Legal Question - Fly Tying

All about flies Fly Tying
1

Hi group,

I’m looking for thoughts from any of you in the legal profession. We recently submitted a manuscript on rotary fly tying to a publisher. Today, we learned one of the rotary vise manufacturers IS or IS PLANNING to copywrite the words “true rotary.” This particular company has sued over other “infringements” on this ideas. I’ve been using that term for more than 15 years and it is scattered throughout the upcoming book. Do I need to retrieve the book from the editor and do a quick re-write to remove said words? It wouldn’t take much to do so - probably more time spent mailing the manuscript back and forth than the actual re-write. Any of you lawyers have any ideas? Thanks in advance for any comments. Sorry if this is the wrong forum for this question (Jim & Deanna, please remove/move if it is). Take care & …

Tight Lines - Al Beatty [url=http://www.btsflyfishing.com:58bd0]www.btsflyfishing.com[/url:58bd0]

2

Al,
sheeeesh.
I can understand registering a word mark for something like “Kleenex” or “King of Beers”.
If their trade mark registration goes through, I think we’ll need both.
John

3

Al,

Let me see if I understand this:

First one patents a vise design (I can understand that, and support that)

When the patent runs out and one’s legal protection ends, one seeks and is granted a trademark on a logo depicting one’s vise and bullies other into submission by alleging trademark infringement on a bent steel rod? When one finds one can actually get away with this, one takes heart and vows to continue the practice, but with a new twist…

Attempting to copywrite a “true rotary” term… some 30 years after the fact… interesting to say the least.

I am already shaking in my boots… I guess I will keep this ploy in mind (NOT!) when writing my next set of vise reviews

Cheers,
Hans W

=== You have a friend in Low Places ===
http://www.danica.com/flytier

4

I am not a lawyer, but they will have a very hard time enforcing “copyright” on the term “true rotary”. Copyright applies to original writing of almost any length, but not to short phrases or individual words.

The manufacturer might attempt to trademark “true rotary”, but copyright is unlikely.

<<<<<<<<<<<
WHAT IS NOT PROTECTED BY COPYRIGHT?

…
Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents
*

 Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration
*

 Works consisting entirely of information that is common property and containing no original authorship (for example: standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources)

>>>>>>>>>>>>>

US Copyright website:
[url=http://www.copyright.gov/circs/circ1.html#wci:0e3aa]www.copyright.gov/circs/circ1.html#wci[/url:0e3aa]

5

Al,

Yes, I know this is from a lay person and therefore, not anything with a legal basis for a conclusion. However, it sounds ridiculous that a company can copywrite a phrase that’s been in use world-wide for about 2 decades. I would think that those two words make up a definition. ‘True’ = actual, real, accurate, honest. ‘Rotary’ = turn, spin. Is this company going to attempt, through a copywrite, to stop people from using the English language? More importantly, do you think any court would allow a company to force any publisher out of using a descriptive phrase? I think a court would find this company’s attempt to be a frivilous and a bad joke.
But hey, you asked for a legal opinion and what do I know?

Allan

6

This disgusts me. Maybe I should start looking into the Peak vices. That other company is so smug, they won’t give Professional Fly Tiers, or Commercial Fly Tiers Pro Deals on their vices like 98% of the Fly Fishing Retailers do.

Jude
Small flies work best. Elephants eat peanuts.
www.customflys.com

7

It would appear to me that"true rotary" is an adjective describing the word “vise”. If this can be afforded any protection I guess we can’t have “homestyle” cooking or “fresh” seafood.

8

I know it’s probably possible to trademark anything, even really commonly used phrases, but it sounds a little like trying to trademark “spinning reel,” “cork handle,” or “dry fly.” 8T

You had better learn to be a happy camper. You only get one try at this campground and it’s a real short camping season.

9

Hi Al, I’ve left a message on your answering machine. Call him. He will have the correct answer you need. The rest of us are guessing. Well intentioned, but guessing

LadyFisher, Publisher of
FAOL

10

That said, I’m getting so tired of the sleeze bag people in today’s society. That includes those who seem to thing they can make a living by making other people pay them to ‘live’ when the so called ideas they are using weren’t theirs either. It’s more than tacky, it really it time to have a legal system where if you lose you have to pay the legal costs of the other parties attornies.
Enough!

LadyFisher, Publisher of
FAOL

11

Boy Al,
That really makes me sick! First, it’s the bend in their design and now “two words”? That company is getting ridiculous. They made DK pay and Peak change their design. What is this world coming to? How would everyone feel if a big name company copyrighted the word “flyrod”? I can see it now, you go into the shop and ask the employee you’d like to try casting the big name company’s flyrod and that other “stick”! I hope their sales go down because of this crud! Sorry for venting too much.

12

Unfortunatly Al, the USPTO has granted trademark registration for things like that in the past and could very well give it to them. If someone wants to trademark something they file an application, pay the $350.00 and take their chances of getting a registration (no refunds.)

