Plaintalk - All about Copyrights and Trademarks

All* About Trademarks & Copyrights

@plainlegal plainlegal.com [email protected]

●  Consider large firm vs. small firm ●  Understand firm’s protocols ●  Consider how to use firm’s services

efficiently ●  Understand exactly who is the

“client” ○  Consider when separate

representation is appropriate

1.  “All about Trademarks & Copyrights” does not mean actually all. But I will talk a lot.

2.  All mistakes are mine, plainlegal only lets me

talk. 3.  None of this is legal advice. Even when I say

something smart.

@plainlegal plainlegal.com

*Disclaimers

Copyright


Copyright

“Protection for original works of authorship fixed in a tangible medium of expression.”

http://1.usa.gov/yff5xv


Copyright

What does that mean?

Express yourself. If you write, paint or make something, you get to use it. The creator owns the creation and gets to decide what to do with it.

The expression matters, not the idea.


Copyright is:

The right to exclude others from using, copying, reproducing or performing your work. Examples: Books, sound recordings, sheet music, computer source code, paintings, sculptures, photographs.


Copyright : Protection

Protection comes with publication of the creation. Protection is automatic. No need for “poor man’s copyright,” i.e. you do not have to mail it to yourself.



Why register it with the Copyright Office? ●  To bring an infringement lawsuit, ●  to be awarded statutory damages,

attorney’s fees, and ●  as prima facie evidence of ownership

if registered within 5 years.



When do you register?

Within three months from publication or before a copyright infringement takes place.

For more: http://1.usa.gov/1lXvqlH



Mark it clearly: © + name & year.

Digital creations:

Monitor and watermark through services like http://imgembed.com.

Police the work.


A work prepared by an employee within

the scope of his or her employment

or a work specially ordered or commissioned

in certain specified circumstances.

Copyright : Work for Hire


“Employee:” The employer controls the work and the employee and is in the business of creating such works. Works created within the scope of employment are works for hire.



A work specially ordered or commissioned for use: –as a contribution to a collective work, –as part of a motion picture / audiovisual work, –as a translation, –as a supplementary work, –as a compilation, –as an instructional text, –as a test, –as answer material for a test, –or as an atlas.



The parties have to expressly agree in

writing that something is a work made for

hire before starting the work.



Copyright : Using other people’s work

Ask for permission. Always.

Get permission in writing. (License.)

There are very few exceptions to the need

for permission.


Copyright : Fair Use

Copyright Exception - Fair Use: 1.  Transformative? Commercial or

nonprofit educational use? 2.  The nature of the copyrighted work. 3.  How much of the work is used?

How much of the new work comes from the old work?

4.  How does the use affect the market or value of the work?

5.  (Intent of the User? )



Transformative Use. If the original work been transformed by

adding a new expression or meaning.

Nature of the Work. You have more leeway to use a factual

work than a fictional work.



How much are you using?

The amount or substantiality taken. Not just how much, but what is used

matters. Market Impact.Does the new work impact

the market for the copyrighted work?



Intent of the User. Is the use good or bad?

Courts judge the intent of the user.



Comment and Criticism:

Using a few lines or parts of a copyrighted

work to comment or criticize is allowed because it is assumed that the public

reaps a benefit from the use.



Parody.

Allows for fairly extensive use of the original work.

(Goldieblox vs. Beastie Boys – Claim of Parody for commercial use.)


Copyright : Infringement

Infringement is unauthorized use or any use without permission.

Includes the reproduction, distribution, performance, public display, or

creation of a derivative work without the permission of the copyright

owner.


Infringement is regardless of format.

Re-posting without permission is copyright infringement.

Unauthorized sharing of digital files is copyright infringement.

Adding the source or a disclaimer is no excuse.



Remedies:

Injunctions to stop unauthorized use.

Damages. (Statutory Damages may be up to $150,000.00 per infringement.)

Impounding and disposition of infringing articles.



Defenses:

Fair Use.

Permission.



Statutory Damages

may be up to $150,000.00

per infringement.

17 US Code §504 (c)



Copyright

Questions?


Trademarks


Trademarks

Trademarks protect words, phrases or symbols / designs that identify the origin

of goods and services.

A trademark conveys the right to exclude others from using the mark in a confusing

manner.

Time Period: potentially, forever.


Trademarks : Examples


Trademarks

Trademark rights are limited to goods and services they are

used in connection with.


What is a Trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that

identifies and distinguishes the source of the goods of one party from those of

others.


Trademark Rights

All trademark rights require use.

Federal and state registrations exist.

Common law rights afford a lower level of protection.


Federal Trademark Registration

Actual, continuous use of the mark in connection with the goods or services in interstate commerce is required.

Use must be proven for a registration.


Actual use must be proven to keep the registration in force.

Between 5th and 6th year from date of registration, then renewals every 10 years from the date of registration.

The USPTO issues no reminders.

Federal Trademark Registration


Picking your mark:

Fanciful: A made-up word (makes a very strong mark).


Picking your mark:

Arbitrary: A term from unrelated goods or services (still makes a strong mark).


Picking your mark:

Suggestive:

A term implying what the goods and services are (can make a strong mark).


Picking your mark:

Descriptive? Requires Secondary Meaning. Fame of the mark may allow for a registration,


Keeping your mark:

“Generification:” May void trademark rights.


Trademark application

Filing Basis:

Use.

Intent to Use.

Foreign Priority.

International Agreement.

Fame. Five years of continuous use and market perception that you are famous.


Enforcement

Use it or lose it. Police and enforce your mark. Be nice. Be smart. Be careful. (+ talk to a lawyer.)


Enforcement

Cease & Desist Letters. (Beware of the “Streisand Effect”)

Oppositions.

Cancelation procedures.

Law suits.


Examples:

“Unicorn - the new white meat.” Law firm sends a

cease & desist letter claiming trademark infringement of “The Other White Meat” on behalf of National Pork Board.

http://bit.ly/A0pyf6


Trademark Infringement

Unauthorized use of a trademark.

Standard: Likelihood of Confusion



Factors: 1.  the strength of the mark; 2.  the proximity of the goods; 3.  the similarity of the marks; 4.  evidence of actual confusion; 5.  the similarity of marketing channels used; 6.  the degree of caution exercised by the

typical purchaser; 7.  the defendant's intent.

Polaroid Corp. v. Polarad Elect. Corp.,

287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961)



Dilution: Unauthorized use on unrelated or different use, without likelihood of confusion.

If a mark is famous, owner may bring an action for dilution.

Successful claim stops “blurring” or “tarnishment.”



Unauthorized use of a trademark.

Standard: Likelihood of Confusion



Passing off, (seller associates another party’s mark with a good or service)

reverse passing off, (seller removes another party’s mark prior to sale)

contributory passing off, (inducing another to pass of its product as somebody else’s product)

misappropriation(for unregistered trademarks).


Trademark Infringement : Defenses

Fair Use or Parody

Fair Use: Using a trademark in its descriptive sense.

Nominative Use: Use of a trademark is necessary to identify the relevant product.


Trademark

Questions?


●  Consider large firm vs. small firm ●  Understand firm’s protocols ●  Consider how to use firm’s services

efficiently ●  Understand exactly who is the

“client” ○  Consider when separate

representation is appropriate

Oliver Platz, Esq.

+1 951 667 5289

[email protected]

http://platz-ip.com

http://about.me/platz


THANK YOU!

[email protected] @plainlegal plainlegal.com

Date post:	08-May-2015
Category:	Business
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Plaintalk - All about Copyrights and Trademarks

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