Introduction

A copyright is the set of property rights that arise on creation of "original works of authorship fixed in any tangible medium of expression." 17 USC section 102(a). Creation of a work brings rights of ownership including: sale, licensing, display, performance, modification, destruction, gift over, reproduction, distribution, and creation of derivative works. Since a copyright is intangible, make sure the granting of any of these rights is in writing.

Joint Authorship

Joint authorship is a work created by more than one person who intended a joint work, or a pre-concerted common design. The copyright duration for joint works is 50 years after death of the last surviving author. Joint authors have equal rights to exploit work, without consent of other owners, but they must account to all other authors and share profits from the work.

Fair Use

Fair use is the theory that advancement of knowledge requires reasonable tolerance of scholars using work of others. The fair use theory has been codified in 17 USC section 107. Fair use acts an exception to an author's exclusive copyright for the purposes of criticism, comment, news reporting, teaching, scholarship, and research. Courts use four statutory factors to determine if fair use has been appropriate or exploited.

Fair use doctrine is best described by example: If Corporation X buys a few copies of many scientific journals and periodicals. Its library copies the entire issue and articles at the scientist's request (many and often). Journal X owns the copyrights to some of the journals and sues Corporation X for copyright infringement. Corporation X asserts the fair use doctrine as its primary defense.

  1. Purpose and Character of Use

    The courts prefer use of work that do not substitute for original purpose, but are used in furtherance of a new objective. Corporation X's multiple copies served the same purpose as original. The journals were not used to further research, but instead were used as substitution for their own work, and were used to create profit. The articles were copied for the purpose of finding useful information and there was no superceding use. Corporation X would probably be liable for copyright infringement for the use of the journals.

  2. Nature of the Copyrighted Work

    Writings intended to be private have fewer uses that fall under the fair use doctrine (personal letters, extortion notes, unpublished works, etc.). Corporation X copied journals with scientific information that copyright law and fair use doctrine is expressly intended to disseminate to promote the progress of science. Corporation X would probably satisfy this factor with little problem.

  3. Amount of Substantiality of the Portion Used

    The more copied, the less likely fair use doctrine will apply. With articles and journals, the court will typically examine the percentage of the article copied from the journal. Copying a 10-page article from an 100-page journal is not considered 10% of the journal – it is considered 100% of the 10-page article. Corporation X copied 100% of the article and journal by legal standards.

  4. Effect on the Copyright's Potential Markets or Value

    Journal X needs only to show a meaningful likelihood that a future harm will occur. If the use of the journal or article is for profit, harm is presumed and must be rebutted by Corporation X. Journal X can argue with relative ease that if Corporation X refrained from copying the articles, it would have required purchasing of additional copies or subscriptions to Journal X.

Overall, Corporation X has a highly likelihood of being found liable for copyright infringement, and their defense of fair use will fail.

First Sale

Copyrights are distinct from the personal property rights in the tangible item to which the copyrighted work is fixed. Follow the chain of title of a literary work. An author writes a story, copyrights attach to each draft. The author submits the latest draft to a publisher, who purchases the right to reproduce and distribute copies of the work. The author has transferred two elements of the copyright: reproduction and distribution. The author still holds the copyright to the original drafts.

The publisher manufactures thousands of pages of the work, organizes them in the order necessary to communicate the author's story and brings them together in units of one story for each unit. The units are called books and the publisher owns the right to possess each book. To make money, the publisher sells the title to the book themselves to distributors. Through the ordinary course of business, you buy one of the books.

You have the right to sell you book; or give it away; or destroy it. You have title to the tangible item to which the copyrighted work is filed. You do not have the original copyrights! You cannot reproduce or distribute additional copies of the book. The publisher has reproduction and distribution rights; the author retains the remainder. Once the "first sale" occurs, the copyright owner may not control the distribution of the particular copy of the work. To maintain that control, the copyright owner must refrain from making a "sale" – to a publisher or second party. The author cannot accost you on the street and demand, under authority of copyright law, your copy of the book you purchased.

