Mark concentrates his practice on intellectual property and Internet matters with specific emphasis on trademark selection, registration, enforcement and litigation, copyright, and trade secret protection.

For over twenty years he has advised clients on domestic and international intellectual property issues, including such matters as new product launches, corporate rebranding projects, acquisitions and licensing. He has extensive experience with U.S. and International trademark matters, from selection and clearance of marks through registration, licensing and enforcement of rights. Mark has represented trademark owners in cease and desist matters as well as in the federal courts in infringement and counterfeiting actions. He has also been involved in numerous Opposition and Cancellation proceedings in the Trademark Trial and Appeal Board.

In addition to intellectual property, Mark’s practice also encompasses internet-related legal issues. He has assisted clients with the creation and implementation of privacy policies, terms of use agreements, user agreements and DMCA compliance. Mark has also been involved in domain name litigation and cybersquatting matters and helped develop domain registration strategies for clients.

Mark is also involved in copyright registration and licensing, developing trade secret protection strategies, non-disclosure agreements and non-compete agreements, marketing and advertising review, and intellectual property due diligence projects.

Prior to joining Henderson Franklin, Mark practiced law in Chicago, Illinois. He was born and raised in Chicago and currently resides in Fort Myers. When not working, Mark enjoys cycling and triathlons.
Continue Reading Mark Nieds

Henderson Franklin’s legal team returns to Sanibel Harbour Resort & Spa on Friday, February 25, 2022 with a new twist. The main room will offer the firm’s most popular workshop, HR Law & Solutions.

New for 2022, attendees will have the option to attend breakout sessions focusing on niche corporate matters and contracts, family businesses, startups and how to make informed real estate decisions. Click here to download the brochure.

Topics and speakers

General Session #1, Lingering Effects of COVID on Florida Employers, presented by Scott Atwood, Esq.

From business shutdowns and PPP loans to vaccinations, COVID has presented unique challenges to Florida businesses. Henderson Franklin’s employment group chair Scott Atwood will address the multi-faceted employment issues that employers may face, including: current obligations over masks and mandatory vaccinations; how to deal with possible long-term disability claims and leave issues arising from COVID; increased union activity; and the pros and cons of a remote/hybrid workforce.

General Session #2, Saving a Buck can Cost you a Million. Update on Recent Employment Cases and Mistakes that Employers Keep Making, presented by Scott Atwood, Esq. and Robert Shearman, Esq.

Continue Reading Registration is Open: Southwest Florida Legal Summit

Health-related apps are widely available for smartphones and watches. There is no shortage of connected health-monitoring devices such as personal glucose and heart rate monitors.

These apps and devices read, track and record both health-related information and, by signing up for or registering the app or device, information that identifies the particular person using the app or device. Some of these apps and devices even interface with other apps or devices; for instance, syncing the calendar apps records histories like sleep cycles, heart rate or glucose levels or to forecast such as fertility cycles. The question then arises:

What protection do consumers have over the health and personal data generated by these relatively new apps and connected devices?”

The Federal Trade Commission (“FTC”) recently issued a policy statement addressing this issue and protection of the information gathered by these relatively new technologies.

Existing Framework

Privacy of health-related information gathered by providers of healthcare services or supplies — such as physician offices and pharmacies — has long been protected by the Health Insurance Portability and Accountability Act (“HIPAA”). HIPAA also contains provisions requiring healthcare providers to notify impacted individuals when HIPAA-protected data is breached or compromised and the FTC enforces those provisions.

Continue Reading FTC Addresses Privacy Concerns over Data Collected by Health-related Apps and Devices

Data privacyCurrently, there is no broad, generally applicable federal law or regulations concerning data privacy, the collection and use of data or consumers’ rights regarding same. Instead, the matter has been left to the individual states to address. California has led the charge and its data privacy laws are generally regarded as the strongest and most consumer-friendly.

