TECH TALK TUESDAY-COPYRIGHTS IN THE DIGITAL AGE

nancy Techie Tues 9-2-97

Let’s say you are a writer. There you are minding your own business when you see your life’s work on somebody else’s web site! Once posted in cyberspace who owns your words? What can you do to protect your rights in a land where copying is as easy as click and save?

Copyrights in Cyberspace
 

Visit NOLO PRESS on America Online — keyword: NOLO.


13 Fast Facts About Copyrights

by the Editors of Nolo Press
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You may copy this article so long as you include this copyright notice.
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1. WHAT IS A COPYRIGHT?

A copyright is a legal device that provides the creator of a work of art or literature, or a work that conveys information or ideas, the right to control how the work is used. The Copyright Act of 1976–the federal law providing for copyright protection–grants authors a bundle of intangible, exclusive rights over their work. These rights include the:

  • reproduction right-the right to make copies of a protected work.
  • distribution right–the right to initially sell or otherwise distribute copies to the public.
  • right to create adaptions (or “derivative works”)–the right to prepare new works based on the protected work.
  • performance and display rights–the right to perform a protected work, or display a work in public.

An author’s copyright rights may be exercised only by the author–or by a person or entity to whom the author has transferred all or part of her rights. If someone wrongfully uses the material covered by the copyright, the copyright owner can sue and obtain compensation for any losses suffered.

2. WHAT DOES COPYRIGHT PROTECT?

Copyright protects original works of expression, like plays, paintings, sheet music, recorded music performances, novels, software code, artwork, sculptures, photographs, choreography and architectural designs. In fact, copyright protects any creative work that is fixed in a tangible medium of expression.

A work is protected by copyright only if, and to the extent, it is original–that is independently created by the author. A work does not have to be novel, and its quality, ingenuity and aesthetic merit does not matter. So long as a work was independently created by its author, it is protected by copyright even if other similar works already exist.

3. WHEN DOES COPYRIGHT PROTECTION BEGIN?

A copyright automatically comes into existence the moment an author fixes her words in some tangible form–for instance, the moment a book or article is typed, handwritten or dictated. No further action need be taken.

4. MUST A WORK CONTAIN A COPYRIGHT NOTICE TO BE PROTECTED?

p>No. A copyright notice has not been necessary to obtain copyright protection for works published since March 1, 1989, it is still a very good idea to include one anyway. When a work contains a valid copyrigt notice, an infringer cannot claim in court that he didn’t know it was copyrighted. This makes it much easier to win a copyright infringement case. Moreover, the existence of a notice might discourage infringment.

The copyright notice should contain (1) the “c” in a circle ©; (2) the name of the author or owner of all the copyright rights in the published work; and (3) the date of publication.

5. SHOULD YOU REGISTER YOUR WORK WITH THE COPYRIGHT OFFICE?

If the work is valuable, it should be registered. Registration is not mandatory, but it gives you right to get attorneys’ fees and statutory damages up to $100,000 in an infringement suit. Registration is relatively easy: You fill out an application form and submit it along with two copies of the work to the Copyright Office.

6. DOES COPYRIGHT KEEP OTHERS FROM RIPPING OFF A NOVELIST’S INNOVATIVE PLOT OR IDEAS EXPRESSED IN HER NOVEL?

As a general rule, no. The key to understanding copyright is understanding that it applies only to a particular expression and not to the ideas or facts underlying the expression.

For instance, copyright may protect a particular song, novel or computer game about a romance in space, but it cannot protect the the underlying concept or idea of having a love affair among the stars.

Moreover, copyright does not protect facts–whether scientific, historical, biographical or news of the day. Thus, the facts that an author discovers in the course of research are in the public domain, free to all. This is so even if the author spends considerable time and effort discovering previously unknown facts. Copyright only protects fixed, original and minimally creative expression.

7. DOES COPYRIGHT PROTECT WHAT I SAY IN AN ON-LINE FORUM OR SEMINAR?

Technically it does, as long as your words are your own and no one elses. However, it doesn’t protect your bright ideas that you share with your on-line friends, only your words. Also, a legal doctrine known as fair use may allow others to use your words for educational or news purposes.

8. COULD YOU EXPLAIN A LITTLE MORE ABOUT THE FAIR USE RULE?

Society can often benefit from the unauthorized use of copyrighted materials when the purpose of the use serves the ends of scholarship, education or an informed public. For instance, scholars are free to quote from their research resources in order to comment on the material.

