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It’s funny, but not all trademarks are created equal.
There are strong marks and there are weak marks and all kinds of marks in between.
When you first use your trademark – for your blog for example – the strongest mark will be something that doesn’t have anything to do with blogging or publishing or the subject of your blog. That is because the audience, your customers, will not associate it with your publishing services.
So, if I am picking a trademark for my blog on law and social media, I might call it FLEETWOOD. That would be a strong mark because it is arbitrary for the subject and no one in the public needs it for their own use.
Think of gasoline for example. If you called your gas, say EXXON, that’s a pretty strong mark because it doesn’t mean anything and the public doesn’t need it. If I sold my gas under the mark PRETTY GOOD GASOLINE, well – you get the picture.
Now you can develop trademark rights to a “descriptive mark,” but it will take time for the public, through use and advertising to come to recognize your descriptive term as a trademark.
As a blogger you might WANT to use a descriptive term as the name of your blog because, in fact, you want your readers to know exactly what it is. For example, for my ning site on social media and the law, I called it LAW AND SOCIAL NETWORKING. Not a strong mark, in fact, a very weak one. But it was more important for me to let people know what I was doing than to claim the title as a trademark.
Later, as I build up rights to the term, I might be able to stop someone from using the exact title as a blog title for their blog – but it will probably take time.
Remember I said that the definition of trademark is any word or symbol that comes to represent the goods or services of a particular source. When you see the Apple logo on any number of products, you know that that product comes from a single company and you know, in general terms, the quality of the goods that have come from this company in the past. Same with Coke, Taco-Bell or Ford. It is this power of association and the propensity for consumers to go back to products they like from the same source that makes up the psychological power of trademarks.
The law around the world protects the owner of a trademark from having his trademark used by another and it also protects the consume from getting a product he didn’t bargain for (You probably wouldn’t be too happy with an Apple computer from Nils for example).
In the United States, rights in trademarks are established by use. Once you start to use a trademark in connection with your goods or services in the United States you are developing rights to the mark. This is true for a blog as well. If you have a good trademark for your blog (and I will talk about the strength of a mark later), as you write your blog and more and more people come to associate it with a single source, you will be building trademark rights in the term.
If your use of the trademark goes across a state line, you are using it in Interstate Commerce and you will be able to apply to register the mark in the United States Patent and Trademark Office in Washington, DC. The registration does not establish rights, but it will give you certain benefits.
Don’t forget, however, that I mentioned last time that trademark rights in countries outside the US are normally created through the registration process and not by mere use.
Next time we move beyond the definition of trademark and creating trademark rights to how to pick and clear a strong trademark.
We have covered a fair amount of ground here on Legal Ramifications over the past few months. We have talked about defamation (libel and slander) and discussed a general overview of intellectual property. We have gone into some great depth about the law of copyright, probably the IP basket that concerns most bloggers.
Today we will start our discussion of the basics of trademark law. Unlike patent and copyright law, trademark law did not orginally grow up as a federal right under the US consititution, but as a common law right of property protected by the courts of the United States. Today, there is a lot of federal and state law covering trademarks in the US, but the fact is that someone can still develop trademark rights without having to register the trademark with the United States Patent and Trademark Office.
The situation is much different outside the United States and in most countries of the world the owner of a trademark will have to register the claim to trademark with the national patent and trademark office. This points out the fundamental fact that trademarks are territorial in nature, that is, the rights to a trademark at common law extend only to the owners trading area. In nations that have national registration systems, the registation will extend to the entire country. Just because you have trademark rights in one country though, does not mean you have any rights in another country.
A trademark is defined as any word, symbol or logo that the public has come to associate with a seller and his or her products or services. The public is included in this definition because, unlike copyright law which just concerns itself with the rights of a private party, the law of trademarks developed in large part to protect the consumer from the confusion that develops when another party starts using a similar trademark to one that the public has associated with another party. Think of what would happen if another company began selling Coke in a red can and you get the picture. Although Coca-Cola would be damaged – millions of people might buy something that they were not bargaining for.
Next time on Legal Ramifications we will discuss how trademark rights are developed and how to protect you trademarks.
This will be the last post on the fundamental basics of Copyright law and will cover what happens when a plaintiff successfully sues a defendant for copyright infringement. The short answer is that the plaintiff will be entitled to damages, real and those imposed by the law and injunctions, orders telling the defendant to stop what they are doing.
Before we get there. let’s review Copyright in 30 seconds. Copyright is a creature of the state. Every commercial country in the world grants authors and artists the right to prevent others from making copies of their works. Although Copyright law is different in every country, much of it has been harmonized due to the fact that, again, most countries have conformed their laws to the requirements of international treaties. The copyright to the work exists as soon as the work is created, “fixed in a tangile form” and the author does not have to do anything more – except in the USA where the work must be registered with the US Copyright Office in order to bring a law suit in a federal court. You may use parts of a work protected by copyright under the “fair use” defense, particularly if you are using the portion for comment and you aren’t damaging the commericial viability of the work. If, however, you copy the work and can’t but up a good defense, such the fair use defense (there are a couple of others) then you may be liable to the Copyright owner in a law suit.