2021 Florida Legislative Session

Earlier this year, the Florida legislature took up the question of online privacy and considered HB 969, the Florida Consumer Data Privacy Act. Modeled after similar legislation in California, HB 969 contained provisions that, among other things, imposed requirements on businesses that collect information from consumers via websites or apps. Specifically, such businesses would be required to inform consumers exactly what data they collect and how they use that data. Consumers would then have the opportunity to grant or deny authorization to collect and/or use that data. HB 969 also contained a provision that would have allowed consumers to sue businesses that used information without authorization.

Because of the parallels to California privacy law and the rights it would give consumers, HB 969 was a landmark piece of legislation that, in terms of data privacy, would rank Florida among the most protective states in the Union. However, HB 969 was heavily lobbied and debated as business interests did not like the potential exposure to suits from consumers relating to the use of personal data. While there was broad, bipartisan support for the bill, the Legislature could not compromise and HB 969 died on the floor on the final day of the legislative session.

Where does Florida rank?

Continue Reading Data Privacy in the USA: Where does Florida rank? Where are we heading?

CryptocurrencyOver the last several months, there have been dozens of news stories about cryptocurrencies, Blockchain, and the related technologies they have created. One item, in particular, has received an incredible amount of press—the NFT. Who has not heard of the $69 million price tag on Everydays – the First 5000 Days and other outlandish prices for digital art. This article will try to explain just what an NFT is and, because of their relationship to the creative arts, some of the intellectual property issues surrounding them.

It all starts with Blockchain

Blockchain is a technology that has emerged as an innovative, record-keeping technology that authenticates transactions. It is essentially a transaction ledger that is open and decentralized, so anyone, with proper access credentials, can view the ledger to the authenticity of whatever is being transferred and the chain of ownership. Blockchain is the technology behind cryptocurrencies like Bitcoin and Dogecoin and ensures that the cryptocurrencies being transferred in a transaction are authentic.

What is the difference between “fungible” and “non-fungible”?

Continue Reading NFTs and Intellectual Property

Hello My Name IsWhen launching a business or a new product, one of the most important initial considerations is the name of that business or product. The name is the first thing a potential consumer comes into contact with and what the consumer will remember. The name is the vehicle by which all marketing will travel and will be repeated over and over in advertising, on social media and websites. It is, therefore, one of the things that businesses strive to “get it right.”

Usually, this is something that is left to the creative types — those who understand market research, focus groups and creating all-around brands. However, even at the early stages, businesses should pay attention to the legal side of branding to make sure they “get it right.” If you are launching a new business or a new product, be sure take into consideration the following areas.

Will the name also be the company name?

If so, in addition to any trademark concerns, it is imperative to check that the company name is available in the state where the business will be formed. Most states do not allow two businesses to have identical names, regardless of the goods or services they offer.

Is the name distinctive?

Continue Reading Branding 101: What’s in a Name?

As we age, memories of family and friends become all the more treasured. Indeed, for many of us, our most valued possessions are those things which “captured” such memories – home videos of our children’s first steps, photo albums of family members, and so on.

Traditionally, making estate planning provisions for these items was relatively simple – memories were all “captured” in tangible “containers,” i.e., recording media, such as photograph paper, VHS tapes, CD’s and DVD’s.

More recently however, digitization has changed the way memories are stored. Gone are the days of physical “containers.” Photographs, videos and other media are now almost exclusively stored in digital format: whether on a physical device such as a laptop computer or “in the cloud” on platforms such as Gmail, Facebook, DropBox and iCloud.

This continuing digital revolution has changed the way we store intangible, electronic assets – or “digital intellectual property.” Ownership of a “container” is different than ownership of the underlying rights in the content stored in such a “container”: an important distinction to keep in mind when estate planning.

Digital Executor

First, select an executor. This person will carry out the will’s instructions and is a critical part of any estate planning. Often, executors are tasked with collecting, liquidating and distributing the assets of an estate to various named beneficiaries. Unfortunately, many executors are ill-prepared for the various challenges associated with the collection and distribution of digital assets.

Accordingly, estate planners may wish to consider appointing an additional, “digital executor” – a person who is technologically savvy and can help the primary executor with the various computer-related functions of managing digital intellectual property. This could be an independent professional (Henderson Franklin offers such service) or a computer-literate family member who can help secure and distribute digital IP in accordance with the terms of the will (e.g., ensuring that all the testator’s family and friends receive access to digital photographs, videos, etc.).

