1. Copyright and Trademark Law Basics
Heather E. McNay
For Georgia Lawyers for the Arts
August 20, 2014
© 2014 Heather E. McNay 1

2. Types of Intellectual Property
Copyright
Trademark
Patent
Trade Name
Trade Dress
Trade Secret
Right of Publicity
Other: Customer Lists, Know-how, etc.
Trademarks, Copyrights, patents, designs and trade secrets generally are described as intellectual property or intangible property because they are property rights that cannot be touched or felt, unlike personal property (e.g., a car) or real property (land). The terms, however, define different things.
A Copyright protects the original way an idea is expressed, not the idea itself. It includes artistic, literary, dramatic or musical works presented in a tangible medium, such as a book, photograph or movie. Software can also be protected by Copyright. This protection is given to works to prevent unauthorized copying. Copyrights have a fixed term but do not require registration and can be valid internationally.
A trademark protects a word, a symbol or a combination thereof used with in connection with a product or service in the marketplace. It is often referred to as a brand. Some countries also allow the registration as trademarks of nontraditional marks such as sounds, colors, slogans, holograms, product configurations or shapes. Trademarks are also territorial (with certain limited exceptions for very famous marks), and so, again, generally action to obtain and protect trademark rights must be taken in each country of interest. Trademark rights may continue indefinitely as long as the mark neither is abandoned by its owner nor loses its significance as a trademark by becoming a generic term (e.g., escalator, linoleum, zipper). Trademark rights usually are acquired through registration, although, in some countries, rights in trademarks can also be obtained just by use – these are called common law rights. Rights in a registered trademark are granted for a fixed term, which can be renewed for further fixed terms.
A patent protects the implementation of a new and useful idea, which includes a process and/or a machine. Patent protection is granted by governments, providing an inventor with exclusive rights to make, use and sell a patented invention. Patents have a fixed term and are territorial – that is, the patent must be protected in each country where you want to be able to assert your rights.
A trade secret can be any type of information used in one’s business and kept secret from others that gives the business a competitive advantage over competitors that do not know the secret information. The advantage is that a trade secret can last forever as long as the information is kept confidential. The downside is that once the information is disclosed, the owner of the secret has limited resources to maintain his or her competitive advantage.
Right of publicity is the right of an individual to control the commercial use of his or her identity, which includes an image, voice, signature or anything else that can be associated exclusively with a particular individual. In the United States, right of publicity is governed by state laws.
In some countries, there are other IP rights that can be protected (as listed on the slide).

3. 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
Source of US Copyright law comes from Article 8 of the Constitution
The founding fathers recognized that the science and arts would benefit from allowing an artist to control rights and derive an economic benefit from the work created. This is contrary to many user groups who now argue that the arts and sciences would progress by allowing users unfettered access to artist’s works without permission.
The full US Copyright Act can be found at 17 United States Code.
International rights – no need to register in every country:
The Berne Convention for the Protection of Literary and Artistic Works is the most important international treaty that addresses international protection for copyright. The United States acceded to that treaty in With the accession of China in 1992 and the Russian Federation in 1995, almost all of the world's most important countries now belong to the Berne Union. The Copyright Office publishes a listing of the countries that are parties to the Berne Convention, as well as other international copyright treaties like the Universal Copyright Convention. The result then, is that a United States author automatically is entitled to protection against the infringement of his work in a foreign jurisdiction that is a member of the Berne Union. The U.S. author does not have to register the work in the foreign jurisdiction or comply with any other formalities required in the foreign jurisdiction. In fact, there are few benefits, if any, from registering the work in a foreign jurisdiction. However, if an act of infringement occurs in a foreign country, then the infringement lawsuit must be brought in the courts of the foreign country, and will be prosecuted under the terms of the foreign jurisdiction's copyright law, not under the United States Copyright Act.

4. 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.”
The fixed form does not have to be directly perceptible so long as it can be communicated with the aid of a machine or other device.
“Original” is a minimal level of originality. Excludes telephone listing, order forms and other items that can only be expressed in essentially one way. It does not require “creativity”. Almost any photograph can meet the minimum level of creativity.

