing parties.

Brand identity also involves taglines and logos, which should be trademarked as well. Going beyond trademark registration , it is also crucial to file design patents for the aesthetic properties of a product that can define a brand. Just like Apple products are recognizable by their white, sleek color scheme, and glass Coca Cola bottles have a signature shape, most successful companies make their products instantly identifiable without the need to see a logo or brand name.

Trademark registration at its core exists to enforce brand identity, and design patents help add to that principle. But what exactly makes brand identity important?

Brand Identity in E-Commerce

The reason that brand identity, and thus trademark registraton, is so important in the e-commerce market is that being successful involves so much more than offering a good product.

Of course, having a great product or service to sell is a great foundation, but the rapid evolution of consumer-focused e-commerce adds many more factors into the equation. The main issues here are a saturation of options and the reliance on consumer trust.

The online marketplace is not limited by geography or a time schedule. This mean that consumers don’t need to buy based on convenience or proximity; they can find the exact product they’re looking for, sold by a myriad of providers, and choose the one that most appeals to them. Given this saturation of supply, purchasing decisions become more influenced by brands.

This leads to the second factor: consumer trust. The internet, being as intangible as it is, offers many options but among those there will be lower quality products and numerous scams. According to J.D. Houvener of Bold Patents:

“E-commerce offers a decreased ability to try things ahead of time and engage with real people to get a sense of their reliability. Thus, consumers will try to find companies they trust and become very loyal to those that reward their trust with good, reliable service.”

Having a consistent brand identity enables that building of trust among consumers; people will know the brand’s name, logo, and slogan and will be able to recognize other people using its services or buying its products. A collective trust can develop when people see other people using a product; this almost becomes an endorsement. Thus, trademark registration becomes crucial to e-commerce market success in the long term.

The Takeaway

Trademarks are essential for e-commerce because they establish brand identity. This means that no other companies in the field can tarnish a brand’s reputation by using the same name, logo, or slogan.

A positive brand association, or even just name recognition, boosts e-commerce sales and success. In a market where consumers have so many options to choose from, good brand awareness can often make the crucial difference. Every business should make sure to register trademarks as soon as they can to reap their benefits.

This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article

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Is Your Business CCPA Compliant?

By: Vivek Vaidya The California Consumer Privacy Act (CCPA) went into effect on January 1, 2020 and has wide-reaching implications on businesses in California. To help you understand how the CCPA affects your business, here are a few answers to basic questions: What do small businesses in California have to worry about when it comes to… Read More

By: Vivek Vaidya

The California Consumer Privacy Act (CCPA) went into effect on January 1, 2020 and has wide-reaching implications on businesses in California. To help you understand how the CCPA affects your business, here are a few answers to basic questions:

What do small businesses in California have to worry about when it comes to the CCPA?

In order for the CCPA to apply to your business, you must meet one of the following criteria:

  • You have an annual gross revenue over $25 million
  • You receive, buy, sell or share the personal information of at least 50,000 California consumers
  • You derive at least half of their revenue from selling the information of state residents.  

If a small business meets the above-mentioned criteria, here are the top three things that should be prioritized:

1) Understand the breadth of the law

It’s important to understand the somewhat vague definition of “personal information”, which is defined as any info which “identifies, relates to, describes, is capable of being associated with, or could reasonably be linked, directly or indirectly, with a particular consumer or household.” Personal info can include email addresses, social security numbers, driver’s license numbers, employment information, geolocation, biometric information, commercial information, internet activity, audio/video information, or education information not available to the public.  If you collect this information, you need to have the capability of fielding user requests to access, delete, or change their personal information.

2) Train your employees (even if you only have a few)

The CCPA requires employees who field customer requests about data privacy practices (deleting personal information, opting out of sharing personal information, etc.) and employees who are responsible for the company’s compliance to undergo instruction to understand the law. Generally, this will require instruction of all customer service representatives and whoever handles legal compliance. 

3) Understand the penalties

The penalties for not being CCPA compliant go up to $7,500 per intentional violation and $2,500 for unintentional violations which are enforced by the California attorney general. Consumers also have the right to pursue their own individual action against non-compliant businesses, and can sue the company if a data breach occurs due to carelessness. 

What are the top 5 things they should have in place to be compliant?