A couple of things. First, if you are accused of copyright infringement, you should consult a lawyer as soon as possible. This post is not legal advice and lawsuits always turn on the specific facts of the case. Second, most cases don’t go to trial, but can be settled quickly by the parties through some form of negotiation.
OK, so what happens if a Copyright is infringed? The owner of the copyright try to get the defendant to stop the infringing use and maybe to pay some money. Then it is up to the defendant to agree or not. If an arrangement can’t be worked out, the plaintiff will ask the court to:
1. issue orders (injunctions) to prevent further violations;
2. award money damages if appropriate to compensate the plaintiff for the losses it suffered; and
3. in some cases, award attorney fees.
In most cases, if we are talking about someone copying a substantial part of your blog, you should be able to get them to stop and remove the offending use simply by sending an email to them and explaining the situation. One of the good things about the Internet and blogging is that material can be removed quickly. The ugly part of it is that is easy to steal stuff and pass it off as your own.
In our next post Legal Ramifications will look at the world of Trademarks.
Copyright infringement is a two way street of course. Someone may copy your work – or you may be charged with copying someone else’s work. Either way, the plaintiff, that is the copyright owner is going to have to jump over a few hedges to make the case.
First, in the US only, the plaintiff will have to register the work with the United States Copyright Office in washington, DC see http://www.copyright.gov. Nobody registers blog posts unless you want to pick a fight with someone, but if you create a significant work, you might want to register it.
The registration will act as a form of proof in the United States that you own the copyright in the work. Outside the US you don’t need to register the work, but you will have to prove to a local court’s satifaction that you are the owner and the work has enough originality to be subject to copyright (not originality like a patent, only original to you).
After that, you have to show that the defendant, or the copier, had access to your work. If the person has copied it exactly, 100%, this access is often assumed or inferred. If the copying isn’t an exact duplicate, you will have to prove by facts or circumstances that the defendant had access to your work. This is easier on the Internet where blogs are there for everyone to see (and steal).
Finally, the plaintiff will have to show that the defendant’s work is “substantially similar” to the plaintiff’s work. Again, with an exact copy, this is no problem. But copyright infringement can occur even in cases where much less than the entire work has been taken.
Two methods are used to determine if copyright infringement has occurred: the subtractive method and the totality method.
The subtractive method, also known as the “abstraction/subtraction approach” seeks to analyze what parts of a copyrighted work are protectable and which are not. The unprotected elements are subtracted and the fact finder then determines whether substantial similarities exist in the protectable expression which remains. For instance, if the copyright holder for the musical West Side Story, alleged infringement, the elements of that musical borrowed from Romeo and Juliet would be subtracted before comparing it to the allegedly infringing work because Romeo and Juliet exists in the public domain (remember term of copyright is now life plus 70 years).
The totality method, also known as the “total concept and feel” approach takes the work as a whole with all elements included when determining if a substantial similarity exists. The individual elements of the alleged infringing work may by themselves be substantially different from their corresponding part in the copyrighted work, but nevertheless taken together be a clear misappropriation of copyrightable material.
Modern courts may sometimes use both methods in its analysis of copyright infrinement. Once the court is satisified that copyright infringement has taken place, it will rule for the plaintiff and move onto the damages and remedies phase – which we will discuss next week.
With three important exceptions, a copyright is owned by the person who creates the work – in a blog, that’s you. Under copyright law you are called the “author.”
The three exceptions are:
1. If a work is created by an employee in the course of employment, then the work is called a “work made for hire” and copyright is owned by the employer. Be careful what you write and what you do on your blog during the time you are at work, using your company computer. Could raise some problems.
2. If the work is commissioned (created by an author working as an independent contractor) and the parties sign a written work made for hire agreement and as long as the work falls within one of the statutory categories of commissioned works that can qualify as works made for hire, such as a contribution to a collective work.
3. If the author sells (“assigns”) the copyright to someone else, the purchasing person or business owns the copyright.
Copyright actually encompasses a bundle of separate exclusive rights, all of which can be sold or licensed separately. When all copyright rights are transferred unconditionally, the agreement is generally called an “assignment.” when only some of the rights are transferred, it is known as a “license.” An exclusive license exists when the right being licensed can only be exercised by one party and no one else. If the license allows others to exercise the same rights, is is known as a “non-exclusive” license.
Transfers of copyright should always be in writing for everyone’s protection. The US Copyright Office allows buyers of exclusive and non-exclusive rights to record these interests in the Office. this helps to protect the buyers in case the original copyright owner later decides to transfer the same rights to another party.
The US Copyright Office can be found at http://www.copyright.gov