9. HOW CAN YOU TELL IN ADVANCE IF SOMETHING IS A FAIR USE?

Often it’s difficult. In deciding whether a use is a fair use, you need to consider: (1) is it a competitve use (for instance, would people buy your work instead of the material you’re using?) ; (2) how much are you taking; (3) the quality of the material taken. Criticism and comment, news reporting, research and scholarship, and non-profit educational uses are most likely to be judged fair uses. Used motivited primarily by a desire for a commercial gain are less likely to be fair.

As a general rule, if you are using a small portion of somebody else’s work in a non-competitive way and the purpose for your use is to benefit the public in some way, you’re on pretty safe ground. On the other hand, if you take large portions of someone else’s expression for your own purely commercial reasons, the rule usually won’t apply.

10. DO THE CREATORS OF A WORK ALWAYS OWN THE COPYRIGHT?

Not always. Copyrights are generally owned by the people who create the works of expression, with three important exceptions:

  • 1) the employer owns the copyright in a work created by an employee in the course of his or her employment;
  • 2) the entity commissioning a creative work owns the copyright in it when the creator works as an independent contractor and signs a written work for hire agreement; and
  • 3) a business or person other than the creator may own the copyright by purchasing it from the creator.

11. HOW LONG DOES A COPYRIGHT LAST?

Most copyrights last for the life of the author plus fifty years. However, if the work is a work for hire or is published anonymously or under a pseudonym, the copyright lasts between seventy five and one hundred years, depending on the date the work is published.

12. WHEN IS A WORK CONSIDERED TO BE IN THE PUBLIC DOMAIN?

Most works enter the public domain because their copyright has expired. However, some works published before 1989 became public domain material because they didn’t carry the proper copyright notice (a notice is no longer required to maintain a copyright). Also, many works published before 1964 have entered the public domain because the copyright owners did not renew their copyright under the law then in effect.

When a work is in the public domain, it can be used by anyone without the author’s permission. For instance, Shakespeare is in the public domain.

13. HOW ARE COPYRIGHTS ENFORCED? IS GOING TO COURT NECESSARY?

If a person infringes (violates) the exclusive rights of a copyright owner, the courts will step in and issue orders (restraining orders and injunctions) to prevent further violations, award money damages if appropriate, and in some circumstances award attorneys’ fees.


Creativity and Copyrights

by Stephen Fishman
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This article originally appeared in the Winter 1991 issue of Nolo News.
Attorney Stephen Fishman is the author of The Copyright Handbook from Nolo
Press. 
You may copy this article so long as you include this copyright notice.
==============================

Most people have seen the word “copyright” hundreds of times. It usually appears at the end of sports telecasts and movies and at the front of books and magazines. The word conveys this generally understood message: Don’t use this material without our permission.

No message could be simpler, it seems, but there are often serious questions about what exactly it is that can’t be used.

IDEAS VS. EXPRESSION

A copyright protects an author’s tangible expression–the author’s particular choice of words and the selection and arrangement of the material. It does not protect the ideas the author expressed. No one can claim an idea and prevent others from writing about it.

This basic rule operates a little differently for works of fiction than for non-fiction, although the goal is the same: don’t let authors impede the progress of knowledge by monopolizing ideas that should belong to everybody.

COPYRIGHT RIGHTS

Copyright is a federal law that gives authors control over their creations. The author has the exclusive right to determine who, if anyone, can make copies of a poem, book, article, essay, letter, marketing brochure or other work. Authors don’t have to do a thing to get this right–it’s automatic. The instant your pen, typewriter or printer produces something original–not copied from someone else–it is protected under the copyright laws.

An author also has the exclusive right to:

  • sell or distribute the work
  • display the work
  • perform the work and
  • prepare adaptations of the work (derivative works)

The copyright owner can sell all or part of these rights to others. For instance, a novel’s author may sell the exclusive right to make copies to a publisher and the exclusive right to make adaptations to a movie company.

FICTION

If you write a work of fiction–a play, novel, poem or short story, for example–your words can’t be copied without violating your copyright.

But the underlying idea–for instance, a police story or an unrequited romance–is not protected by copyright. Similarly, the central idea or theme of a novel or short story can be used by others without the copyright owner’s permission.

A fictional work’s setting–for instance, romance on a French island in 1920–doesn’t come within the copyright statute. Nor does the work’s plot–the sequence of events by which the author expresses an idea–unless it is truly original. Very few plots are that original. For instance, if you write a novel about a spunky heroine who triumphs over adversity in the Civil War, you have the right to control your words but not the story line. Anyone else is free to write a novel with a similar character and plot. Many authors rebel at the idea that others can use their plot lines, but the alternative would let authors tie up basic plots for decades, to the detriment of the arts.

