The Annals of Trademark Number One

What is a Trademark?

coca-cola sign Natchez, Miss. 1940, Library of Congress

Coca-Cola sign Natchez, Miss. 1940, Library of Congress

Trademark can be confused with copyright. As we have explained in recent blogs, a copyright protects works that one creates. A trademark is a word, group of words, symbol or logo a person or company uses to distinguish their products from those of others. A word, symbol, etc. used to distinguish someone’s services from others is a service mark.

Trademarks and service marks are also commonly referred to as “brands.” “Coca-Cola” thus stands to distinguish one company’s cola beverage from those produced by others, including of course “Pepsi-Cola.” Cola connoisseur and average citizen alike can rightfully expect Coke’s and Pepsi’s distinctive trademarks to guide him or her to the preferred beverage. One associates a particular taste with one company and another taste with its competitor because both enterprises have spent millions over the years protecting respective brands to identify their respective products exclusively. The right to control such a brand gives its owner the power to bar anyone else from using that trademark to identify its own rival product.

Trademarks, along with other intellectual property, can be the most valuable assets your business will own. We will address in coming weeks the extent of trademark rights, how one acquires a trademark, how one protects it, and related issues. Contact Helena Kobrin of our office on such matters.

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Contractor Misclassification … Class Action?

California Supreme Court Decides
When Independent Newspaper Carriers
May Challenge Their Classification as a Class


Newspaper delivery boys, Hartford, Connecticut – 4 March 1909

Class action suits challenging company-wide workplace practices and thus posing crippling damage amounts have become big business in California and across the country. See, e.g., our blogs “The Devil is in the Details: Employment Class Action Suits Can Hinge on a Court’s Choice of Definitions” and “Brinker Case Settles for $56 Million.”

One or a few workers suing for improper treatment can magnify the stakes of their claims dramatically if they can establish that their numerous fellow laborers should be included in the court action. Employment-related cases can become such “class actions” on the trial judge’s determination (“certification””) that including the group of persons subject to the alleged wrongdoing is more efficient than for one or more judges to separately handle each worker’s claims.

A finding of such “greater judicial efficiency” in handling employee claims as a group depends on numerous and often quite complicated factors. Among these are whether there are “predominant” common questions of law or fact between the employees purportedly affected, whether the named, proposed representative worker holds claims typical of the rest, and whether that representative worker can adequately represent the interests of the others.

A worker’s suit asserting a hiring company has erroneously labeled him or her as an independent contractor (as opposed to an employee) is common. A class action suit over the alleged improper classification of a larger group of workers as independent contractors would seem less likely since the higher courts have ruled the contractor-or-employee determination is a case-by-case proposition, dependent on numerous intersecting factors. Yet, the California Supreme Court has recently issued guidelines for certifying a class in such lawsuits. Ayala v. Antelope Valley Newspapers, 59 California Reports, fourth series (Cal.4th) 522 (June 30, 2014).

Defendant Antelope Valley publishes a daily. By standard form contract, it has retained independent carriers to deliver the paper to subscribers. Four of those carriers sued Antelope Valley in December, 2008, alleging the publisher should have classified them as employees and that it thus owed them overtime pay, reimbursement for expenses, and other standard California and federal benefits.

The four plaintiffs requested class certification, contending that form contracts and other factors made it more efficient to determine contractor or employee status all at once for the newspaper carriers Antelope Valley hired. Antelope Valley opposed certification, contending there were wide variations on how individual carriers performed their work, making a common decision for all such workers impossible.

The trial judge agreed with Antelope Valley and denied certification, concluding that resolving the carriers’ employee or contractor status would involve “highly individualized inquiries” and that the case-by-case issues predominated. 59 Cal.4th at 529.

The Supreme Court had a different view. California’s “common law” test focuses principally on “whether the person to whom service is rendered has the right to control the manner and means of accomplishing the result desired.” Emphasis supplied. The key is “whether the hirer ’retains all necessary control’ over its operations,” not whether the hirer actually asserts that control. 59 Cal.4th at 531. The Supreme Court concluded that Antelope Valley’s use of form contracts for retaining its carriers could allow the trial judge to decide whether the publisher’s “right to control” – whether great or small – was sufficiently uniform to permit a class wide assessment.

