The Venn Diagram of Copyright and Trademark

I often field questions on how copyright and trademark fit together, because they do compliment each other. To be sure, they have different offices that register them - the Copyright Office (which is part of the Library of Congress) and the Patent & Trademark Office (which is part of the Department of Commerce). They have different symbols - the distinctive © for copyright and ® for trademark. They even have different statutes that establish them - 17 U.S.C. § 101 et seq for Copyright and 15 U.S.C. § 1051 et seq.
image: Rich Renomeron
For all of their differences, however, there is some overlap - much like the Venn Diagrams we all had to do in school. Copyright has its own circle and trademark has its circle - but they can still come together and meet in the middle.

To fully understand how these two work on their own and overlap, it's necessary to briefly discuss what each covers. Copyright protection extends to works of original authorship in eight distinct categories: literary works (e.g. books); musical works (lyrics and melody of your favorite song); dramatic works (e.g. plays); pictorial, graphic and sculptural works (pretty self-explanatory); pantomimes and choreographical works (again pretty self-explanatory); motion pictures and other audiovisual works (e.g. movies and TV); sound recordings (what you hear on your CD of your favorite song); and architectural works (e.g. plans, drawings, etc). The protection starts from the moment the work is fixed in a "tangible medium of expression" which means when it can be read, processed, viewed or otherwise translated into useable material.

Trademark protection, on the other hand, is solely concerned with marks that when used on certain goods or services act as source indicators for consumers to know that the particular item or service comes from that mark owner. A mark is not just the words, design, color or numbers that make up what you see - it must be paired with the goods or services on which it is used to fully function as a trademark. Thus, UNITED by itself doesn't mean much. But, for airline services it is United Airlines, and for moving services, its United Van Lines.

While there are significant differences in the ground that these two areas cover, there is also overlap. The overlap usually occurs with respect to things that would appear to fit into both groups. A good example is logos. Companies sometimes have very distinctive and creative designs that they use to distinguish their products. To the extent that copyright protection is given to works of the visual arts, it would be tempting to think that a logo can function both as a trademark and still claim copyright protection. Whether this actually works, however, depends upon the actual item since it could very well run up against the copyright law's ban on protection for functional designs. A good rule of thumb, however, is that the more detailed, distinctive and overly intricate the design, the more likely it is to be able to claim copyright protection because these factors would tend to indicate a larger degree of originality. And, originality is the hallmark of copyright protection.

Slogans and phrases, on the other hand, are pretty much categorically excluded from copyright protection. One would think that since they are textual, they would get protection. This is in fact, not the case because they most likely lack that minimum amount of originality. The good news is that they are (for the most part) registrable at the PTO as long as they are used to indicate the source of goods or services.

Thus, while these two areas of intellectual property law usually are useful in vastly different areas, there are situations where you can obtain maximum protection for your intellectual property through both the copyright and trademark laws.

Madrid Isn't Just a City in Spain

Madrid is famous for many things including the fact that it is the capital of Spain, the seat of the Spanish monarchy, and can trace its history back to the Roman Empire. It also has some gorgeous architecture, as seen in the Royal Palace below.


In the world of intellectual property, however, it is well known because, in 1989, it happened to play host to the signing of an international treaty between a wide variety of countries that produced what is known simply as the Madrid Protocol. The Protocol is a system that allows a trademark owner in a country that is a signatory to seek protection for that trademark in any other country that is also a signatory to the agreement. The processing of applications filed through this agreement is handled by the World Intellectual Property Organization (or "WIPO") in Geneva, Switzerland.

The main goal of the Protocol was to streamline the process whereby a trademark owner could obtain protection for his or her mark in foreign countries - all without having to hire counsel in each country and file a separate application. The potential cost savings alone on this basis is enormous.

The process is fairly simple: the trademark owner must have either an application pending to register their mark or a valid registration with their home intellectual property authority to be able to file anything under Madrid. The owner then files an application for an international registration of that mark with their home authority - so for example, in the United States, it would be with the US Patent & Trademark Office - which then sends the application to WIPO in Geneva.

