Copyright and Trademark Law
Basics
Heather E. McNay
For Georgia Lawyers for the Arts
August 20, 2014
© 2014 Heather E. McNay
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Types of Intellectual Property
• Copyright
• Trademark
• Patent
• Trade Name
• Trade Dress
• Trade Secret
• Right of Publicity
• Other: Customer Lists, Know-how, etc.
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Copyright
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
© 2014 Heather E. McNay
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Copyright
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.”
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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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)
© 2014 Heather E. McNay
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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.
© 2014 Heather E. McNay
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Copyright
How long does Copyright
protection last?
(Current Act)*
• For the life of the author, plus 70 years
• 95 years for corporations
*since 1978
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Copyright
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.
© 2014 Heather E. McNay
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Copyright
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
© 2014 Heather E. McNay
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Copyright
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.
© 2014 Heather E. McNay
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Copyright
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
© 2014 Heather E. McNay
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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.
© 2014 Heather E. McNay
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Copyright
What is Fair Use?
17 U.S.C. § 107
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]
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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Copyright
Parody can be Fair Use
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. 1214 (S.D.N.Y.1996), aff'd, 137 F.3d 109 (2d Cir.1998).
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Copyright
Change of medium is still an
infringement
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.
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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
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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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.
© 2014 Heather E. McNay
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Copyright
Kaplan v. Stock Market Photo
Agency, Inc.
The Court denied the photographer’s
claim of Copyright infringement.
KAPLAN v. STOCK MARKET PHOTO AGENCY, INC.No. 99 CIV.
10218 AGS.
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Copyright
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.
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Copyright
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.
© 2014 Heather E. McNay
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Copyright
How to license
Broad Rights/Subscription
Rights Managed
· May use same image for
· License limited to particular
many uses without
use and time period
additional license · May request and pay for
restrictions still apply
some exclusive use
· No exclusive use available
· Availability to use a
collection of images for a
yearly/monthly fee
(subscription)
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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.
© 2014 Heather E. McNay
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Copyright
Registration options
· Photographers - group registration
regulations for published works
(www.Copyright.org)
· All artists can register large groups of
unpublished works.
· Published artwork must registered
separately from unpublished (display not a
publication).
© 2014 Heather E. McNay
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Copyright
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
© 2014 Heather E. McNay
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Copyright
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
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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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
© 2014 Heather E. McNay
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Copyright
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
© 2014 Heather E. McNay
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Trademark
What Is a Trademark?
– Word
– Symbol
– Slogan
JUST DO IT.
– Product or packaging
design
that identifies the source of a specific product or service and
distinguishes it from others in the marketplace.
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Trademark
Trademarks and Service Marks
Service mark
examples
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Trademark
Nontraditional Marks
• Sound
• Color
• Fragrance
• Design of a business
establishment
• Motion
• Shape
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Trademark
Other Kinds of Marks
• Collective mark
• Certification mark
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Trademark
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:
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Trademark
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.
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Trademark
Process of Securing a Trademark
1. Select
2. Clear
3. Protect
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Trademark
Selecting a Mark
Distinctiveness Spectrum
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.
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Trademark
Trademark Searches
• International screening search
• Country-specific search
–
–
–
–
Trademark registers – classes/categories
Corporate names
Internet uses and domain names
Other directories/dictionaries
• Local expertise
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Trademark
Obtaining Trademark Rights
• Rights are territorial – may be registered
through:
• Single trademark office
• Regional trademark systems
• Madrid (“International Registration”)
system
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Trademark
Obtaining Trademark Rights (cont’d)
Rights are obtained:
- By registration; or
- By use (common law rights)
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Trademark
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).
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Trademark
Notice of Registration
®
______ is a
trademark/service
mark of _______
TM
SM
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Trademark
Loss of Rights
• Improper use
• Failure to police
• Genericide
• Failure to renew
• Non-use
• Cancellation
• Improper assignment
or licensing
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Trademark
Proper Use — Avoiding Genericide
• Once a trademark, not always a trademark
• Important to
police third
parties’
unauthorized
and/or
improper
use
escalator
cellophane
linoleum
dry ice
aspirin
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
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• Thank you!
• Any Questions?
?
Thank you to:
Picture Archive Council of America (PACA)
International Trademark Association (INTA)
for certain slides.
© 2014 Heather E. McNay
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