While large companies heavily invested in research and development or content creation are usually sophisticated with regard to their intellectual property policies, smaller companies may be bewildered by the different types of intellectual property and protection. Here’s a rundown.
1.5 million trademarks
A trademark is any word, phrase, symbol or design, or combination thereof that identifies and distinguishes the source of the goods or services of one party from those of others. There are many examples of well-known trademarks (Coca-Cola, IBM, and Amazon.com), but there are over 1.5 million trademarks registered with the U.S. Patent and Trademark Office.
When your business is considering using a particular trademark, it is crucial that you make sure the trademark will not infringe upon other businesses’ trademarks.
One obvious way to check is to do an Internet search for your proposed trademark. A more thorough way of evaluating your trademark is to have a trademark attorney obtain a trademark search report, which is a review of federal and state trademark offices, numerous business and trade directories, the Internet and other sources of trademark usage.
In the United States, trademarks do not have to be registered to enjoy protection under the law. Any trademark that is in use in commerce (if products or services are being sold under the trademark) is entitled to protection under both state and federal law. This is relevant for at least two reasons.
First, reviewing the U.S. Patent and Trademark database will give you an incomplete overview of whether your trademark is “available,” and second, your unregistered trademarks will enjoy the protection of the law from the moment you first use them.
Nevertheless, you should consider registering any trademark which is valuable (if there is significant goodwill associated with the trademark) with the U.S. Patent and Trademark Office. Among other benefits, registering your trademark means that businesses searching the trademark database should find your trademark, you will be entitled to enforce enhanced remedies against infringers, and the value of your trademark may be enhanced because the trademark has been vetted through the registration process.
Copyright is for creativity
Trademarks and copyrights are often confused with each other. The easiest way to distinguish between them is to understand that trademarks are used to identify the source of particular products or services, while copyrights protect against infringement of creative material.
Fundamentally, copyright law protects original works of authorship. Examples of things that are protected by copyright law include literary, dramatic, musical, artistic,and other creative works. This can include books, plays, recordings, movies or videos, songs and lyrics, paintings, drawings and sculptures, and even computer software. Copyright law will also protect more mundane creative works such as user manuals, white papers, and marketing materials.
But not all is protected
It is important to recognize what copyright law does not protect, which includes titles, short phrases and slogans, ideas or concepts (which are instead protected by patent law), and works that consist entirely of information that does not include original authorship, such as calendars, databases, lists or tables taken from public documents or other common sources. Copyright law also does not protect recipes (which are considered mere listings of ingredients), company names or book titles.
Additionally, copyright law requires that the work be fixed in a tangible medium (for example, written down or recorded in some way). Copyright does not protect works that exist only in the mind of the creator or are not written down or otherwise noted, such as unrecorded speeches or choreographic works.
Any creative work created on or after January 1, 1978, is entitled to protection as soon as it is fixed in a tangible medium. It is not necessary to register the work to claim copyright protection, and since 1989, it is not required that the work even be published. This means that not only are your works automatically protected, but so are everyone else’s. Therefore, you should assume that every creative work is protected by copyright, whether or not registered or marked as being subject to copyright.
The ownership of copyright is a frequent source of misunderstanding. The general rule is that the author of the work owns the copyright to the work. Works made for hire are excepted from this rule, but only works created by employees within the scope of their employment or certain types of works specially commissioned and which are subject to a written work for hire agreement are considered works for hire.
A common problem resulting from this misunderstanding is the ownership of creative works authored by independent contractors or vendors. Absent a written agreement, these works are owned by the contractor or vendor, even if specially commissioned by the principal. Also, copyright may be assigned from one holder to another.
Infringers do exist
The owner of the copyright is the only one permitted to reproduce, distribute, make derivative works based on, display publicly, or perform the work publicly. If anyone other than the author does any of these without the owner’s consent, they are infringing upon the copyright of the owner. As stated above, registration of a work is not required to claim the benefit of copyright law. However, registration does give the copyright holder significant benefits, and any work that has value should be considered for registration.
Registration is beneficial as it establishes a public record of the copyright claim, may establish prima facie evidence in court of the validity of the copyright, and permits the owner to record the registration with the U.S. Customs Service for protection against the importation of infringing copies. Additionally, registration is required before bringing a copyright infringement lawsuit, although the registration can occur after the infringement.
Most important benefit
But perhaps the most important benefit of registration is that if registration is made within three months after publication or before infringement of the work, an infringer may be liable for statutory damages of up to $150,000 per infringement and the reimbursement of the owner’s attorney fees (as opposed to an award of the owner’s actual damages, which can be difficult to prove and may not merit the expense of bringing and infringement claim).
Registration of copyright in a work is relatively easy and inexpensive, requiring only the submission of a registration application and a copy of the work to the U.S. Copyright Office (together with payment of the requisite fee).