Other aspects of fictional works that aren’t subject to copyright protection are:

  • events, scenes, situations or details that necessarily follow from the theme or setting;
  • stock characters–standard types such as the silent, strong cowboy or hard-drinking private detective;
  • facts from the real world used in the work;
  • the writing style and individual words and phrases–for example, the terse style of Ernest Hemingway or the new words and phrases in George Orwell’s 1984 such as “newspeak” and “I love big brother”; and
  • literary devices–for instance, flashbacks and alliteration.

Despite this long list of unprotected aspects of a fictional work, an author might be able to win in court if enough of them together showed up in a later work by someone else.

WORKS IN THE PUBLIC DOMAIN

Material that is not protected by copyright is in the public domain–free for anyone to use without permission. The public domain includes:

  • Material no longer protected by copyright, including anything published more than 75 years ago.
  • Material in which no copyright ever existed, such as materials printed by the U.S. government.
  • Ideas, including procedures, processes, systems, methods of operation, concepts, principles and discoveries.Facts–scientific, historical, biographical or news of the day.
  • *Non-fiction

The rules are a little different for non-fiction works, because it is harder to show that an author’s expression in a non-fiction book was copied. Non-fiction works, by definition, deal with facts which themselves are not protected.

Copyright does not protect facts that an author discovers in the course of research, even if an author spends considerable effort conducting the research. Nor does it protect the author’s interpretation of facts–theories or hypotheses about what the facts show, or the book’s physical and visual attributes, including choice of typeface style and size, spacing and juxtaposition of text and illustrations.

But as long as the facts are described in a unique way, the expression will be protected even if the facts aren’t. Scientists Stephen J. Gould and Lewis Thomas, for example, have written books about science whose language transcends the facts they are based on. The distinctive prose in their books receives far more protection than that of a run-of-the-mill scientific treatise.

The more that writing transcends the mundane and purely functional, the more copyright protection it will receive.

For instance, consider an unadorned factual account of Paul Revere’s famous midnight ride during the Revolutionary War that contains the following:

“On April 18, 1775, the Boston minutemen learned that the British intended to march on Concord with a detachment of 700 men. Paul Revere arranged for a signal to be flashed from the steeple of the Old North Church in Boston. Two lanterns would mean that the British were coming by water, and one, by land.”

Copyright would not be of much use to the author of this passage. If anyone else wrote a brief factual account of Paul Revere’s ride, it would necessarily have to contain sentences looking very much like those in this paragraph. If the author sued, alleging a copyright violation, the law’s policy against granting an author a monopoly over facts would mean that a court would likely rule that there was no copyright violation.

In contrast, copyright would protect a highly creative work containing essentially the same facts about Paul Revere’s ride.

Consider this:

"Listen, my children, and you shall hear
Of the midnight ride of Paul Revere,
On the eighteenth of April, in Seventy-five.
Hardly a man is now alive
Who remembers that famous day and year.

He said to his friend, "if the British march
By land or sea from the town to-night,
Hold a lantern aloft in the belfry arch
Of the North Church tower as a signal light,
One, if by land, and two, if by sea."

These stanzas were written by Henry Wadsworth Longfellow over 100 years ago, and the copyright has expired, but let’s pretend they were written just the other day.

This verse conveys almost exactly the same facts as the paragraph above, but would be protected because the author’s words are embellished and highly distinctive. The sequence of words is not dictated solely by the facts. It is the unique word sequence itself, not the facts, that is the work’s main attraction. No one needs to copy this particular word sequence in order to convey the same facts or to write another work of fancy about Paul Revere’s ride. A person who copied even the first two lines would probably be found to have infringed on the copyright in the poem.

ENFORCING COPYRIGHT RIGHTS

The fact that an author has the legal right to control a work isn’t the end of the story, of course, as anyone who has used a VCR or a photocopy machine readily understands. Enforcing this right can be difficult.

If someone violates (infringes) an author’s rights under the copyright law, the author may sue in federal court, demanding compensation for economic loss and a stop to further harm. Unless the author has already taken certain steps, however, the lawsuit will likely cost far more than the author will win.

To make a lawsuit economically feasible, the author must have:

  • placed a copyright notice on the work (the little c and a name and date), and
  • registered the work with the U.S. Copyright Office.

Once this is done, the law gives the author a much better chance to win a substantial amount of money from the infringer.

TYPES OF WORKS PROTECTED BY COPYRIGHT

This article discusses written works, but copyright also protects such creative expressions as:

  • music
  • art
  • photography
  • sculpture
  • motion pictures
  • videos
  • sound recordings
  • computer software
  • databases
  • pantomimes
  • choreographic works
  • architectural designs
  • toy designs

Copyrights in Cyberspace

by Steve Elias
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Copyright (c) 1994 Nolo Press This article originally appeared in the
Summer 1994 issue of the Nolo News. The author, Steve Elias, is the editor
of Nolo's The Copyright Handbook, by Steve Fishman (see description below).