5. 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
Photographs, illustration and computer generated graphics are protected as “pictorial, graphic and sculptural works”
17 USC Section 102(a)

6. What is not protected? Ideas, concepts, or discoveries
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
Other laws may protect these categories, for example, short phrases could have trademark protection.
Section 102(b) excludes ideas, processes, etc.
Copyright does not protect the IDEA only the EXPRESSION of the Idea.

7. What rights does the owner control?
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)
Section 106 describes exclusive rights a Copyright holder controls.
These rights are exclusive to the Copyright owner and permission is needed, unless there is a specific exception such as fair use, or limited use for preservation by libraries or for use in education under the TEACH Act which permits certain performances and displays. These exemptions are limited so its better if uncertain to assume that permission is needed to use a work.
(For statutory limitations, see Sections 107 (fair use) 108 (libraries and archives) 110 (education). Other exemptions exists under the Copyright Act as well).
Copyright is like owning a bundle of sticks (like pick up sticks). You can give different users different rights/sticks. The same image can be used on a magazine cover, in an advertisement, in a website design or incorporated in a documentary film, for example.

8. 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.
Covers: Under the law, the compulsory fee is paid through the Copyright Office to the copyright owners of the composition. Presently, the rates are the higher of 9.1 cents per song or 1.75 cents per minute of playing time. To better streamline the process, a nonprofit organization, the Harry Fox Agency, provides an easy to use website that provides a much simpler licensing system than licensing through the Copyright Office. For small runs of under 2,500 CDs or digital downloads, Harry Fox provides an online service called Songfile which makes for easy licensing of any of the 2 million songs in the Songfile database.
Unlike the mechanical royalty, the public performance royalties are not determined through congressional action. Instead, the three performing rights societies — ASCAP, BMI and SESAC — license the venues where music is performed publicly. Public performances include live shows at public venues such as bars, restaurants, and auditoriums as well as performances of pre-recorded music on radio, television, the Internet and at public venues.

9. How long does Copyright protection last? (Current Act)*
For the life of the author, plus 70 years
95 years for corporations
The current act has been effective since Under the old Act of 1909, there was a 2 tier system for published and unpublished works. Published works required registration and subsequent renewal during the 28th year. As there have been many amendments extending the second renewal term, the term for pre 1978 works is very confusing. It is best to consult some very comprehensive charts available through the Copyright Office website where you can find circulars on Copyright duration or some university websites such as Cornell Law School
Circular 15a-Duration of Copyright
Circular 15t -Extension of Copyright term
*since 1978

10. 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.
THESE ARE SOME COMMON MYTHS THAT THIS PRESENTATION IS MEANT TO DISPELL
The internet has made information and images available at everyone’s fingertips, however, what exclusive rights belong to a Copyright holder, and the uses that do not require permission are not well understood. Hopefully, this presentation will make these issues a bit clearer or at least better understood.

11. 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
Recommend where possible to include notice or at minimum a credit. It prevents someone from claiming innocent infringement and a reduction of damages. It helps identify the Copyright owner or representative. You cannot lose Copyright by no notice or improper notice. If an orphan works amendment to our Copyright law is enacted, it will assist in locating the Copyright holder and avoid having a protected work be considered an orphan that can be used without permission. With digital artwork, you can include the Copyright owner name in the meta data.
As credit or attribution is not required in most instances under the US Copyright Act, it is not an infringement if a work is used without credit. Credit can only be required by contract. Credit should be requested and required with any non-advertising use and included in the license agreement. If a work is licensed through a representative, the representative may share the credit line with the Copyright owner as a source credit (i.e. Photographer name/photo library). Most advertising uses do not include a credit notice. This is result of industry practice. An advertisement is made up of various components, including the artwork, so credit is not given to any one party.

12. 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.
Just because a company pays a freelance artist to create an image, does not transfer Copyright ownership. A transfer requires a writing signed by the author unless you are a true employee
When copyright law was revised in the mid-1970s, musicians, like creators of other works of art, were granted “termination rights,” which allow them to regain control of their work after 35 years, so long as they apply at least two years in advance. Recordings from 1978 are the first to fall under the purview of the law, but in a matter of months, hits from 1979, like “The Long Run” by the Eagles and “Bad Girls” by Donna Summer, will be in the same situation — and then, as the calendar advances, every other master recording once it reaches the 35-year mark.

