Copyright and Trademark Law Basics Heather E. McNay For Georgia Lawyers for the Arts August 20, 2014...

Copyright and Trademark LawBasics

Heather E. McNayFor Georgia Lawyers for the Arts

August 20, 2014

© 2014 Heather E. McNay 1

• Copyright

• Trademark

• Patent

• Trade Name

• Trade Dress

• Trade Secret

• Right of Publicity

• Other: Customer Lists, Know-how, etc.

Types of Intellectual Property

2


Copyright Basics in the U.S.The US Constitution gives Congress the power to:

– Enact laws “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Article I, Section 8, Clause 8 of the United States Constitution

Copyright


When do you acquire Copyright protection?

· Copyright protects “original works of authorship” that are fixed in “a tangible form of expression.”

· Therefore, rights begin at the moment of “fixation.” · When the painting or novel is “finished.”

Copyright


What is protected?

· Literary works (all text, including computer software)

· Musical works · Dramatic works · Pantomimes and choreographic works · Pictorial, graphic, and sculptural works · Motion pictures and other audiovisual works · Sound recordings· Architectural works

Copyright


What is not protected?· Ideas, concepts, or discoveries· Titles, names (depends), short phrases, and

slogans· Works that are not fixed in a tangible form of

expression such as improvised speech or dance· Works consisting entirely of information that is

commonly available and contains no originality· Anything written or created by the US

government

Copyright


What rights does the owner control?

• Rights to:· make copies of the work· distribute copies of the work · perform the work publicly (such as for plays, film, or

music)· display the work publicly (such as for artwork, or any

material used on the internet or television)· make “derivative works” (including making

modifications, adaptations or other new uses of a work, or translating the work to another media)

Copyright


Copyrights for Musicians• For copyright purposes, a sound recording is separate from a

composition.– They are not considered the same work under copyright law.

Compositions are protected by publishing rights.• Special rules apply to those who want to perform cover versions of

copyrighted songs.– For those who want to perform a cover version of a copyrighted song,

set rates must be paid to the copyright owner to acquire "mechanical rights" to use the music.

• There are also Performance Rights associated with sound recordings and the composition.

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How long does Copyright protection last?

(Current Act)*

*since 1978

• For the life of the author, plus 70 years

• 95 years for corporations

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Copyright


Popular Copyright Myths· If an image is on the internet/Google it is in the public

domain. · If there is no Copyright notice on the image, I don’t

need permission.· If I don’t profit from the use, I don’t need permission.· If I remove the image after notice, I don’t owe any

money to the Copyright.· If I alter the image X% I don’t need permission.· If I only use a part of the image I don’t need permission.

Copyright


Is Copyright notice needed?· Since March 1989: Copyright notice is no

longer required for published works· Notice is voluntary but recommended

· Proper notice: · © year name· Copyright year name· On first page or in meta data

Copyright


Who owns Copyright?· For example:

· a freelance artist who created the Copyrighted work

· an employer who hires employees who create

• It depends on the written agreement. If no written agreement, look to whether Copyrighted work is part of the job.

Copyright


What is Public Domain?

· Works out of Copyright

· US - All published works before 1923

· Works that fell out of Copyright for failure to register or renew under 1909 Act or for lack of notice before 1989

Copyright


Limitations on owner’s rights

· "Fair Use" doctrine allows limited copying of Copyrighted works for educational and research purposes. · The Copyright law provides that

reproduction "for purposes such as criticism, news reporting, teaching (including multiple copies for classroom use), scholarship, or research" is not an infringement of Copyright.

Copyright


What is Fair Use?

17 U.S.C. § 107Notwithstanding the provisions of sections 17 U.S.C. § 106 and 17 U.S.C. § 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:•the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;•the nature of the copyrighted work;•the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and•the effect of the use upon the potential market for or value of the copyrighted work.The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.[4]

Copyright


What is Fair Use?

· Examples:· Class handouts of very short excerpts from

a book, magazine, newspaper, etc.· Quoting for purposes of reporting the

news or criticizing or commenting on a particular work of art, writing, speech, parody or scholarship

Copyright


What is not Fair Use?