You may copy this article so long as you include this copyright notice.
==============================

While browsing on an electronic bulletin board, you come across an interesting article on dog training. Thinking it might be of interest to the members of your dog owners’ club, you download it, print it out and reprint it in the next issue of your club’s newsletter.

Congratulations — you’ve probably just violated federal law.

Don’t worry, you won’t be hauled off to the federal pen. The law you ran afoul of is copyright law, which gives authors, composers and others who create works of expression certain rights over their creations.

You would probably think about copyright rules if you wanted to republish a chapter of a book, a play or a song you liked. But they’re easy to overlook when you’re dealing with electronic media. These bits of information fly around so rapidly and can be reproduced so easily that it’s hard to remember that someone out there probably owns the right to determine when and how copies are made and used.

All works of expression have at least one thing in common: they are protected by copyright as soon as they are created and fixed in a tangible medium. For the most part, once an expression is entered into a computer in a form that can be read on screen or routed to a printer, it is considered fixed in a tangible medium, even if it is never printed out or saved to a disk. A copyright notice — that little (C) followed by the year and the author’s name — is not required, but is recommended to remind people that the author claims a copyright.

The author of the expression owns the copyright, unless there has been a formal written transfer of that ownership or the expression is created as a work for hire or paid for by an employer. So a person who enters an expression into a computer for other people to see usually owns the copyright on that expression.

What does owning a copyright on an expression mean? Simply, that no one else can copy, distribute, display or adapt that expression without the copyright owner’s consent. This consent may be given for free, for a fee or on the condition that an appropriate attribution be given. It is always a good idea, if you send material into cyberspace, to explicitly state the conditions for its use and reproduction.

As a starting point, therefore, you can assume that you control the right to use any expressions that you author and put online. The important corollary is that any expressions you find online are probably controlled by someone else. and shouldn’t be used without permission.

HOW COPYRIGHT WORKS

Copyright protects expression, not ideas or facts. For instance, information in a telephone book or a weather summary can be freely used. On the other hand, the expression used in an essay on telephones or a creative explanation of weather systems is protected by copyright even though the underlying data and ideas aren’t.

Copyright law doesn’t mean that you can never quote something interesting that you find online. The “fair use” rule allows you to use a small portion of an expression to comment on it or for an educational purpose. But if you want to use the expression for commercial gain, the fair use exception probably won’t apply unless the portion you use is extremely small in relation to the entire expression.

It’s extremely difficult to apply the fair use rule to new forms of expression such as the discussions that take place in “cyberspace” — for example, on Internet “newsgroups” or the conferences on online services such as America Online and CompuServe. A hundred people may each contribute a few lines to a discussion. If you want to use a big chunk of the conversation, must you get every contributor’s permission? Theoretically, yes, because each contributor owns copyright in his or her words. However, since none of the contributions has any significant commercial value by itself, it’s hard to see where the copyright owners would be harmed if the entire conversation were used without their individual permissions. Nevertheless, people whose words are used without their permission may be angry about it. It is always better to ask.

One last thing. Copyright is not the only law to be concerned about when launching words onto the information highway. You should also avoid invading a person’s privacy or falsely accusing someone of committing an immoral or illegal act


Fast Facts: Trademark and Servicemark

by Attorney Stephen Elias
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You may copy this article so long as you include this copyright notice.
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1. WHAT ARE TRADEMARKS AND SERVICE MARKS?

A trademark is a distinctive word, phrase, logo or other graphic symbol that’s used to distinguish a manufacturer’s or merchant’s products from anyone else’s. Some examples: Ford cars and trucks, Kellogg’s cornflakes, IBM computers, Microsoft software. In the trademark context, “distinctive” means unique enough to reasonably serve as an identifier of a product in the marketplace.

For all practical purposes, a service mark is the same as a trademark–except that trademarks promote products while service marks promote services. Some familiar service marks: McDonald’s (fast food service), Kinko’s (photocopying service), ACLU (legal service), Blockbusters (video rental service), CBS’s stylized eye in a circle (television network service), the Olympic Games’ multicolored interlocking circles (international sporting event).

A trademark or service mark can be more than just a brand name or logo. It can also be a shape, letters, numbers, a sound, a smell, a color or any other non-functional but distinctive aspect of a product or service that tends to promote and distinguish it in the marketplace. Titles, character names or other distinctive features of movies, television and radio programs can also serve as trademarks or service marks when used to promote a service or product. Finally, the distinctive packaging of a product is protected under the federal trademark statute (the Lanham Act) as trade dress, although trade dress can’t be placed on the federal trademark register.