Here are the top 5 most pressing details that need to be squared away ASAP if you are a small business owner who meets the criteria of the CCPA:

1) Be sure to clearly outline consumer data. In other words:

A) What personal information do you collect?

B) How do you acquire said data?

C) Where and how do you keep it?

D) Do you share it with other entities?

E) Is the shared data part of provision of service, sale or another purpose?

2) Create a homepage “privacy link”:

The CCPA also calls for a privacy link on the homepage of any relevant entity’s website. It must be “clear and conspicuous,” titled “Do Not Sell My Information,” and linked to a page that allows consumers to opt-out of having their personal info sold to third parties.

3) Update Privacy Policies:

The CCPA gives consumers the right to know exactly what personal information is being gathered about them. In order to comply with that, businesses must provide a disclosure “at or before the point of collection.” It must “inform consumers as to the categories of personal information to be collected and the purposes for which the categories of personal information shall be used.”

4) Develop a process for fielding consumer complaints:

Starting on Jan. 1, 2020, relevant entities must be ready to field consumer requests about their personal information that are allowed under the CCPA. These requests must be processed free of charge and within 45 days. Some examples include:

A) Request a copy of their personal information

B) Request that their personal info be deleted

C) Obtain consent from a guardian to sell personal info from a consumer under the age of 13

D) Opt out of sharing their personal information with third parties

5) Strengthen data security:

Relevant entities should review and update their info security and privacy policies and actively monitor their data security defenses to ensure that consumer data is not easily stolen, as they can seek damages for data breaches covered under the CCPA. 

Anything else small business owners should know about this law right now?

There is a 6-month grace period from January 1, where mistakes can go unpunished. There is still plenty of time before you need to be truly compliant as a small business owner who meets the criteria of the CCPA. If you have questions about becoming compliant or need legal aid with preparing a Privacy Policy that is CCPA compliant, feel free to contact Vivek Vaidya of Bend Law Group at Vivek@bendlawoffice.com

This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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What does it mean to be “FTB Suspended?”

By: Doug Bend If a legal entity has been “FTB Suspended” it was suspended by the California Franchise Tax Board most likely because the company did not pay its annual franchise tax. There are two potential problems with being FTB Suspended: (i) Someone could register a new entity name as the same name as your entity and… … Read More

By: Doug Bend

If a legal entity has been “FTB Suspended” it was suspended by the California Franchise Tax Board most likely because the company did not pay its annual franchise tax.

There are two potential problems with being FTB Suspended:

(i) Someone could register a new entity name as the same name as your entity and… 

(ii) you might not be provided with any liability protection if a cause of action arises while your entity is suspended.

The best way to lift the suspension is to file a Statement of Information with the California Secretary of State’s Office and to work with a CPA to get your corporation squared away with the California Franchise Tax Board.

You can read more about what it means to be FTB Suspended and how to revive a suspended legal entity here.

Please do not hesitate to contact us if you’d like a recommendation for a CPA or if you have any questions.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Protecting Your Art: Considerations for Entity Formation for Theatre Consultants

By: Brandon Shelton I was sent another great question from our friends in the theatre relating mainly to the benefits and timing of forming an entity around a small voice and speech business.  I like this topic a lot, because there can certainly be some benefits to forming a legal entity with your state, but… Read More

By: Brandon Shelton

I was sent another great question from our friends in the theatre relating mainly to the benefits and timing of forming an entity around a small voice and speech business.  I like this topic a lot, because there can certainly be some benefits to forming a legal entity with your state, but there are plenty of considerations for you to weigh to determine if forming an entity makes sense for your line of work.  The specific question was:

“I’m a voice and speech teacher, and occasionally work as a private coach with folks on accents, vocal ease, etc.  The work comes pretty irregularly, so as of now I just collect my fee and move along.  I’m curious at what point I would want to (or have to) consider a more formal legal structure (sole-proprietor, LLC, etc… not even sure what all the options are!) and what the pros and cons are.”

As an initial matter, it would be good to understand what your options are in terms of actual entities.  There are numerous choices for forming entities, though since we are speaking about an individual person engaged in providing services to clients, I will narrow this discussion to three main entity types geared towards providing consulting services: sole proprietorships, LLCs, and corporations. 