· Using a photograph or other image to illustrate a newsworthy story (because the subject of the story is newsworthy it does not make the image newsworthy)

· Creating a similar photograph that incorporates elements of the first photograph

Copyright

Parody can be Fair Use

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Annie Leibovitz Case. She sued the movie studio for Copyright infringement and lost. Defendant argued parody and prevailed. The defendant established that they were making a social comment on her photograph. This photograph was a famous and controversial Vanity Fair cover. Parody allows you to borrow just enough to conjure up the original. In this case, notice that even the same ring was used in the recreated image. Shows that

even a commercial use can be parody as it was to promote a movie. Leibovitz v. Paramount Pictures Corp., 948 F.Supp. 1214 (S.D.N.Y.1996), aff'd, 137 F.3d 109 (2d Cir.1998).

Copyright

Change of medium is still an infringement

Koons v. Art Rogers 506 U.S. 934 (1992)Sculpture artist Jeff Koons lost this Copyright infringement case. The artist asserted it was fair use to change a photograph into a 3 dimensional work without obtaining a license. The court disagreed finding that substantial Copyrightable elements were borrowed despite the change in medium. In this situation Koons was a famous sculptor and Rogers was a commercial photographer. Koons specifically requested that his artisans copy the photograph exactly. He was seeking to copy the “expression” of the couple holding the string of puppies.

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Copyright


What is infringement?

· Use of whole or part of an image without permission

· Use beyond the scope of a license· Adapting an image without permission (art

rendering)· Asking another photographer to recreate

the image

Copyright


Who is responsible?

· The company that directly infringed· Employees or individuals who participated

in the infringement or should have supervised

· Anyone who publishes the infringing image whether they had knowledge or not

· Must prove Access and Substantial Similarity

Copyright


Actual copying

· Must show the alleged infringer had access to the original

· Must show the alleged infringer actually copied protected elements of the original in creating the second image

Copyright


Substantial similarity

· There is no hard and fast rule for what is substantially similar

· The two photos are compared to one another in court

Copyright


Scenes a Faire

A Defense to Infringement:·“Scenes a Faire” refers to situations in which there is essentially no other way to express a particular idea except by using certain elements and in such instances, those elements will often be termed “scenes a faire.”

· For example, a photo of a building will naturally look similar to another photo of the same building.

Copyright

Kaplan v. Stock Market Photo Agency, Inc.

25

The Court denied the photographer’s claim of Copyright infringement.

KAPLAN v. STOCK MARKET PHOTO AGENCY, INC.No. 99 CIV. 10218 AGS.

Copyright

26

Another example courtesy of Getty Images Inc. The user liked image but wanted model in less formal clothes (suit in original). Instead of asking, they had the photograph recreated. This was settled out of court when contacted by Getty Images, Inc. A court likely would have found infringement.

Copyright


Can Copyright be transferred?

· Non-exclusive rights can be transferred without a writing.· A license

· Exclusive rights require a writing signed by Copyright holder or authorized representative.

Copyright

How to license

Broad Rights/Subscription

· May use same image for many uses without additional license - restrictions still apply

· No exclusive use available

· Availability to use a collection of images for a yearly/monthly fee (subscription)

Rights Managed

· License limited to particular use and time period

· May request and pay for some exclusive use

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Copyright


Why register?

· Required before filing a claim (US authors)· Remedies limited to actual damages and

no ability to recover attorneys’ fees if work registered after infringement.

· With registration before infringement, you can seek statutory damages ($750-$30,000) and attorneys’ fees and statutory damages can be enhanced up to $150,000 if the infringement was willful.

Copyright


Registration options

· Photographers - group registration regulations for published works (www.Copyright.org)

· All artists can register large groups of unpublished works.

· Published artwork must registered separately from unpublished (display not a publication).