2. HOW DO TRADEMARKS DIFFER FROM COPYRIGHTS?

The copyright laws protect original works of expression, but specifically do not protect names, titles or short phrases. This is where trademark protection comes in. Under state and federal laws, distinctive words, phrases, logos, symbols and slogans can qualify as trademarks or service marks if they are used to identify and distinguish a product or service in the marketplace.

The trademark laws are often used in conjunction with the copyright laws to protect advertising copy. The trademark laws protect the product or service name and any slogans used in the advertising. The copyright laws protect any additional literal expression that the ad contains.

3. CAN CORPORATE AND BUSINESS NAMES BE PROTECTED UNDER TRADEMARK LAWS?

Generally not. Names for businesses are commonly called “trade names.” A business’s trade name is the name it uses on its stock certificates, bank accounts, invoices and letterhead. When used to identify a business in this way–as an entity for non-marketing purposes–the business name is subject to some protection under state and local corporate and ficticious business name registration laws, but it is not considered a trademark (thus is not entitled to protection as such).

If, however, a business name is also used to identify a product or service produced by the business, it may qualify for trademark protection if it is distinctive enough. For instance, Apple Computer Corporation uses the trade name Apple as a trademark on its line of computer products, and Nolo Press, Inc. uses Nolo as a service mark for its online people’s law services.

Although trade names by themselves are considered trademarks, they may be protected under federal and state unfair competition laws if a competing use is likely to lead to customer confusion.

4. WHAT TYPES OF TRADEMARKS RECEIVE PROTECTION?

As a general rule, trademark law confers the most legal protection to names, logos and other marketing devices that are distinctive–that is, memorable because they are creative or out of the ordinary (inherently distinctive), or because over time they have become well known to the public.

Trademarks said to be inherently distinctive typically consist of:

  • unique logos or symbols
  • made-up words (“coined marks”), such as Exxon or Kodak
  • words that invoke imaginative images in the context of their usage (“fanciful marks”), such as Double Rainbow ice cream
  • words that are surprising or unexpected in the context of their usage (“arbitrary marks”), such as Time Magazine or Diesel for a bookstore, and
  • words that cleverly connote qualities about the product or service (“suggestive or evocative marks”), such as Slenderella diet food products.

By contrast, trademarks consisting of common or ordinary words are not considered to be inherently distinctive and receive less protection under federal or state laws. Typical examples of common or ordinary words are:

  • people’s names (Pete’s Muffins, Smith Graphics)
  • geographic terms (Northern Dairy, Central Insect Control), and
  • descriptive terms–that is, words that attempt to literally describe the product or some characteristic of the product (Rapid Computers, Clarity Video Monitors, Ice Cold Ice Cream)

As mentioned, it’s possible for ordinary marks to become distinctive because they have developed great public recognition through long use and exposure in the marketplace. A mark that has become protectible through exposure or long use is said to have acquired a “secondary meaning.” Examples of otherwise common marks that have acquired a secondary meaning and are now considered to be distinctive include: Sears (department stores), Ben and Jerry’s (ice cream) and Park’n Fly (airport parking services.)

5. AREN’T THERE MARKS THAT AREN’T PROTECTED BY THE TRADEMARK LAWS?

Typically referred to as “generic marks,” these marks are the equivalent of common words used to describe the type of product rather than a brand of the product. For instance, assume that a new cellular telephone manufacturer calls its product “The Cellular.” Because the term “cellular” is the descriptive name for the product itself, it cannot legally be considered a trademark or service mark. However, if the term “cellular” were used on a facial creme, it would be considered suggestive, and therefore distinctive, in that context.

Some marks that start out distinctive become generic over time, as the public comes to associate the mark with the product itself. When this happens, the mark loses protection as a distinctive trademark. Aspirin, escalator, and cellophane are all examples of distinctive marks that lost protection by becoming generic. The Xerox mark was in grave danger of losing protection because of the common use of the term as a noun (a xerox) and a verb (to xerox something). To prevent this from happening, Xerox launched an expensive campaign urging the public to use “Xerox” as a proper noun (Xerox brand photocopiers).

6. HOW IS TRADEMARK OWNERSHIP DETERMINED?

As a general rule, a trademark is owned by the business that is first to use it in a commercial context–that is, the first to attach the mark to a product or use the mark when marketing a product or service. Once a trademark is owned by virtue of this first use, the owner may be able to prevent others from using that (or a similar) trademark for their goods and services. Whether this is so depends on such factors as:

  • whether the trademark is being used on competing goods or services (goods or services compete if the sale of one is likely to preclude the sale of the other)
  • whether consumers would likely be confused by the dual use of the trademark, and
  • whether the trademark is being used in the same part of the country or is being distributed through the same channels.