Consulting Explained

Taking a step back, when individuals provide advisory or consulting services, whereby they assist clients in areas of their business or personal lives according to their expertise in a particular field or line of business, it’s fairly common to refer to the business owner as a consultant or advisor.  The difference between the two monikers is not hugely substantive, but many resources basically say that a consultant has a finite task or timeline by which they provide services, and advisors are basically the same thing just with a more indefinite, ongoing timeframe.  So a consultant might be hired for a finite period of two months, or through a particular Irish production for example, whereas an advisor is basically on call for all productions until the parties end their relationship.  Given this practice, it is relatively common to set up a formal entity through which to provide your consulting or advising services.

Sole Proprietorship

A sole proprietorship is technically not a formal entity that is created with your state.  It is more or less in existence as long as you are engaged in providing some services for profit.  In other words, you don’t need to file anything with the state or the federal government to be considered a sole proprietor.  If you are providing voice coaching services at any time, the state and the federal government is basically going to treat you as a sole proprietor.  Given that, there would likely be some requirements for you to report any income you make so that it can be appropriately taxed at either level.

Some individuals like to make the existence of their sole proprietorship a little more professional by giving the business a name and creating business cards and contracts on behalf of the business.  However, technically you are only allowed to do business under a proper name of the business (which initially would just be your name).  To allow your sole proprietorship to have a nice, customer friendly name, it would be a good idea to establish a fictitious business name (or ‘dba’) with the city or county that you live in.  That’s certainly not a requirement, however, as you could simply provide your services under your name as an individual operating as a sole proprietorship, and just make sure you reach out to your CPA to figure out how to report the income you make through your business.

The main drawback to a sole proprietorship, whether or not you have established a dba, is that there is no protection against personal liability for claims against your business.  In other words, if you are held liable to a client or a third party, the court could garnish your personal wages, or require you to liquidate your Spiderman comic book collection to pay off any such judgements.  I, for one, would not be happy about that.  For that reason, many individuals choose to form an LLC or corporation with the state in which they live to protect themselves against personal liability.

As a side note, you will also likely need to file for a city business license in the city through which you provide your services, which is true of any business (sole proprietorship or otherwise) that is doing business for longer than a week.  So regardless of which entity you choose, you should at least explore establishing your city business license to ensure you aren’t hit with any fines from your city.

Limited Liability Company

The most common type of entity that we see formed for consulting companies is the limited liability company (LLC).  The LLC has a number of benefits, including protection against personal liability, and a relatively easy to maintain corporate structure.  With respect to the latter benefit, corporations require annual shareholders meetings where you elect the board of directors.  LLCs typically do not have a board of directors (unless they create one), but are rather managed by “managers” who are established immediately and hold their positions until they leave or are replaced by a vote of the members (“members” is simply another word for owners of an LLC).

However, there are definitely some drawbacks to the LLC over the sole proprietorship.  In particular, LLCs must pay annual franchise taxes.  In California, that number is usually $800 a year.  Additionally, if you thought your business might grow into something more than just a one person shop, such that you would like to seek out investors into your company, investors are more likely to invest in a c-corporation due to the flexibility of issuing equity in a corporation.  However, consulting companies rarely bring in outside investment, as they are typically vehicles to provide personal services, and aren’t expected to grow into some giant corporate entity.  In any case, your main consideration would be whether or not the annual franchise tax is financially viable for your business, which would depend on the litigious nature of your clientele, and the amount of business you are bringing in.  If your service is rather docile, and you only make a small amount of annual income through your services, it might not be worth your time and money to create an LLC.  However, if you have a lot of work coming in, and you know your clients to be rather volatile and litigious, then it could be worth it to form the LLC to protect your personal assets from liability.

A side note on “piercing the corporate veil”: the “Business Judgment Rule” is a rule that essentially states that, as long as the managers, directors, and officers are using their business judgment to make decisions and act on behalf of the company, a court will not second guess their decision making, unless it is so divorced from reality that nobody in their right mind would have taken such an action, and will protect them from personal liability.  However, if they do breach that requirement, and use the company improperly, or fail to adhere to essential corporate formalities, then a court might “pierce the corporate veil” and hold them personally liable for claims.

Corporations

Corporations enjoy similar benefits to LLCs, which mainly relate to limitation against personal liability for claims against the company.  Additionally, as touched on above, investors will prefer to invest in a c-corporation due to the greater flexibility in equity.  However, the additional corporate formalities generally make this type of entity less attractive to individuals providing consulting services.  Given that fact, you would again have to weigh whether or not the expense of franchise taxes and additional formalities is worth your time and money.