If the application is approved by WIPO, it will issue an international registration that is valid for a period of 10 years. The owner can seek subsequent designations of protection for that registration in any country that is a party to the Protocol. As of November 2007, an amazing 74 countries have signed on to the Protocol, representing all corners of the world from Albania to Zambia.

Unfortunately, the United States was fairly late getting to the Madrid table - it wasn't until 2003 that the Protocol took effect here. In the five years since it has taken effect, however, the PTO has worked out most of the kinks in the system. All Madrid applications can now be filed electronically and - perhaps even more importantly - all fees are paid in U.S. dollars (although the official currency of WIPO is the Euro; any fees are automatically converted when you make the payment). The PTO does charge an additional fee for processing the applications at its office since it must review them to ensure that the minimum requirements have been met. The rest of the fees are set by WIPO and vary depending upon which countries you want to apply in.

Despite the amazing convenience and simplicity of the system, there are still some pitfalls. For example, even though you have obtained an international registration from WIPO, that does not guarantee that you will get the registration in the other country. This is because the other countries will still evaluate the application under the same standards that they apply to every application that is filed. It is very possible that you will get a notice from WIPO indicating that the office of the country has refused your application based upon their particular rules or laws. In that case, you have no real alternative but to hire counsel to get things straightened out. Since avoiding hiring expensive outside counsel was a major draw of the Protocol, this can be disappointing to say the least. Still, when the process works and there are no objections from the home country in which you are trying to register your mark, it is a relatively inexpensive and convenient alternative.

The Protocol is particularly suited to those mark owners who wish to obtain protection in numerous countries since, in the long run, the initial cost of obtaining the international registration and then subsequent designations in other countries is spread out over that many more registrations. It may not make as much economical sense if the mark owner wishes only to seek protection in one or two countries. However, the international registration upon which all other applications is based is valid for a period of ten years - should market forces change and the mark owner decides to begin to expand into other countries, that international registration can form the basis of numerous subsequent designations at any point during that ten-year period.

Ultimately, the decision as to whether to seek an international registration under the Protocol is best made in consultation with your intellectual property counsel. There are different factors at work and they will best be able to advise a mark owner of the potential benefits and drawbacks for that owner's situation. But, the Protocol is certainly worth a good look.

image: cuellar
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

When a Work Is Not Your Own

It may come as a bit of surprise to learn that none of the words that I write on this blog belong to me. Yet, it is absolutely true.
image: Gonzalo Barrientos
The natural inclination is to assume that whatever we create belongs to us. After all, doesn't the Constitution grant to Congress the power to "promote the Progress of .... useful Arts, by securing for limited Times to Authors ... the exclusive Right to their respective Writings ...."? And, hasn't Congress exercised that power since at least 1790 to help authors retain those rights? However, as with most things in the law, there are some notable exceptions.

The exception that renders these writings the property of our firm comes in the form of the "work-made-for-hire" doctrine. This doctrine, first codified in the 1909 Copyright Act and defined in the current Copyright Act, states that the author of a work made by an employee within the scope of his or her employment, is the employer. The employer is the automatic owner of the work, and all of the exclusive rights that come with the work, and can register the work, assign its rights and take any other action that it wishes to with respect to the work.

At first blush, this may seem unfair. In reality, it makes perfect - and economic - sense. Under the current Copyright Act, which was enacted in 1976 and took effect on January 1, 1978, all original works of authorship are vested with copyright from the moment they are fixed in a tangible medium of expression - so, the book when it is written (or typed) down, the painting when it is painted, the photograph when it is affixed to the negative. If employees who create those works for their employer still have all of the rights in them, the employer would have to seek an assignment from the employee for everything that they create from the moment that the works are created and before the employer could legally use or exploit the work. This would be extremely inefficient, not to mention a possible sore point if there are negotiations to be had over the value of the work.

Also, the vast majority of the time, the employee will have no personal use for the work that they create since the employee is making it for their employer. When I write a brief, it's of little use to me personally, but it is of every use to my employer. The elegant work-made-for-hire solution allows the employer to have automatic ownership of that which they have hired the employee to produce and the employee has no extra work to deal with assigning over to their employer the copyrights in a work that they probably have no personal use in anyway .