One case in point is a man that filed an application for the word “stealth.” HE was granted it! Since then he has been threatening companies that use that word in their name or products name with a lawsuit if they don’t pay him royalties. He’s still doing it today. I personally know of two companies that he has threatened and many more by researching him.

I can’t offer any legal advise. The legalities involved with your published use of the phrase need to be addressed by an attorney.

And Deanna, Sleeze is too kind of a word to describe people like this.

Joe

13

Hey Al,

Again, I’m no lawyer…but here’s my take…According to the US Copyright Office webpage:

“If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.”

The way I interpret this is that if your book has been sent to the publisher before he is able to register the copyright, then the only thing he could do is sue you for ACTUAL damages…and I don’t know how in the world he could show any monetary damages from you using that term in your book.

By the way, a yahoo search on the phrase “true rotary” returns 1,220 items…I’m not sure how he could claim that the term is his personal property…

But, again…I’d consult a lawyer for the best advice.

Monte

14

Here’s an answer that a lawyer will probably give.

Lawyer says, ‘My opinion, is that they can’t. However, a court will have to decide.’

BTW, why is there a fear of mentioning the company? From the description it sounds like Renzetti. If it’s not, then I apologize.

Allan

15

I am not going to attempt to offer legal advice, however, as someone who works in the field of Intellectual Property (IP), I think that more information is needed before everyone gets too upset.

First, be sure which form of IP is being pursued because this will affect the standards that their application will be held to, the protection provided, and dictate the strategies for attacking the application.

Second, consult an IP attorney.

Third, a few response to comments made so far:

"I know it’s probably possible to trademark anything, even really commonly used phrases, ".

Genericness is a common reason for rejection of trademark applications because the purpose of a trademark is to identify one’s product and distinguish it from the products of others. Also, FYI, here are some classic examples of registered Trademarks that were lost because they were improperly used and became “generic”: Aspirin, Kerosen, and Escalator.

FYI, “merely descriptive” is another common grounds for rejection in a trademark application.

“That company is getting ridiculous. They made DK pay and Peak change their design. What is this world coming to?”

The purpose of a patent is to protect the party’s investment in research and development, by preventing competators from copying their invention, thereby encouraging innovation. If you spend $1M in R&D, and I spend a fraction of that to copy your invention, then I can undercut your price and make a profit, while you struggle to break even. How is this fair, or beneficial to anyone but the infringer? Who is the bad guy in this scenario? IP protection is only beneficial if it is enforced. In fact, IP protection can be weakend, or even lost if reasonable efforts are not made to enforce it.

For more information regarding IP protection, see: Title 35 of the United States Code ( 35 USC) and the Title 37 of the Code of Federal Regulations ( 37 CFR) for Patents; Title 15 of the United States Code ( 15 USC) for Trademarks; and Title 17of the United States Code ( 17 USC) for Copyrights.

Respectfully,

Dave Fulton

16

Yes Renzetti in it latest adds in catalogs is saying “True-Rotary Vises” and also Abel. Dyna-King is using “Full-Rotary”

Bill

17

Al, good luck with this endeavor. Hope it all resolves in your favor.

I’m not an attorney, I won’t offer my opinion.

But, I will add the offending company to the ever growing list of companies I won’t support with my money. And, I’ll be happy to include this little tale you tell in the information chain when others ask me for advice about which vises to buy.

Perhaps a general show of non-support for such behavior is in order.

aka Cap’n Yid.

Stev Lenon, 91B20’68-'69
When the dawn came up like thunder

18

Yes, I know this is from a lay person and therefore, not anything with a legal basis for a conclusion. However, it sounds ridiculous that a company can copywrite a phrase that’s been in use world-wide for about 2 decades. I would think that those two words make up a definition. ‘True’ = actual, real, accurate, honest. ‘Rotary’ = turn, spin. Is this company going to attempt, through a copywrite, to stop people from using the English language?

I see what you’re getting at…but let me give you an example…

Star: A self-luminous celestial body consisting of a mass of gas held together by its own gravity…

Wars: multiple states of open, armed, often prolonged conflict carried on between nations, states, or parties.

Now…put those two words together in print, and see the rain of legal wrath that is brought down upon you.

19

I’ve just copywrited “saltwater fly fishing.” if you want to use that phrase contact my attorney and we will work out a payment.

20

I wouldn’t be surprised if a vise company could trademark something like “TruRotary”, but “true rotary” would be ridiculous and “true-rotary” also ridiculous because the hyphen is actually a ligitimate gramatical tool where there is a compound modifier. Examples: first-quarter touchdown, full-time job, etc. In this case the modifiers occur before the nouns (touchtown, job). Even if they come after the noun the hyphen can be retained if the modifier comes after the verb “to be” as in “the vise is true-rotary”, “the job is full-time”.

Peter F [url=http://www.fishingwithflies.com:85f2e]www.fishingwithflies.com[/url:85f2e]
pfrailey@hotmail.com

[This message has been edited by Peter F (edited 09 March 2005).]