One Last Wrinkle: S-Corp Elections

Newer tax rules allow both corporations and LLCs to file s-corp elections, which essentially notifies the IRS that you wish for your entity to be treated as a passthrough entity.  As a passthrough entity, certain amounts of your company’s revenue could avoid “double taxation,” where the company pays certain taxes on that income, and then when that income flows to you, you are taxed on the personal income.  This can have significant tax benefits to companies if you are bringing in a certain threshold of profit into your LLC or corporation.  To determine whether or not this is a good idea, you should always consult with a CPA.

Back to the Specific Question

Based on the question asked in this inquiry, it would be a good idea for individuals providing voice and speech coaches to consider if it’s worth their time and money to form an LLC or corporation, and further to consider whether or not they should file an s-election (which again should be at the advice of a CPA).  On the one hand, it could protect such speech and voice coaches from liability if claims are brought against them.  On the other, it can be an investment of time and money that might not be worth it.  If it does sound worth it, feel free to reach out to an attorney and CPA to further evaluate if forming an entity is right for you.

In terms of deciding when you should actually consider forming, it would again be a judgment call.  As the business grows, and/or your personal assets grow, you will likely be more inclined to create some form of legal separation between the two.  However, there’s no hard and fast rule as to when that should be.  To determine if now is the time, it would be a good idea to check in maybe twice a year to ask yourself: (1) How many clients do I currently serve? (2) How much revenue am I bringing in? (3) How litigious are clients in this field generally? (4) How much value has been built into my personal assets? and (5) Have I heard of any horror stories from similarly situated businesses being subjected to lawsuits through their course of business?

Obviously, some businesses will be riskier than others.  For example, on-site construction services probably carry greater risks of physical harm and claims from disgruntled clients than would voice coach consulting services (though feel free to disagree… us theatre folks can be pretty demanding sometimes).  Ultimately, it will be a bit of a judgment call to determine whether or not the risks outweigh the costs. 

Break a leg! (…But only yours… in fact if anyone’s legs are subject to breaking that often, maybe consider forming the LLC…)

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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All the School is a Stage: Music Licensing Tips for Educational Theatre

By: Brandon Shelton I received an excellent inquiry recently about music licensing for theatrical productions of plays and recitals in school and college productions.  This is such a great topic, because it is probably one of the most relevant, yet least understood areas of law that apply to performance artists.  The question was, in a… Read More

By: Brandon Shelton

I received an excellent inquiry recently about music licensing for theatrical productions of plays and recitals in school and college productions.  This is such a great topic, because it is probably one of the most relevant, yet least understood areas of law that apply to performance artists.  The question was, in a nutshell: what are the music licensing requirements of a director/producer of school productions?  To answer that question, it would be helpful to know the extent to which songs are even protectable under US copyright law.  Following that explanation, the intent of this article is to provide guidance regarding the use of music in local educational play productions and recitals.

The Bundle(s) of Sticks

The first step in understanding your obligations in licensing music is to understand what you have to license in the first place.  When I’m stuck in traffic unapologetically blaring No Tears Left to Cry, objectively it would appear that I’m only enjoying one thing: Ariana Grande’s song.  However, there is more there than meets my ears.  What I am listening to is a recording of a song written by someone (which, in the world of pop music, is unfortunately not likely to be the person in the magazine cutout hanging on the wall next to your bed).  That recording in and of itself has its own set of rights that the “author” owns, which you can think of as a bundle of sticks attached to it.  The reason is because copyright law grants the bundle of sticks to any person who “fixes” a “work of authorship” to any “medium.” Here, the “medium” is the digital sound recording, the “work of authorship” is the song, and it was fixed when Ariana laid down that sweet track.  So, you might think, well, as long as I pay something to Ariana, I should be good!  I wish it were that simple.

Without casting a judgment on who writes what in the world of pop music these days, there is a second medium that someone fixed somewhere: the composition.  As a certified band dork in high school, I assume it was on some coffee stained sheet music somewhere, but if I had to wager a guess, music producers probably have much cooler ways of fixing a composition onto some medium.  Bringing this conversation back to Earth: the point is that there are usually two “works of authorship” you need to consider licensing, depending on what you are relaying to your audience.  One might be a specific sound recording (if you choose to play a specific recording), and the other is the composition of the song itself.

So, What About My Play?