13. 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

14. Limitations on owner’s rights
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.

15. What is Fair Use? 17 U.S.C. § 107 Copyright
Notwithstanding 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]
This is a defense to infringement and is limited in scope. If a use qualifies as fair use is decided by the courts, which balance various factors, and is decided on a case by case basis: Think GUIDELINES, not RULES.
the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;
the nature of the Copyrighted work; factual or more artistic
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.
Factor 4 is given the most weight. Courts talk about whether a work is “transformative”.

16. What is Fair Use? Examples:
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
The distinction between "fair use" and infringement may be unclear and not easily defined. There is no specific percent of a work of visual art that may safely be taken without permission. Acknowledging the source of the Copyrighted material does not substitute for obtaining permission. Fair use is determined by the courts on a case by case basis and there are no precise rules to determine when the exemption applies.

17. 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
Examples:
When a celebrity dies, the death is newsworthy, but any photograph of them is only descriptive and must be licensed.
However, if a famous artist’s dies, the news media could show a few samples of his or her most recognized artworks without permission.

18. Parody can be Fair Use Copyright
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 (S.D.N.Y.1996), aff'd, 137 F.3d 109 (2d Cir.1998).
This was considered artistic parody and even though it was a commercial use, it did not take money away from Vanity Fair.
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 (S.D.N.Y.1996), aff'd, 137 F.3d 109 (2d Cir.1998).

19. Change of medium is still an infringement
Copyright
Change of medium is still an infringement
The Court determined he should have paid them a license. They were both in the business of being artists and Koons used the artistic element that made it interesting.
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.

20. 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
An infringement is any violation of the exclusive rights of a creator [under Section 106], unless there is a defense such as fair use. You can make an infringing copy by direct copying or through copying substantial elements of a Copyrighted work, in any medium. The list are examples of how a work can be infringed.

21. Who is responsible? The company that directly infringed
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 does not require intent to infringe. You can infringe even if you did not know the work was infringing, for example a company hires a web designer who does not properly license images, the company that owns the website is liable.
There are different forms of infringement under Copyright law.
Direct –Actual infringer who “copies” the work.
Contributory Infringement- This includes “downstream” infringers. Any company that acquires, publishes and/or distributes a “product” that includes an infringing work is liable.
Vicarious Infringement- covers those who should have supervised or been aware of the infringement.
The Copyright Act provides for individual liability as well as corporate liability, so corporate employees cannot hide behind the protection of limited liability.

22. 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
The alleged infringer must have actually seen the original photograph for an infringement to exist. The likelihood that the alleged infringer used the original photograph can demonstrated by showing the he or she had access to the original. If two photographers coincidently create a similar image, no infringement would exist.

23. Substantial similarity
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
Ultimately a judge or jury will look at the images in question. There is no precise definition of what substantial similarity is. It is a question of fact as much as it is a question of law. How the image is perceived by a court is somewhat subjective, as is art itself. There is no fixed % an image can be changed to avoid infringement. That is a common myth that circulates within design studios.

24. Scenes a Faire A Defense to Infringement:
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.
Court will deny a Copyright claim if the similar elements result from a term called “Scenes a faire”-SCENES THAT MUST BE DONE

25. Kaplan v. Stock Market Photo Agency, Inc.
Copyright
Kaplan v. Stock Market Photo Agency, Inc.
Kaplan used photograph as promo piece in Creative Black book. The second image was originally created for an advertisement for a camera lens, then became a stock image with The Stock Market, reworked for Fox Crain’s ad. Kaplan claimed “imitation”. While it was not denied that the image on the left was used as the idea for the image on the right, the court denied the photographer’s claim of Copyright infringement. The idea of a businessman about to jump from a building was not protectable despite the similarities. The court went on to say that the similarities in the expression is a product only of the similarities in the idea. The Scenes a Faire doctrine embodies this principle. “Sequences of events necessarily resulting from the choice of setting or situation…are not protectable under US Copyright law.
There was some interesting comments made by the court. For example the court considered a businessman contemplating a jump a “frequently portrayed metropolitan scene”. The court essentially thought that the attire was a “uniform” of a businessman and that this camera angle was the only angle that one would use if photographing a “leap”. The court emphasized the different “moods” of each photograph.
The Court denied the photographer’s claim of Copyright infringement.
KAPLAN v. STOCK MARKET PHOTO AGENCY, INC.No. 99 CIV AGS.