In addition, under a number of state laws known as anti-dilution statutes, a trademark owner may prevent a mark from being used if the mark is well known and the later use would dilute the mark’s strength–impair its reputation for quality or render it common through overuse in different contexts (even if it is unlikely that any customers would be confused by the second use).

Acquiring ownership of a mark by being the first to use it is not the only way to own a trademark. It is also possible to acquire ownership by filing an “intent-to-use” (ITU) trademark registration application with the U.S. Patent and Trademark Office. The filing date of this application will be considered the date of first use of the mark if the applicant later actually puts the mark into use within the required time limits (between six months and three years, depending on whether extensions are sought and paid for).

7. HOW DO TRADEMARKS QUALIFY FOR FEDERAL REGISTRATION?

Registering a trademark with the the U.S. Patent and Trademark Office(PTO) makes it easier for the owner to protect the trademark against would-be copiers, and puts the rest of the country on notice that the trademark is already taken.

To register a trademark with the PTO, the mark’s owner first must put it into use “in commerce that Congress may regulate.” This means the mark must be used on a product or service that crosses state, national or territorial lines or that affects commerce crossing such lines–such as would be the case with a catalog business or a restaurant or motel that caters to interstate or international customers. Even if the owner files an intent-to-use (ITU) trademark application, the mark will not actually be registered until it is used in commerce (as defined above).

Once the PTO receives a trademark registration application, it determines the answers to these questions:

  • Is the trademark the same as or similar to an existing mark used on similar or related goods or services?
  • Is the trademark on the list of prohibited or reserved names?
  • Is the trademark generic–that is, does the mark describe the product itself rather than its source?

If the PTO answers all of these questions in the negative, it will publish the trademark in the Official Gazette (a publication of the U.S. Patent and Trademark Office) as being a candidate for registration. Existing trademark owners may object to the registration by filing an opposition. If this occurs, the PTO will schedule a hearing to resolve the dispute. Even if existing owners don’t challenge the registration of the trademark at this stage, they may later attack the registration in court if they believe the registered mark infringes a mark they already own.

8. WHAT DOES TRADEMARK REGISTRATION ACCOMPLISH?

If there is no opposition, and use in commerce has been established, the PTO will place the mark on the list of trademarks known as the Principal Register if the mark is considered distinctive (either inherently or because it has acquired secondary meaning). Probably the most important benefit of placing a trademark on the Principal Register is that anybody who later initiates use of the same or a confusingly similar trademark will be presumed by the courts to be a “wilfull infringer” and therefore liable for large money damages. However, it is still possible to obtain basic protection from the federal courts for a trademark without registering it. (See Question 9: How Are Trademark Owners Protected?)

If a trademark consists of common or ordinary terms, it may be placed on a different list of trademarks known as the Supplemental Register. Placement of a trademark on the Supplemental Register produces significantly fewer benefits than those offered by the Principal Register, but still provides notice of ownership. Also, if the trademark remains on the Supplemental Register for five years–that is, the registration isn’t cancelled for some reason–and also remains in use during that time, it may then be placed on the Principal Register under the secondary meaning rule (secondary meaning will be presumed).

9. HOW ARE TRADEMARK OWNERS PROTECTED?

Whether or not a trademark is federally registered, its owner may go to court to prevent someone else from using it or a confusingly similar mark. To win, the owner must prove that the imitation will likely confuse consumers. If the owner can prove that it suffered or that the competitor gained economically as a result of the improper use of the trademark, the competitor may have to pay the owner damages based on the profit or loss.

If the court finds the competitor intentionally copied the owner’s trademark, the infringer may have to pay other damages, such as punitive damages, fines or attorney fees. On the other hand, if the trademark’s owner has not been damaged, a court has discretion to allow the competitor to also use the trademark under very limited circumstances designed to avoid the possibility of consumer confusion.

10. DO I HAVE A RIGHT TO USE MY NAME ON MY BUSINESS EVEN IF SOMEONE ELSE IS ALREADY USING IT ON A SIMILAR BUSINESS?

Yes and no. A mark that is primarily a surname (last name) does not qualify for protection under the trademark provisions of the Lanham Act unless it becomes well known as a mark through advertising or long use–that is, until it acquires a secondary meaning. A trademark is “primarily a surname” if the public would recognize it first as a surname, or if it consists of a surname and other material that is not registrable.