The specific question I received about this licensing issue was: “…when I put on a production that is basically a musical review/recital, what are my legal responsibilities?  I am not putting on a full production, just cherry-picking a song from Shrek, and a song or two from Anastasia, etc.  Should I pay royalties for the use of one song out of context from the show?”

The short answer is: maybe (I bet you thought you were going to get a simple yes or no.  Ha!).  The first question you might ask yourself is: is this a public performance?  One of the sticks in the bundle is the right to publicly perform the work.  It is generally accepted that private performances do not require a license (I know I’d feel pretty violated if ASCAP required there to be a credit card slot in my shower if I sang along to Sunflower), but the line between a private and public performance is not always very clear.  If you are putting on a small production for the singing and viewing pleasure of a few students in your classes, it’s not likely that that production would be considered a public performance, because only the people in your class performing the song are the ones permitted to attend the performance.  It is generally accepted that such performances are considered “for instruction only,” and thus outside the scope of public performances.

But what if you invite parents to the class to see the progress your students have made, or to give one last performance for their parents to hear?  Since this performance starts to creep outside of the “for instruction only” exception, this likely would require a public performance license.

There’s also a second embedded question in there, which is: “What if I only use a little bit of one song?” Copyright law protects the work, even if you only use some of the work, so a license is likely still needed.  There are some folks out there who have had some success in simply sending a request for permission to use a song (or a limited excerpt) in an educational production, especially if it’s for a really limited production run (like a single performance).  However, as a rule of thumb, it would be best to assume you might need to pay for a license.

One Last Wrinkle: Drama or No Drama?

To make things even more complex here, courts and licensing companies alike make a distinction between dramatic and non-dramatic public performances.  According to ASCAP:

As a general rule a dramatic performance usually involves using the work to tell a story or as part of a story or plot.  Thus, when songs are employed as part of a dramatic production – a Broadway musical such as Hamilton or in a ballet such as Twyla Tharp’s “Nine Sinatra Songs”, for example – the performances of the music are dramatic and beyond the scope of an ASCAP license.  In addition, excerpts of musicals accompanied by dialogue, pantomime, dance, stage action, or visual representation of the work from which the music is taken, and incorporating a live or recorded performance of a song into a story or plot – even though the composition was not originally written for a musical play – would also result in a dramatic performance of the song.

By contrast, when a singer sings songs from several Broadway musicals, a medley of songs from one particular play, or a medley of unrelated songs as part of a concert, revue or cabaret show, those are “nondramatic” public performances.

See ASCAP – Common Licensing Terms Defined, available at https://www.ascap.com/help/ascap-licensing/licensing-terms-defined. This distinction is important, because it determines who you can reach out to for permission and licensing.  If it is a dramatic production, then you actually have to reach out directly to the rightsholder.  If it is a non-dramatic production, then it would be sufficient to license the music through the licensing companies, though you can still reach out to the rightsholders for permission to perform the songs.  However, this distinction isn’t always particularly clear, so if you aren’t sure, it would be a good idea to reach out to the rightsholder directly to see what they will require for permission.  Since most licensing companies such as ASCAP and BMI are non-exclusive licensors, you can always reach out to the rightsholders no matter what to seek permission.

Back to the Specific Question

Based on the question asked in this inquiry, our reader will need permission one way or another.  Since it sounds like the production being put on is more or less a medley of excerpts from songs being sung in a non-dramatic fashion to parents in a final production, it would be sufficient to seek a license for public performance of a composition through a non-exclusive licensing company, such as ASCAP or BMI.  However, if there is some kind of story being told on stage with your students, where the Shrek songs and such have some contribution to the story arc, then you will likely need to reach out to the rightsholders themselves for permission.  In either case, reaching out to the rightsholders would probably be the better option, or at least would be a good idea, since you can compare what the rightsholder asks of you in the way of compensation versus what the non-exclusive licensing companies require.  Below are some helpful links and contacts for those seeking to license performance rights related to Shrek: The Musical and Anastasia.  To reach out directly to the rights holders, try calling the licensing company numbers below for their contact info.

http://broadwaymusicalhome.com/production-rights.htm

https://www.mtishows.com/shrek-the-musical

https://www.mtishows.com/about/contact-us

ASCAP Phone Number: 212-621-6000

BMI Phone Number: 212-586-2000

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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Athlete Trademarks and The Spectrum of Trademark Distinctiveness