26. Copyright
Another example courtesy of Getty Images Inc. User liked image but wanted model in less formal clothes (suit in original). Instead of asking, had the photograph recreated. Understand that it was settled when contacted by Getty Images, Inc..
In these obvious cases, a settlement is typical.
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.

27. 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.
Section 104 of the Copyright Act requires a writing for a transfer to be valid (except by operation of law)

28. How to license Broad Rights/Subscription
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
There are many different licensing models offering users a variety of rights

29. Why register? Required before filing a claim (US authors)
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.
All statutory damages are in the court’s discretion. Usually bears some relationship to actual damages but with additional amounts (often a multiplier) to discourage infringement again or by others.
Attorney’s fee are not automatic, must ask the court for them if you are prevailing party. Warning, a defendant can be a prevailing party if it defeat a Copyright claim or the damages sought by the plaintiff are unreasonable.
Plaintiff has the burden of proving that the defendant’s actions were willful
Section 504 (b) Actual damages
Section 504 (c) Statutory Damages
Can also seek injunctive relief, impoundment of goods, destruction of goods.
Criminal remedies are available as well to prevent piracy.

30. Copyright
Registration options
Photographers - group registration regulations for published works (
All artists can register large groups of unpublished works.
Published artwork must registered separately from unpublished (display not a publication).

31. 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
Summer 2007 Copyright Office anticipates that it will be able to offer online registration. There will be one form, and a reduced application fee. Deposit must be able to be submitted electronically as well.
Special handling fee is currently

32. 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
Enforcement is Section 1202 has been difficult because of the burden that the violation of this section must have been made with reasonable grounds to know that it will induce infringement.
The section 1202 claims can be made in addition to Copyright claims
The Digital Millennium Copyright Act (DMCA) is aUnited States copyright law that implements two 1996 treaties of the World Intellectual Property Organization (WIPO). It criminalizes production and dissemination of technology, devices, or services intended to circumvent measures (commonly known as digital rights management or DRM) that control access to copyrighted works. It also criminalizes the act of circumventing an access control, whether or not there is actual infringement of copyright itself. In addition, the DMCA heightens the penalties for copyright infringement on the Internet.

33. 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
Section 512(c) 1 of the DMCA offers limited liability to ISP’s who meet specific requirements
Must not have actual knowledge of infringing activity or aware of facts that from which infringing activity is apparent
Does not receive financial benefit attributable to the infringing activity, if it has the right and ability to control the activity
Upon notification responds expeditiously to remove or disable access
Cases have enforced this safe harbor to protect ISP’s from infringing activity of websites that the ISP hosts

34. Notice and Take Down Letter
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
Cases require strict adherence to 501(c) 3and the ISP is not considered to have notice of infringement if you fail to include all the necessary information
Usually very effective in getting content taken down in hours
Burden is on Copyright owners and representatives to identify content, problem is that it can be put up again,
ISP must implement and adopt a policy to provide for the termination of repeat infringers (Example Ebay has a written policy)

35. 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
Section
Copyright Lawsuits are expensive to defend.
In addition you may ruin a client relationship if the client receives a letter from a lawyer asking it to “cease and desist” all use
Advertising campaigns are expensive, and you don’t want to be embarrassed.
When a use is “enjoined” it is prohibited

36. What Is a Trademark? Word Symbol Slogan JUST DO IT.
Product or packaging
design
A trademark in its broadest sense is any word, name, symbol, slogan, design or device, package design, color, sound, touch, smell or combination thereof that identifies the source of the goods and/or services used in connection with the mark and distinguishes that source from others in the marketplace.
that identifies the source of a specific product or service and distinguishes it from others in the marketplace.