If a surname acquires a secondary meaning, it is off-limits for all uses that might cause customer confusion, whether or not the name is registered. Sears, McDonald’s, Hyatt, Champion, Howard Johnsons and Calvin Klein are just a few of the hundreds of surnames that have become effective marks over time.

Under the laws of many states, a person or business who tries to capitalize on his or her own name to take advantage of an identical famous name being used as a trademark may be forced, under the state’s anti-dilution laws, to stop using the name if the trademark owner files a lawsuit. (See Question 6: How is Trademark Ownership Determined?)

In order to register a mark that consists primarily of the surname of a living person (assuming the mark has acquired secondary meaning), the mark owner must have the namesake’s written permission to register the mark.

11. HOW CAN I FIND OUT WHETHER ANYONE ELSE IS ALREADY USING A TRADEMARK I WANT TO USE?

A “trademark search” is an investigation to discover potential conflicts between a proposed mark and an existing one. Generally done before or at the beginning of a new mark’s use, a trademark search reduces the possibility of inadvertently infringing a mark belonging to someone else. This is extremely important, because if the chosen mark is already owned or registered by someone else, the new mark may have to be replaced. Obviously, no one wants to spend money on marketing and advertising a mark, only to discover it infringes another mark and must be changed. In addition, if the earlier mark was federally registered prior to an infringing use, the user of the infringing mark may have to pay the mark’s rightful owner any profits earned from the infringing use.

Usually an attorney or professional search agency conducts a trademark search by checking both federal and state trademark registers for identical or similar marks. Then the searcher checks the Yellow Pages in major cities (nationwide, for a national mark, or regionally, for a mark in regional use), as well as trade journals and other relevant publications. The search report notes all uses of identical or similar marks and the goods or services on which they are used.

Federal lists of registered trademarks are available for searching in book and database forms. For example, the Trademark Register of the U.S. lists all registered trademarks by their product or service classifications. The public can use it at any of the 68 Patent Depository Libraries throughout the country, which are mostly major public or university libraries. The U.S. Patent and Trademark Office also puts out on CD-ROM a federal trademark database called Cassis, available to the public at Patent Depository Libraries. In addition, several private subscription-based companies, such as Dialog, CompuServe, and CompuMark, offer online databases that list federal, state and some international trademarks (including Canada, the U.K. and Japan).

12. WHAT IS THE SIGNIFICANCE OF TRADEMARK SYMBOLS– “TM” OR “R” IN A CIRCLE?

Many people like to put a “TM” (or “SM” for service mark) next to their mark to let the world know that they are claiming ownership of it. There is no legal necessity for providing this type of notice, as the use of the mark itself is the act that confers ownership.

The “R” in a circle is a different matter entirely. This notice may not be put on a mark unless it has been registered with the U.S. Patent and Trademark Office. The failure to put the notice on a mark that has been so registered can result in a signficiant handicap if it later becomes necessary to file a lawsuit against an infringer of the mark.


Naming Small Businesses

by Stephen Elias
==============================
This article originally appeared in the Summer 1992 issue of Nolo News
and is adapted from Trademark: How to Name Your Business, Products and
Services, by Kate McGrath and Steve Elias (Nolo Press). 

You may copy this article so long as you include this copyright notice.
============================== 

In 1994, Nanette incorporates in California as Maverick Fashions, Inc., intending to open a small clothing boutique under that name. The California Secretary of State approves the name because it is not deceptively similar to the name of any other corporation registered in California. Six months later, the business opens, with great success. The Maverick name appears on the business sign and in advertisements, brochures and the Yellow Pages.

A month later, Nanette receives a stiff letter from Madonna’s attorneys, claiming that Maverick is a federally registered trademark used as an umbrella name for all of Madonna’s enterprises, including a brand of lacy lingerie, and that Nanette must immediately “cease and desist” from using the name. Nanette is confused. She thought her corporate registration meant she could use the name to identify her business. Not. Assuming the letter speaks the truth, Nanette will have to find another name quick.

Nanette’s mistake is typical. Most small business owners assume their business name is theirs to use in any way they wish. The confusion comes from the fact that a business name has two entirely different qualities, depending on how it’s used. It is a tradename when used as the formal name of the business (on checks, invoices and letterhead), and a trademark or service mark when used by the business to market its products or services.

In Nanette’s situation, her name was cleared for use in California as her tradename, but not as a service mark to be used in connection with her retail clothing service. When a business name is used as a trademark or service mark, a whole new set of principles, collectively known as trademark law, apply. Small business owners need to know these rules–both to avoid legal trouble and to take advantage of the marketing edge a distinctive trademark can give a small business.