There are three primary guiding principles which estate planners should follow, namely:

  • maintaining physical access to hardware;
  • maintaining electronic access to hardware and digital access to software; and
  • proactively establishing a legal right for loved ones to access digital content.

Physical Access to Hardware

Continue Reading Protecting Your Digital Intellectual Property Through Estate Planning

Business relationships often lead to the exchange of sensitive information or access to highly confidential matter. When faced with this situation, is it enough to merely tell your business partner that something is confidential? Absolutely not.

Businesses should always protect their confidential information using a Non-Disclosure Agreement (NDA). NDAs are commonly used when businesses are contemplating or negotiating some sort of contractual relationship or deal. The NDA allows one party to share confidential and trade secret information with another and places restrictions on how the other party can use that information and obligates the other party keep such information confidential.

Under both the Federal Defend Trade Secrets Act and Florida’s Uniform Trade Secrets Act, trade secret owners must make reasonable efforts to maintain the secrecy of their confidential information. Using an NDA when disclosing confidential information demonstrates making reasonable efforts to protect that information.

However, some businesses do not have a standard form NDAs they can readily use. Also, many other businesses develop a general and broad NDA that they use over and over in all situations. Because it is good practice to have an NDA ready for situations where disclosure of confidential information is required, business should keep in mind the following issues to ensure they are adequately protected.

No Expiration Dates

Continue Reading 5 Simple Things to Keep in Mind with Non-Disclosure Agreements

Since businesses like Amazon and eBay first burst upon the scene in the mid-1990s, shopping via the Internet has grown from a quirky way to find a few items to a convenient way to purchase just about anything. As we approach the first major holiday season with people wary of exposure, travel difficulties and social distancing within families, shopping on the Internet is the preferred option for many people, including many who are not experienced online shoppers.

While shopping online instead of at the mall can certainly lower the risk of exposure to COVID, it does, however, increase the risk of exposure to other dangers, such as hackers looking for personal information, malware, and identity theft.

Safe Online Shopping Tips

Continue Reading Put personal info protection on your holiday shopping list

With Election Day rapidly approaching, campaigning has become fierce. From President Donald Trump and Joe Biden down to Congressional, State Legislature and local candidates, everyone is blasting out their “message.” One way politicians like to get their messages across is by music. Snippets of songs create earworms that voters begin to associate with certain candidates — so why wouldn’t a candidate use music in their messaging, especially anthemic songs like Bruce Springsteen’s “Born in the USA,” Neil Young’s “Rockin’ In the Free World,” or Tom Petty’s “I Won’t Back Down”?

While candidates love the association a song gives voters, often the artists do not. Every election cycle contains at least a few artist/politician disputes over use of music. How is this controlled and who has the right to control when and by whom music is used politically?

Copyright Law

Copyright protects original expressions reduced to tangible form. This includes music, both recorded and written, lyrics, and the song composition or arrangement. For a given piece of music, there may be several different copyright owners — the songwriter may own the lyrics, the composer may own the score, a record label or publisher may own the recorded version of a song. Copyright gives the owner of the expression the right to control copying, distribution and even use of copyrighted material in particular circumstances.

How does this play in to political marketing and who controls the use of songs?

Continue Reading Political Music — Who Controls Use?

Trademark scams, as detailed in our earlier post here, are back with a vengeance. Because of the nature of these scams and the potential cost of falling for them, we felt it was time to address this topic again.

How Trademark Scams Work

Federal trademark applications and trademark registrations are public records. The United States Patent and Trademark Office maintains a searchable database of currently existing and expired trademarks. Among other information in the database is the name and address of the owner of a trademark application or registration, USPTO Serial and Registration Numbers, registration dates and even visual images of trademarks.

Scammers can obtain this information directly off the USPTO website and enter it into documents that look “official” and emanate from such “official” entities as World Trademark Register, United States Trademark Compliance Office, Patent & Trademark Bureau, United States Trademark Registration Office, and WTP Trademark Service.

Continue Reading Don’t Be the Victim of a Trademark Scam