37. Trademarks and Service Marks
examples
In many countries, the term “trademark” refers to a mark that is used for goods (e.g., a car) and/or services (e.g., car repair services). Other countries use the term “trademark” to refer to any word, name, symbol, etc., that distinguishes a specific source of a PRODUCT from others in the marketplace and the term “service mark” to refer to any word, name, symbol, etc., that distinguishes the source of a specific SERVICE from others in the marketplace.
A service mark is, therefore, similar to a trademark, but it is used in connection with services (typically in advertising) to identify and distinguish the services of one source from those of others.

38. Nontraditional Marks Sound Color Fragrance Design of a business
Trademark
Nontraditional Marks
Sound
Color
Fragrance
Design of a business
establishment
Motion
Shape
Trademark protection can extend to nontraditional marks, such as sound, color, smell and product configuration. For example, the THX sound mark acts as a source identifier, as does the distinctive blue color of Tiffany’s jewelry box. A fragrance can act as a trademark; for instance, a scent in connection with sewing thread and embroidery yarn was registered where the scent was deemed not functional or an essential feature of the product. Other examples of nontraditional trade dress marks include Lamborghini’s motion mark for the car’s vertically opening doors; animated characters (e.g., the California Raisins or the M&M characters); and fabric designs that have obtained secondary meaning (e.g., Burberry’s plaid design).
Not all jurisdictions recognize all nontraditional marks. You will want to check with counsel in each jurisdiction of interest to see whether that jurisdiction’s trademark law allows protection of a specific nontraditional mark.

39. Other Kinds of Marks Collective mark Certification mark Trademark
A collective membership mark, also called a collective mark, is used to indicate membership in a group or an association when only members of the group or organization can use the collective mark. A collective mark distinguishes goods and services in accordance with particular characteristics and/or qualities defined by the group or association. An example of a collective mark is the LIONS CLUB mark, which indicates membership in that association.
A certification mark is used to certify the quality, regional origin or other origin of a product or service. A certification mark certifies that a product or service meets a certain standard of quality or is of a regional origin. An example of a certification mark is the "Woolmark," used to identify goods that are 100% wool.
The owner of a certification mark does not use the mark on its own goods or services, but rather allows others who meet a certain set of standards to use the mark on their goods or services.

40. Trademark vs. Trade/Business Name
Trade/Business Name: identifies a company or business.
– Example: The Coca-Cola Company
Trademark: identifies the goods or services of that company.
– Example:
A trade name or business name is used to identify a company or a business and serves as the name of the company or business. In contrast, a trademark or service mark is used to identify the source of the products or services that the company or business sells or provides.
However, a trade name or business name can also function as a trademark or service mark depending upon the context in which it is used. If a trade/business name is used as more than just the company name and it informs consumers where a product or service is coming from, it is being used as a trademark or service mark. For example, if the name is used as a noun ("You can get your traveler's checks from American Express"), it is a trade name; if it is used as an adjective ("You can get your AMERICAN EXPRESS traveler's checks here"), it is a trademark.
One company may have several different brands. For example, The Coca-Cola Company has brands for its soft drinks, energy drinks, juices, coffee drinks, mineral waters, etc., such as SPRITE, FULL THROTTLE, DASANI and so forth.
In some jurisdictions, existing trademark rights can be a potential obstacle to new trade or business names if the trademark and the trade or business name are identical or significantly similar. The inverse of the aforementioned is likewise correct, i.e., an existing trade or business name can be a potential obstacle to a new trademark if sufficient similarities are present.

41. Functions of a 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.
Trademarks protect consumers at the same time as they protect businesses.
Trademarks function as source identifiers, since they identify one seller’s goods and services and distinguish them from goods and services offered by others. For example, consumers understand that all products bearing the MICROSOFT trademark come from the same source.
Trademarks also signify that goods and services bearing the same trademark are of equal quality. Chocolate bearing the GODIVA trademark is all of the same quality; chocolate bearing the LINDT trademark is of a different (not necessarily lesser, just different) quality; chocolate bearing the M&M’s mark is of yet another different (but not necessarily lesser) quality. Goods and services bearing the same mark are expected to be of equal quality; therefore, consumers know what to expect when they purchase a product or service on or in connection with which a particular trademark is used. Consumers identify a particular trademark with a particular quality, and consequently trademarks are essential to creating goodwill and brand awareness among consumers.