To be sure, there will always be cases where there is a conflict. What if the employee makes something in their personal time that is beneficial to their employer? Is it still a work-made-for-hire or is it outside the scope? There have also been questions involving independent contractors and whether they are considered employees such that what they create would automatically belong to the person who hired them. The Supreme Court's influential decision in Community for Creative Non-Violence v. Reid, gives a great deal of guidance on when an independent contractor can be considered an employee for purposes of the work-made-for-hire doctrine and has been extremely helpful in the almost 20 years since it was issued, in answering this question.

The biggest area where confusion about the work-made-for-hire doctrine arises is with respect to independent contractors and work that they provide. There is a misconception that just by paying the vendor for whatever they have created that should mean that the payment covers all of the rights as well. The Copyright Act requires a little more than that for their to be a transfer of ownership of the rights in the work - even if the physical thing has already changed hands or the services have been rendered. The Act requires that all assignments of rights be in writing and this does not include a mere bill of sale showing the purchase of an item or service. The actual language to be used depends upon the circumstances involved and your IP counsel should be able to advise you as to what language is appropriate.

With respect to this blog, it is pretty clear that it is a work-made-for-hire and the author for purposes of copyright is my firm. Hence, this notice:

All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.

Welcome!

With this inaugural post on the HCCB Intellectual Property Law Blog, I'd like to welcome you and thank you for taking the time to check us out. This blog is designed to provide information and commentary on issues arising out of trademark and copyright law. I hope to cover a wide range of topics from registration, litigation, IP management and everything else dealing with these two fascinating areas of the law.

This blog will be updated every Friday and as always, you can contact me during the rest of the week at estubbe@hardycarey.com.
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Topic of the Day: The Benefits of State and Federal Trademark Registration

It may seem redundant to have a registration for the same mark at both the federal and state levels, but each has a unique role to play in the protection of your intellectual property. As you would imagine, a federal registration is the ticket to nation-wide enforceable protection against infringers who would seek to use your mark on the same or similar goods and/or services.
image: greefus groinks
The benefits of a federal registration include the prima facie (or on its face) presumption that your mark is distinctive and worthy of protection. Additionally, third parties who seek to register the same or similar marks on the same or similar goods at the Patent & Trademark Office will face the scrutiny of the Examining Attorneys who may reject the proposed application on the grounds that it is likely to confuse the consuming public with your mark. Another benefit to the federal registration is that you can sue in federal court (remember you can sue in federal court without a federal registration, but your burden of proof is much higher because you have to make the prima facie showing that the mark is worthy of protection before you can even get to the question of infringement).

So how does a state registration help when you get so much in a federal registration? Well, it is true that a state registration's "reach" is limited to the state in which it is issued and it is also true that you would be limited to whatever causes of action and remedies are available under that particular state's laws if you were to litigate over infringement of dilution of your mark. However, by far the best beneft of a state registration is to prevent others from registering the same or similar marks in that state.

Typically, the vast majority of people who start a business or develop a brand do not have the resources or the time to go to the PTO's website and search to see if someone has either registered or filed an application to register the mark that they are thinking of using. The most that many people do is file for a name reservation at their state's Secretary's office (note - some states process their trademark applications and registrations through departments other than the Secretary of State). If you have a registration already for your mark in that particular state, that registration should have the effect of barring the other person's name reservation or mark application. At the very least, it educates that person that you are using the mark and they go and find another one.

So, the benefit of a state registration is primarily to protect your registration from being inadvertenly infringed upon by others who haven't taken the time or don't know how to find out if there are users who have already registered that particular mark. A secondary, but still important benefit, is that if you do end up litigating the federal registration in federal court, you should be able to add the state-law claim based on the state registration as well.

State registrations are typically fairly inexpensive and most states (although not all - Virginia being an excellent example) look only to see if the mark is going to infringe upon someone else's mark that has already been registered rather than look to substantive issues such as descriptiveness. The small investment in a state registration is more than made up for in the ability to have a means to prevent a lot of confusion and heartache in the future.

text © 2008 Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.