By: Vivek Vaidya The trend in athletes seeking federal trademark protection is rapidly increasing. One recent example is UFC star Ronda Rousey, who filed for various trademarks having to do with the acronym “FTA” (F@#! Them All). The subject matter is getting increasingly unconventional, ranging from athletes’ nicknames such as former Texas A&M quarterback Johnny… Read More

By: Vivek Vaidya

The trend in athletes seeking federal trademark protection is rapidly increasing. One recent example is UFC star Ronda Rousey, who filed for various trademarks having to do with the acronym “FTA” (F@#! Them All). The subject matter is getting increasingly unconventional, ranging from athletes’ nicknames such as former Texas A&M quarterback Johnny Manziel’s “Johnny Football,” acronyms such as Rousey’s “FTA,” and phrases said in interviews like Marshawn Lynch’s infamous statement “I’m just here so I won’t get fined.”

In previous articles, Bend Law Group discussed the “Benefits of Trademark Registration” and “How to Trademark Your Own Name”. While athletes are trademarking their legal names, it is the bizarre nicknames, acronyms, catchphrases for which they are seeking protection that present interesting questions about trademark distinctiveness. This article discusses the spectrum of trademark distinctiveness to shed light on why some of these marks are being granted, regardless of their unconventionality. In fact, these marks may be receiving protection because of their unconventionality.

Generally speaking, there are two types of trademarks: word marks and design marks. Word marks are things like names, phrases, acronyms such as “ESPN,” and tag lines such as “Just Do It.” Design marks are symbols such as the apple for Apple computers, colors, sounds, scent and product packaging (also protected by trade dress). This article discusses word marks. With respect to the distinctiveness requirement in word marks, there are three general categories: inherently distinctive, not inherently distinctive and generic. Below is a summary of each category:

Inherently Distinctive (receive protection immediately upon use)

  • Arbitrary Marks: Has meaning but the meaning has no relevance to the product or industry (e.g., “Apple” for computers). Highly protectable.
  • Fanciful Marks: A coined word without any meaning (e.g., “Xerox” for copiers). Highly protectable.
  • Suggestive Marks: Suggests something about a product, but indirectly or in an unusual fashion. Here, the consumer must engage in a mental process in order to associate the mark with the description of the product or service (e.g., “Greyhound” for bus travel company). Protectable.

Not Inherently Distinctive (only protectable at the point that they acquire “secondary meaning”)

  • Descriptive Marks: Describe the product or service they identify (e.g., “chewy” for cookies). Not immediately protectable, but may become protectable via “secondary meaning.”
  • Secondary Meaning: arises when the public has been exposed to use of the descriptive mark enough to recognize the mark not just in its descriptive sense, but also as an indication of the source of the product or service.

Generic Marks (not protected; not capable of identifying source)

  • Generic Marks: The common descriptive name of the good or service it is used to identify, or is otherwise viewed as synonymous with the product or service (e.g., “peanuts” or unadorned, realistic likeness of a peanut).

The above spectrum helps to explain why athletes’ unusual word marks such as “FTA,” “I’m just here so I won’t get fined,” and “Johnny Football” are registrable. Acronyms such as “FTA” and phrases such as “I’m just here so I won’t get fined” likely fall under the inherently distinctive category. “FTA” and “I’m just here so I won’t get fined” are arguably arbitrary/fanciful and thus highly protectable marks. “FTA” is just a random phrase that has nothing to do with Ronda Rousey as an athlete. The same can be said for “I’m just here so I won’t get fined,” because that phrase has nothing to do with Lynch’s ability to score touchdowns. At the very least, these marks are suggestive and still protected without having to acquire secondary meaning. This might be an indication that the more random and bizarre the word mark is, the more likely the public figure is to receive federal trademark protection without having to prove secondary meaning. A nickname like “Johnny Football,” however, would likely not qualify as inherently distinctive because the mark is descriptive. The player’s name is Johnny Manziel and he plays football. But even if the mark is not inherently distinctive, and as long as the mark is not generic, it may become registrable by achieving secondary meaning.

In sum, specific requirements must be met under federal trademark law for athletes to secure their unique marks, and it takes someone knowledgeable in the field to navigate this process efficiently. If you have questions about registering your mark, please give us a call at (415) 439-0153, or email us at info@blgtrademarks.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction. Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

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