42. Process of Securing a Trademark
Select
Clear
Protect
Ideally, a business should follow a careful three-step procedure for adopting and protecting a new mark.
The first step (selection) is to prepare, possibly with the assistance of marketing or advertising consultants, a list of potential marks, taking into account the countries where the mark is to be used or registered. You should also consider whether you need trademarks translated and/or transliterated into the local language and the Roman alphabet (e.g., Chinese, Japanese, Korean, Thai, Arabic, Cyrillic, Latin languages).
The second step (clearance) is to rule out marks that are not registrable or protectable. Registration generally is the easiest way to obtain protection – thus, if a mark is not registrable, generally it will be more difficult to protect. This step should include conducting a search to make sure the proposed mark is available for use and registration (i.e., it does not infringe someone else’s rights and is appropriate for the countries where the mark is to be used or registered (e.g., NOVA is a trademark used in some countries as the trademark for a car, but “No va” in Spanish means “it does not go” and may not be appropriate for the product name of a car).
The final step is to take appropriate steps to protect rights in the mark through proper use, registration and/or enforcement. In most countries, the first to register has superior rights. In countries that recognize common law rights, such as the United States, Canada and the United Kingdom, commencing proper use can confer limited protection.
We will now discuss each of these steps in more detail.

43. Distinctiveness Spectrum
Trademark
Selecting a Mark
Distinctiveness Spectrum
In selecting a mark, companies frequently select a word that is “catchy” and describes a characteristic of the goods or services. The more descriptive the mark, the less protection it provides; this means that other parties may be free to use descriptive words to advertise competitive products.
(Examples: SINGAPORE; UNITED AIRLINES.) Conversely, the less descriptive the mark, the greater the chances of exclusive protection for the mark.
The categories of distinctiveness, ranked in terms of strength from greatest to weakest, are as follows:
(a) Fanciful Marks: created from words that are coined or made up and that have no meaning in relation to the goods or services with which they are used. (Examples: HÄAGEN-DAZS for ice cream; EXXON for petroleum products.)
(b) Arbitrary Marks: created from existing words but have no meaning in relation to the goods or services. Fanciful and arbitrary marks are easier to protect but can be more expensive to promote. (Examples: APPLE for computers; TIDE for detergent.)
(c) Suggestive Marks: suggest, rather than describe, the goods or services or some characteristic thereof. The consumer must use imagination to understand the connection. (Examples: COPPERTONE for suntan oil; BURGER KING for quick-service burger restaurants.) Although suggestive marks are self-advertisers and, thus, easier to promote than arbitrary marks, they are subject to more conflict and may be afforded a narrower scope of protection.
(d) Descriptive Marks: describe either the goods or services or a characteristic or quality thereof. (Example: AMERICAN AIRLINES for airline services.) Included in this group are (1) laudatory words that attribute superiority to the goods (e.g., GOLD MEDAL and SUPREME), (2) geographic terms and (3) surnames. They are difficult to enforce unless the owner can show that the mark has become distinctive as applied to the goods or services.
(e) Generic Terms: consist of the common name of the goods or services to which they are applied. They are not capable of acquiring secondary meaning when used in their generic sense, and, thus, are not protectable as marks when so used. (Examples: computer, automobile, shuttle.)
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.

44. Trademark Searches International screening search
Country-specific search
Trademark registers – classes/categories
Corporate names
Internet uses and domain names
Other directories/dictionaries
Local expertise
Once a protectable mark has been selected, it is important to make sure the mark is available for use in the countries where you want to use it – for example, where the product is made and sold (or intended to be manufactured/sold) or where the services are provided (or intended to be provided). The only way to determine whether a mark is available is to conduct a search. Often this is done through a two-step process.
If you intend to use your marks in a number of countries, you could first conduct an international screening search – a quick search of various country trademark registers. A screening search is less expensive than a more comprehensive search and helps to eliminate marks that will obviously have a hard time being registered. Some countries have searchable online databases that can be accessed for free. If the international search reveals nothing of concern, the next step is to perform a more detailed search of each country’s trademark office’s database to see if the records reveal a confusingly similar mark that has already been registered or that is the subject of a pending application for the same or similar products or services. In most countries, the trademark registers are divided into classes, or categories, of registration. Generally, an application can be filed in one or more classes (some countries require a separate application for each class). Most countries follow the same classification system.
It is possible for the same mark to be registered for different products and/or services. Conversely, very famous marks, even if registered in only a few classes or categories of registration, sometimes are given wider protection and so will not be available for registration. These are called “well-known marks.” To illustrate, a car manufacturer would almost certainly not be allowed to register the COCA-COLA mark for cars or car servicing even if The Coca-Cola Company had no registrations in the classes for cars and car servicing. Because the mark is so well known, the public would assume that anyone selling cars under the mark was somehow connected with The Coca-Cola Company, and thus such use would “dilute” the value of the mark.