Copyright


Requirements

· Currently Form VA (www.Copyright.gov/forms)

· Deposit of work· Currently $45 per application

registration fee· Additional special handling fee if needed

on expedited basis · Do not use regular mail

Copyright


Digital Millennium Copyright Act (DMCA)

• Section 1202 Damages for Removal of Copyright Management Information (CMI)

· Elements-Remove or alter CMI (watermark/Copyright information)

· intent to induce, facilitate or conceal infringement

• Statutory damages $2,500 to $25,000

Copyright


ISP Safe Harbor

· No monetary liability for content of user stored on its system if infringing content is removed from website expeditiously

· ISP must receive proper notice· Can still proceed against direct website

infringer

Copyright


Notice and Take Down Letter· Send to ISP’s registered agent· Must identify infringed works and location· Must be in made in good faith belief· Must swear you have authority to

represent Copyright owner under penalty of perjury

· Physical or electronic signature

Copyright


Why should you worry about Copyright?

· Substantial monetary damages can be awarded (actual damages, profits)

· Statutory damages ($750-$30,000 and up to $150,000 if the infringement was willful)

· The infringing use can be enjoined· Attorney’s fees· Criminal offense under some circumstances

Copyright

– Word

– Symbol

– Slogan JUST DO IT.

– Product or packaging design

What Is a Trademark?

that identifies the source of a specific product or service and distinguishes it from others in the marketplace.

36

Trademark

Service markexamples

Trademarks and Service Marks

37

Trademark

• Sound

• Color

• Fragrance

• Design of a business establishment

• Motion

• Shape

Nontraditional Marks

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Trademark

• Collective mark

• Certification mark

Other Kinds of Marks

39

Trademark

• Trade/Business Name: identifies a company or business.

– Example: The Coca-Cola Company

• Trademark: identifies the goods or services of that company.

– Example:

Trademark vs. Trade/Business Name

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Trademark

• Indicates the source or origin of goods or services.

• Assures consumers of the quality of goods bearing the mark.

• Creates business goodwill and brand awareness.

Functions of a Trademark

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Trademark

1. Select

2. Clear

3. Protect

Process of Securing a Trademark

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Trademark

Selecting a Mark

The more distinctive the mark, the greater its level of legal protectability. Generic marks are not capable of trademark protection. Descriptive marks are capable of protection only with a showing of secondary meaning.

Distinctiveness Spectrum

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Trademark

• International screening search

• Country-specific search– Trademark registers – classes/categories– Corporate names– Internet uses and domain names– Other directories/dictionaries

• Local expertise

Trademark Searches

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Trademark

• Rights are territorial – may be registered through:

• Single trademark office• Regional trademark systems• Madrid (“International Registration”)

system

Obtaining Trademark Rights

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Trademark

Rights are obtained:

- By registration; or

- By use (common law rights)

Obtaining Trademark Rights (cont’d)

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Trademark

• Registrability- Meets the legal requirements – that is, not generic, not immoral,

etc.

• Availability- Is not identical or confusingly similar to a prior-registered mark or

a mark that is the subject of a pending application (assuming that the application is ultimately accepted).

- Is not being used in the same market as an identical or confusingly similar mark in connection with similar goods or services.

• Application Procedure- With the national trademark office.- United States: state registration (with the secretary of state) or

federal registration (with the USPTO).

Trademark Registration

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Trademark

®

______ is a trademark/service mark of _______

Notice of Registration

TM

SM

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Trademark

• Improper use • Failure to police

• Genericide • Failure to renew

• Non-use • Cancellation

• Improper assignmentor licensing

Loss of Rights

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Trademark

• Once a trademark, not always a trademark

• Important to

police third

parties’

unauthorized

and/or

improper

use

Proper Use — Avoiding Genericide

escalator

dry ice

cellophane

aspirin

linoleum

Trademark

• Use the mark followed by a noun.Incorrect: A KLEENEXCorrect: A KLEENEX tissue

• Do not pluralize a mark.Incorrect: Two DELLSCorrect: Two DELL computers

• Do not make a mark possessive.Incorrect: POST-IT’s qualityCorrect: POST-IT note pads’ quality

• Do not use a mark as a verb.Incorrect: Xerox a documentCorrect: Photocopy a document on a XEROX copier

• Use consistent, proper spelling.Incorrect: H and MCorrect: H&M

Proper Use — Avoiding Genericide

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Trademark

• Thank you!

• Any Questions?

?Thank you to:

Picture Archive Council of America (PACA) International Trademark Association (INTA)for certain slides.

52© 2014 Heather E. McNay

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