TRADEMARKS AND SERVICE MARKS

A trademark is any word, phrase, design, slogan or symbol (including nonfunctional unique packaging) that serves to identify a specific product brand. Examples: Xerox photocopiers, Kodak film and cameras, Exxon gasoline and automotive products, Nike sport shoes, Apple Computer’s rainbow apple with a bit missing; the red Coca Cola logo.

A service mark is any word, phrase, design or symbol that identifies a specific brand of service. Examples: McDonald’s fast food service, Kinko’s photocopying service, ACLU legal service, Blockbusters video rental service, the UPS logo (postage delivery service) the U.S. Postal Service’s eagle in profile (postage delivery service); CBS’s stylized eye in a circle (television network service), the Olympic Games’ multicolored interlocking circles (international sporting event).

WHO OWNS A TRADEMARK OR SERVICE MARK?

As a general rule, the first business to use a trademark or service mark owns it–and can stop others from using it. There are two ways to qualify as a first user:

  • Be the first to actually use the trademark or service mark in the marketplace.
  • Apply to register the trademark or service mark on the federal principal trademark register (discussed below)

Actual use usually takes priority over registration in case of a conflict between marks. For instance, had Nanette used the Maverick service mark before Madonna did, Nanette would win the dispute even if Madonna federally registered the mark first.

HOW STRONG IS YOUR TRADEMARK OR SERVICE MARK?

The degree to which the law lets you stop others from using a trademark or service mark depends on how distinctive (strong) your mark is. Marks are distinctive for two reasons:

  • They are inherently memorable because they are contextually arbitrary, unusual, unique, evocative, surprising or otherwise effective in setting the product or service off from others
  • They have become memorable through use–that is, customers have come to associate the name with the business.

The ability of a mark to stand out in a customer’s mind–its distinctiveness in the trademark context–comes from a number of different characteristics. Distinctive marks include:

  • Coined (made-up) terms such as Exxon, Kodak or Rackafrax.
  • Fanciful or surprising terms–words that are common in one context become distinctive in another. This usually occurs when the term is imaginative, unexpected or arbitrary as it’s used, such as Apple computers, Cherokee clothes, Time magazine and Double Rainbow ice cream.
  • Evocative or suggestive terms, such as Greyhound bus lines, Suave shampoo and Jaguar cars.

Trademark law doesn’t allow a business to monopolize commonly-used words or words that many similar businesses might use to accurately identify the services or products they provide. For example, most adjectives (soft, fluffy, tasty, accurate, fast, easy, tough, reliable) are available for anyone to use. Common words don’t do a good job of distinguishing one product or service from others anyway.

STOPPING OTHERS FROM USING A TRADEMARK OR SERVICE MARK

As a general rule, the owner of a legally strong trademark or service mark can keep others from using it or something so similar that its use would create the likelihood of customer confusion. In Nanette’s situation, Madonna’s lawyers would have argued, successfully, that Maverick is a strong mark because it is suggestive of Madonna’s qualities without describing them outright and that Nanette’s use of the mark in connection with clothing would be likely to confuse customers into thinking that Madonna had something to do with the store.

But what if Nanette had used the name on a line of fruit preserves rather than a clothing business? Madonna’s lawyers might have a more difficult time, because the likelihood that customers would think of Madonna’s Maverick when buying Maverick strawberry preserves would be low.

But if a mark is very strong, its owner can stop other businesses from using it even on very different kinds of good or services. For example, Madonna adopted the Maverick mark in 1992. If the mark is so well known by 1994 that a substantial portion of the public automatically thinks of Madonna whenever they see the word, Madonna might be able to stop use of the word even on non-competing goods, such as Nanette’s preserves. The moral: Don’t mess with really famous marks.

LOOK BEFORE YOU NAME

Before you use a name to market goods or services, find out whether or not any confusingly similar marks already exist. Look at:

  • The federal trademark register or state trademark registers, which list registered marks.
  • Resources that list names being used for the particular type of product or service offered by your business–such as the Yellow Pages, Gale’s List of Tradenames, or trade magazines. (Remember, marks don’t need to be registered to be legally strong.)

You can make this inquiry, called a trademark search, by computer or in a large business library. You can also pay a trademark search firm to do it for you.

REGISTERING A TRADEMARK

If your mark is legally strong and no one else is using the same mark or a confusingly similar one, you may be entitled to register the mark with the U.S. Patent and Trademark Office. To register, you must be using the mark across state, international or territorial lines or in a way that affects commerce across those lines. A mail order business, a bed and breakfast that advertises out of state and a concession at a location heavily visited by tourists would all qualify for registration.

Owners of federally registered trademarks have many important advantages, including exclusive nationwide ownership of the mark and official notice to all would-be later users of the mark that the mark is already taken.