45. Obtaining Trademark Rights
Rights are territorial – may be registered through:
Single trademark office
Regional trademark systems
Madrid (“International Registration”) system
As mentioned above, trademark rights are territorial; therefore, they must be obtained on a country-by-country basis (with the exception of regional trademark options such as those available in the European Community (Community trade marks (CTMs)) and in certain African nations that have formed a central registration system (African Intellectual Property Organization (OAPI)), which provide unitary protection for a certain region). A number of countries throughout the world are also parties to treaties called the Madrid Agreement and the Madrid Protocol, through which a company or individual may seek an “International Registration” and “extensions” of trademark protection in several countries through a single filing in the applicant’s home country. Though the filing process is made uniform under this system, the determination of whether rights are available is still made by each “designated” country’s trademark authority. This topic is discussed in detail in the presentation “Madrid Protocol,” which is also available on INTA’s website.

46. Obtaining Trademark Rights (cont’d)
Rights are obtained:
- By registration; or
- By use (common law rights)
In most countries, trademark rights are acquired through registration. In some countries, the first person to register has the prior rights, which can create a race to the register. In other countries, such as the United States, Canada and the United Kingdom, trademark rights are acquired through use, and so, if there is a dispute as to who is first to register rights, the trademark owner entitled to registration is the one who first used the mark.
In many countries, you can have both registered rights – those acquired through the registration process – and unregistered rights – those acquired through use. Unregistered rights often are called “common law rights.” These rights exist regardless of whether the mark is registered and continue to exist as long as the mark is used. Registration is also possible in common law countries.
Registration provides certain advantages. For instance, when you are trying to enforce your rights against third parties, it is easier to prove to a court that you own a mark if you have a registration certificate, whereas in the case of common law rights you first have to prove that you have rights in the mark before you can enforce them. Registration also provides a presumption of nationwide rights, whereas common law rights are limited to the geographic areas in which the owner operates.

47. Trademark Registration
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).
Each country has its own laws relating to trademark registration. In many countries, a mark cannot be registered if it includes immoral, deceptive or scandalous subject matter or if it includes a flag or coat of arms of the country. In most countries, a mark cannot be registered if it is incapable of functioning as a trademark (i.e., if it is generic or overly descriptive).
Some countries refuse registration if the mark conflicts with similar marks of prior registrants for the same or similar products or services, while others do not refuse marks on this ground but instead publish the mark for opposition and allow interested parties to object if there is a perceived conflict. In the United States, for example, third parties have the opportunity to object to registration of marks. As part of the federal application procedure, the USPTO will give notice to the public of the publication of the mark, allowing interested parties to file oppositions if they determine that the applied-for mark infringes upon their rights.
In many countries, a mark will not be available for registration if it conflicts with a well-known mark, even if that well-known mark is not registered for the products or services of interest (refer to the comments on well-known marks, above).
Filing an application for trademark registration can be simple, and some countries, such as the United States, Australia, New Zealand and Brazil, allow for electronic filing. A few countries, such as the United States and Canada, require that the mark be in use prior to registration. In most other jurisdictions a registration can be granted regardless of whether the mark is in actual use. In these jurisdictions, use issues only arise later in the life of a registration, when the registration may be vulnerable to cancellation if the mark is not in use.
A party can register a mark at either the state or the federal level. A federal registration carries with it the presumption of nationwide rights, plus certain other benefits exclusive to federal registrations. A state registration represents rights that are generally similar, within the state of registration, to a user’s common law rights.