The trial judge’s error, the Court found, was in asking the wrong questions: whether Antelope Valley’s actual assertion of the right to control was adequately uniform with its carriers and whether the carriers as a whole experienced an actual pervasive control on the manner and means of delivering papers. Although that judge found “considerable variation” in the degree the publisher actually asserted control and that there was no actual pervasive control, the Supreme Court declared both conclusions were irrelevant to the class certification issue. 59 Cal.4th at 534.

Common law determination of employee or independent contractor status does not depend solely on whether the hiring person or entity has a right to control. The Court pointed out (59 Cal.4th at 532) there are numerous secondary factors, including:

● whether the one performing the services is engaged in a distinct occupation or business;
● the kind of occupation, with reference to whether, in the locality, the work is usually done under the direction of the hiring party (principal) or by a specialist without supervision;
● the skill required in the particular occupation;
● whether the principal or worker supplies the instrumentalities, tools, and the place of work for the person doing the work;
● the length of time for which the services are to be performed;
● the method of payment, whether by the time or by the job;
● whether or not the work is a part of the regular business of the principal; and
● whether or not the parties believe they are creating the relationship of employer-employee.

While a certification decision on employee or independent contractor status would involve evaluation of whether each of the many factors could be assessed on a class wide basis, the Supreme Court suggested the trial judge might short-cut the process since, in previously published decisions, “the hirer’s right of control, ‘together with the skill which is required in the occupation, is often of almost conclusive weight.’” 59 Cal.4th at 539.

It will ultimately remain in the trial judge’s discretion to determine certification in this case, on whether common or individual factors “predominate.” That decision may ultimately turn on the relative effectiveness of the lawyers arguing for their clients’ opposing positions. However, there would seem a significant prospect of certification here as Antelope Valley used form agreements for its carriers and as the level of skill to perform newspaper delivery is low.

For assistance on independent contractor and employee classification issues, contact one of our attorneys Tim Bowles, Cindy Bamforth or Helena Kobrin.

See also:

Classifying Workers, Employees or Independent Contractors?
Independent Contractors and Employees” and
Independent or Employed? Classifying Workers Correctly is a Case-by-Case Challenge




The Annals of Copyright Number 5

Fair Use Definition and Defense

Ripley Cutting Carousel Anniversary Cake - 1977

Ripley Cutting Carousel Anniversary Cake – 1977

“Fair Use” is the most prevalent defense against copyright infringement and possibly the most misunderstood. It is a subject all in itself.

Simply stated, if a use is “fair use,” it allows you to use someone else’s creation in a particular way without liability for copyright infringement. However, there is no shortage of misconceptions on when fair use applies. Even a long-time copyright lawyer will not always be able to make a definite determination.

The Copyright Act (section 107 of title 17 United States Code) states that: “the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” It prescribes four principal elements that courts analyze in determining whether a fair use defense is valid or not:

“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work [including such issues as whether it is published or unpublished and whether it is creative or factual];

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

While these criteria may sound pretty straightforward, application is far from simple except in a truly obvious case. Courts have engaged in much discussion of what these factors mean and how they are to be interpreted. For example, the distinction between commercial and non-profit use is not clear-cut. Commercial use is not always “unfair” and non-profit use not always “fair.” The federal Ninth Circuit Court of Appeals once decided that an educational (classroom) use by one teacher of multiple pages from a cake decorating booklet created by another teacher for her classroom was not fair use. See Marcus v. Rowley, 695 F.2d 1171 (9th Cir. 1983). The Fifth Circuit Court of Appeals found that copying of articles from scientific journals for scholarly use by Texaco’s scientists also was not fair use, in American Geophysical Union V. Texaco Inc., 60 F.3d 913 (2nd Cir. 1994). In contrast, when 2 Live Crew took Roy Orbison’s famous song, “Pretty Woman,” changing the words and recording it as rap music – an undisputed commercial use – it was fair use as a parody. See Campbell v. Acuff-Rose Music (92-1292), 510 U.S. 569 (1994).

Unfortunately, some people decide they are engaged in fair use when they do not really know what it is. For example, one composer mistakenly thought it was fair use if you did not use more than four measures of music by someone else. This is why, in most instances, creative people are best off when they stick with what they know best – creation – and leave it to the legal experts to determine if they are on safe ground when they want to make use of someone else’s creation in their own. A copyright attorney can advise whether: (a) you are taking a large or small risk that you will receive a cease and desist letter from the copyright holder; (b) a fair use defense will or will not be viable; (c) you should forget the idea altogether; or (d) you should apply to the content owner for a license. On the other hand, if you think someone has infringed your copyright by using a portion in his or her own material, a copyright lawyer can tell you if you have a case or need to step back and take a deep breath.