Trademark

A trademark is a symbol or name that acts to uniquely identify the source of a product, good or service. A Company name does not automatically qualify as a trademark, but can be protected in the same fashion as a trademark. Trademarks are valued as an asset and include the investment of the acquisition and implementation costs (development, advertising and marketing). The value of the asset is the unique identity of the company as a marketing tool and as indicia of quality of goods and in the creation of goodwill.

Creating a Trademark

The name must be uniquely identifiable to a particular company in the mind of the consumer and should serve as a link to the company's product or services. The term "Apple" cannot be held as an independent trademark. Bob McKenzie Apple Factory cannot preclude Delmonte or Granny Smith from marketing products using the likeness of an apple. However, IBM cannot use the term "Apple" to describe a computer. Apple in the field of computers is a trademark – distinctive and readily identifiable. There is an entire specialization of lawyers dedicated to specifying and determining the exact application of copyright laws.

There are a number of unilaterally barred categories for trademarks. In general, geographic names cannot be used as trademarks if the reference is primarily used to infer that the product originates from a certain geographic place. Certification marks are allowed to indicate the region from which a particular product's origin (Idaho Potatoes). Surnames may be used, so long as the mark does not seek to capitalize on another's reputation. Scandalous, immoral, flags, and national symbols are barred as trademarks.

Ensuring Trademark Protection

Federal Statutes for trademark protection have three distinct requirements:

  1. Demonstrable distinctiveness
  2. Prior knowledge – particularly evidence of a trademark search
  3. Commercial usage

Registration with the Patent and Trademark Office (PTO)

Federal Registration

Advantages

Registration serves as constructive notice to all users that the mark is in use therefore gives nation-wide rights to the copyright or trademark and acts as prima facie evidence of validity and incontestability after five years. Registration also opens access to Federal Court and Federal remedies.

Maintenance

Trademark registration is valid for ten years and renewable so long as the trademark is in use. However, an affidavit of continued use is required in the fifth year of the term stating that the mark continues to be in use.

Rights of Prior Users

It is possible for entities in different geographic areas to use the same (or materially similar) marks. A conflict arises when one entity seeks Federal Registration of its mark. In this case, registration does not sever the right of the unregistered user. An unregistered user may continue to use its register the same or similar mark. Concurrent registration is available in limited circumstances where both parties have acquired rights to the mark before any application to use the mark, so long as no confusion or deception arises.

Infringement Under the Lanham Act

Standard of Infringement

  1. Trademark infringement is subject to the "likelihood of confusion" test. No actual confusion need be shown.
  2. Registration on the Federal Register is not required to prosecute an infringement action.
  3. 15 USC section 1114 applies as to infringement for registered marks while 15 USC section 1125 applies to infringement for unregistered marks.

Factors for Assessing Likelihood of Confusion

  1. Similarity of the marks
  2. Similarity of the goods
  3. Similarity of the trade channels
  4. Sophistication of the consumer in relation to the goods
  5. Strength of the mark
  6. Incidents of actual trademark confusion

Trademarks Under New York Law

(see NY General Business Law sections 360-368)

Protection

  1. Trademarks that are not used in interstate commerce are not protected under the Latham Act, but nonetheless can be registered under New York Statutes.
  2. Section 368(b) allows the owner of a registered mark the right to prosecute an infringement mark that is likely to cause confusion.
  3. Remedy includes both injunctive relief and damages.

Unfair Competition

  1. Common law tort originating in "palming off" or misrepresenting your goods as having the qualities of a competitor's goods.
  2. Now covers a wider range of torts arising from unlawful business injury.

Dilution

  1. Section 368(d) allows protection of marks that are similar but where the goods do not compete. Its rationale holds that a dissimilar product linked to the wrong source will weaken the goodwill associated with the mark.
  2. Remedy is limited to injunctive relief.

Corporate names

  1. Protection is also available to corporate names by filing with the Secretary of State.
  2. This ensures that no one can register a corporate name that cannot be distinguished from the registered name.

Packet Published 1994, 2001

Researched and Composed in 1994

Revised by Stephen FOx 1995, John Menard 2001

Legal Assistance Director: Alex Melville

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