48. Notice of Registration
Trademark
Notice of Registration
______ is a trademark/service mark of _______ TM SM
Many countries have adopted the ® (alternatively called the R-in-a-circle, Circle-R or Encircled R, or registration symbol) as the notation used to advise the public that the mark has been registered. (Other notations, such as "Registered in the U.S. Patent and Trademark Office" or “Marca Registrada,” are also used in various countries.) In a few countries, such as China, marking is mandatory; in most, it is permissive. The registration notice can be used only with registered marks. Use of ® with any unregistered trademark may result in claims of fraud, misleading advertising or criminal penalties in some countries. Once a registration issues, it is important to use the ® symbol to place the public on notice that the mark is a registered protected intellectual property right. Failure to use the ® symbol can permit a defendant in an infringement action to argue that he/she/it did not know that the word or symbol was protected.
Instead of a notation, a “legend,” caption or footnote stating that “X is a trademark/service mark of Company A” can be used in the packaging, labels or other materials.
™ represents a claimed registered or unregistered trademark. It is an informal notification that there is a public claim as a trademark.
SM represents a claimed registered or unregistered service mark. Similar to ™, it is an informal notification that there is a public claim as a service mark.

49. Loss of Rights Improper use • Failure to police
Trademark
Loss of Rights
Improper use • Failure to police
Genericide • Failure to renew
Non-use • Cancellation
Improper assignment or licensing
Trademark rights may be lost through improper use, such as when the owner allows the mark to become the generic term for the product itself, a process known as “genericide.” Other instances in which trademark rights may be lost include:
• Non-use for an extended time, with insufficient steps taken to resume use.
Improper assignment (failure to transfer goodwill).
Improper licensing (failure to exercise quality control).
Failure to police unauthorized use of the mark or infringing marks by the media and others. Some companies use advertisements to educate the public that a certain brand is not a synonym for a product or service. Another strategy is to write letters to journalists and editors of professional publications and dictionaries and notify them that certain designations are trademarks and to advise them on the proper way to refer to a trademark.
Failure to renew or comply with registered user requirements for registrations.

50. Proper Use — Avoiding Genericide
Trademark
Proper Use — Avoiding Genericide
Once a trademark, not always a trademark
Important to
police third
parties’
unauthorized
and/or
improper
use
escalator
dry ice
cellophane
aspirin
linoleum
Proper use of a trademark is essential for its continued protection. Companies must properly use their trademarks to aid the consumers who depend upon the marks and to prevent the marks from becoming generic. If a trademark is used properly, it will remain the exclusive property of its owner. If, however, the consuming public begins to treat a trademark as the name of the product, it will no longer “identify” and “distinguish” the goods or services of one company. Frequently, it is the company’s own advertising and labeling that transform the trademark into a generic term – and this is avoidable if the necessary education and training have been provided within the company. This transformation of the mark into a generic term is referred to as “genericide.” Examples of former trademarks that started as strong, fanciful or arbitrary marks but that lost their trademark significance include aspirin, cellophane, celluloid, escalator, linoleum and dry ice. Note that in some countries, such as the United States, marks that become generic lose their registered trademark status. Caution should, therefore, be exercised, as some of these terms may still function as a trademark in other jurisdictions. (For example, ASPIRIN, although no longer a registered trademark in the United States, is still registered in Canada and in Brazil, where it even holds the status of a “well-known” mark.)
To prevent genericide, policing of your trademarks is essential – both outside your company and within it.
One of the ways to police your rights is to ensure that trademarks are used correctly.

51. Proper Use — Avoiding Genericide
Trademark
Proper Use — Avoiding Genericide
Use the mark followed by a noun.
Incorrect: A KLEENEX
Correct: A KLEENEX tissue
Do not pluralize a mark.
Incorrect: Two DELLS
Correct: Two DELL computers
Do not make a mark possessive.
Incorrect: POST-IT’s quality
Correct: POST-IT note pads’ quality
Do not use a mark as a verb.
Incorrect: Xerox a document
Correct: Photocopy a document on a XEROX copier
Use consistent, proper spelling.
Incorrect: H and M Correct: H&M

52. ? Thank you! Any Questions? Picture Archive Council of America (PACA)
Thank you to:
Picture Archive Council of America (PACA)
International Trademark Association (INTA)
for certain slides.
© 2014 Heather E. McNay