For assistance with fair use analysis or other issues of copyright law, contact our Of Counsel attorney, Helena Kobrin.

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Preventing Workplace Bullying

Abusive Conduct Prevention Training
Now Required Every Two Years

gang10- little rascals pictures public domain -

“Gang 10″ –  little rascals pictures public domain – http:\\

Effective January 1, 2015, a California employer must include prevention of abusive conduct as a component of legally-mandated sexual harassment training and education. (Assembly Bill [AB] 2053).

Existing law requires employers with 50 or more employees to provide at least two hours of interactive training and education regarding sexual harassment to all supervisory employees in California once every two years. This training must include information and practical guidance regarding federal and state law prohibiting and preventing workplace sexual harassment and the remedies available to sexual harassment victims. As of January, 2015, such training must address workplace bullying.

California does not require the boss to be nice or that workers be nice to each other, but there is a line that cannot be crossed. The law defines “abusive conduct” as an employer or co-employee’s actions which a reasonable person would find hostile, offensive and unrelated to an employer’s business interests. Such conduct may include repeated verbal abuse, including derogatory remarks, insults and terms; verbal or physical conduct of a threatening, intimidating or humiliating nature; or the sabotage or undermining of another’s work performance. A single act shall not constitute abusive conduct unless especially severe and egregious.

Thus, it is not unlawful for a boss to yell or curse at someone simply for poor job performance so long as such conduct is not tied to established harassment and discrimination categories such as sex, religion or race. It is of course another question whether aiming anger at an employee for messing up is unwise in certain circumstances. One possible result of AB 2053’s training requirement will be to raise awareness and responsibility of supervisors and workers alike toward maintaining a productive workplace.

Since 2011, the Law Offices of Timothy Bowles has addressed abusive conduct in its sexual harassment prevention training, including a sample anti-bullying workplace policy. Our interactive seminar can be delivered in two ways.

At your location: For larger companies, we can provide an on-site seminar at your place of business for a flat fee.

Scheduled location: We periodically provide our own hosted seminar for individual supervisors to attend locally. The fee is per attendee. Online registration is available.

For more information about our harassment prevention training or workplace forms and policies, please contact Ray Loomis at (626)583-6600.


Mandatory Paid Sick Leave For California Employees

Law Goes into Effect July 1, 2015

Father Christmas comes to Shrewsbury Ear, Nose and Throat Hospital, 1950

Father Christmas comes to Shrewsbury Ear, Nose and Throat Hospital, 1950

As reported in “Will California Employers Have to Cough Up Paid Sick Leave?”, the proposed Healthy Workplaces, Healthy Families Act of 2014 (Assembly Bill [AB] 1522) was the California Legislature’s third – and now successful – attempt to provide such benefits. Governor Brown signed that measure into law on September 10, making California and Connecticut the only two states to require businesses to provide paid sick leave.

Starting in July 2015, all California employers, regardless of size (and except for those with collective bargaining agreements and other very limited exemptions), will generally need to provide paid sick leave to any temporary, part-time and full-time employee who has worked in California for 30 days, at an accrual rate of at least one paid hour for every 30 hours worked. An employee would be entitled to use accrued sick days beginning on the 90th day of employment.

Accrued paid sick days shall carry over to the following year of employment. However, an employer may limit an employee’s use of paid sick days to 24 hours (or three days) in each year of employment.

Employees will be allowed to use paid sick time for their own or a family member’s preventative care (dental cleaning, physical etc.), as well as for treatment and care of an existing health condition. “Family member” includes children (of any age), parents, spouse, registered domestic partner, grandparent, grandchild and sibling. Employers shall not require employees to search for or find a replacement worker to cover the shifts during which the employee uses paid sick leave.

Employers must also modify their record-keeping, itemized wage statements, employee notices, and posters to satisfy the new law. After the California Labor Commissioner’s office publishes its upcoming frequently-answered questions on the new law, we will issue an updated blog with more information.

For assistance creating complete and comprehensive workplace policies, contact one of our attorneys Tim Bowles, Cindy Bamforth or Helena Kobrin.