plaintalk - all about copyrights and trademarks
DESCRIPTION
Oliver Platz, an experienced intellectual property lawyer, shared what all entrepreneurs, small businesses, and start-ups should know about trademarks and copyrights. You'll learn how US trademark filings work and how to increase the chances of receiving your trademark.TRANSCRIPT
All* About Trademarks & Copyrights
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● 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.
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*Disclaimers
Copyright
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Copyright
“Protection for original works of authorship fixed in a tangible medium of expression.”
http://1.usa.gov/yff5xv
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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.
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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.
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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.
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Copyright : Protection
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.
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Copyright : Protection
When do you register?
Within three months from publication or before a copyright infringement takes place.
For more: http://1.usa.gov/1lXvqlH
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Copyright : Protection
Mark it clearly: © + name & year.
Digital creations:
Monitor and watermark through services like http://imgembed.com.
Police the work.
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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
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“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.
Copyright : Work for Hire
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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.
Copyright : Work for Hire
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The parties have to expressly agree in
writing that something is a work made for
hire before starting the work.
Copyright : Work for Hire
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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.
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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? )
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Copyright : Fair Use
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.
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Copyright : Fair Use
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?
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Copyright : Fair Use
Intent of the User. Is the use good or bad?
Courts judge the intent of the user.
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Copyright : Fair Use
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.
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Copyright : Fair Use
Parody.
Allows for fairly extensive use of the original work.
(Goldieblox vs. Beastie Boys – Claim of Parody for commercial use.)
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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.
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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.
Copyright : Infringement
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Remedies:
Injunctions to stop unauthorized use.
Damages. (Statutory Damages may be up to $150,000.00 per infringement.)
Impounding and disposition of infringing articles.
Copyright : Infringement
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Defenses:
Fair Use.
Permission.
Copyright : Infringement
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Statutory Damages
may be up to $150,000.00
per infringement.
17 US Code §504 (c)
Copyright : Infringement
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Copyright
Questions?
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Trademarks
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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.
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Trademarks : Examples
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Trademarks
Trademark rights are limited to goods and services they are
used in connection with.
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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.
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Trademark Rights
All trademark rights require use.
Federal and state registrations exist.
Common law rights afford a lower level of protection.
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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.
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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
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Picking your mark:
Fanciful: A made-up word (makes a very strong mark).
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Picking your mark:
Arbitrary: A term from unrelated goods or services (still makes a strong mark).
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Picking your mark:
Suggestive:
A term implying what the goods and services are (can make a strong mark).
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Picking your mark:
Descriptive? Requires Secondary Meaning. Fame of the mark may allow for a registration,
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Keeping your mark:
“Generification:” May void trademark rights.
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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.
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Enforcement
Use it or lose it. Police and enforce your mark. Be nice. Be smart. Be careful. (+ talk to a lawyer.)
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Enforcement
Cease & Desist Letters. (Beware of the “Streisand Effect”)
Oppositions.
Cancelation procedures.
Law suits.
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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
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Trademark Infringement
Unauthorized use of a trademark.
Standard: Likelihood of Confusion
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Trademark Infringement
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)
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Trademark Infringement
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.”
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Trademark Infringement
Unauthorized use of a trademark.
Standard: Likelihood of Confusion
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Trademark Infringement
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).
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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.
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Trademark
Questions?
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● 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
http://platz-ip.com
http://about.me/platz
@plainlegal plainlegal.com
THANK YOU!
[email protected] @plainlegal plainlegal.com