The Buckley Brown Blog

The United States Patent and Trademark Office (”PTO”) offers two federal trademark registers - the Principal Register and the Supplemental Register. Marks may be registered on the Principal Register if they are shown to distinguish the applicant’s goods and services. Marks may be registered on the Supplemental Register if they pass the more moderate test of being “capable of distinguishing applicant’s goods or services.”

Registration on either the Principal or Supplemental Registers:

• allows the owner of the registered mark to use the registration symbol ® to deter infringers and impress customers (who may wrongly think that ® implies some sort of government approval);
• provides protection under §39(b) of the Lanham Act against state restrictions on use of the mark;
• gives priority rights in registering in foreign countries according to the provisions of international treaties; and
• places the mark on the PTO database and website at http://www.uspto.gov to serve as notice and may prevent others from adopting the same or similar mark.

Registration on the Principal Register provides the following additional advantages:

• provides constructive notice to those who might later adopt the mark;
• is prima facie evidence of the mark’s validity and registration as well as evidence of the registrant’s ownership and exclusive right to use the mark in commerce;
• allows the mark owner the right to ex parte seizure of goods bearing a counterfeit mark (”a spurious mark that is identical with, or substantially indistinguishable from, a registered mark”);
• gives the owner the right to treble damages (a multiple of actual damages) and attorneys’ fees against intentional use of a counterfeit mark, in the absence of extenuating circumstances;
• provides a deterrent effect of severe criminal penalties for the use of counterfeit marks;
• allows the owner to have the Bureau of Customs exclude imports bearing infringing marks; and
• gives the owner the right to apply to have the mark declared “incontestable” (although it can still be challenged, it is the highest form of protection available) after five years on the Principal Register and compliance with certain formalities.

Registration of the mark on the Supplemental Register, while not providing the more expansive protection of a mark registered on the Principal Register, will provide the following benefits to the registrant:

• allows the owner to file an infringement action in federal court;
• gives the PTO the ability to cite the mark against a later application by a third party for a substantially similar mark on the Principal Register;
• provides the owner the opportunity to have the mark registered on the Principal Register. This can be accomplished by showing that the mark has acquired “secondary meaning.” A showing of secondary meaning may be demonstrated once the mark has been in use for a period of time, usually five years.

In sum, registering your trademarks with the United States Patent Trademark Office offers many advantages and can help to protect your business assets.

For more information, please contact Carolyn E. Wright at (404) 633-9230.

These days, authors, artists, and photographers are likely to find one or more of their creative works used without permission.  One defense to the purported infringement is often that it is a “fair use.”  The challenge is determining whether the unauthorized use is an infringement or fair use.  While only a court of law can make that decision, understanding what makes a use “fair” will help you protect your work.

Surprisingly, the purpose of copyright law is not to protect the work of creatives, but, as stated in Article I, section 8, clause 8, of the United States Constitution, it is “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.”  Copyright law attempts to achieve a balance between public interest and the rights of authors/artists so that artists will be encouraged to create and the public will be the ultimate beneficiary.  In many ways, the priority leans towards public concerns when there is any conflict in those interests.  As a result, the law may not seem fair or just to the copyright owner.   

Rights of Copyright Owners

A copyright is created at the moment a work is made into a fixed form. For authors, it is created when you type the words on your computer.  For pho­tographers, it is created at the click of the shutter.  For artists, it is created when the paint is applied to the canvas.  Copyright law pro­tects both unpublished and published works, regardless of whether they have been registered with the U.S. Copyright Office. 

Copyrights give the owner the exclusive right to do, or to authorize others to do, specific things with their works. Copyright law effectively gives you, as the copyright owner, a legal monopoly on the use of that image. It also gives the copyright owner the right to prevent someone else from destroying their work. 

 When you own a copyright, you have the sole right (also known as the “exclusive rights”) to:

Enter fair use.  Fair use is the right to use copyrighted materials without the copyright owner’s permission.  It was designed as an exception to the exclusive rights granted above, permitting limited and reasonable uses without permission as long as they do not prejudice the copyright owner’s rights or interfere with normal exploitation of the work.  The classic example of fair use is the quotation from a book being reviewed.  Since an author usually does not review his own book, the impact of the quotation on his interests should be minimal.  If, however, so much material is quoted that the review will substitute for a purchase of the book, the use will not be considered fair.   

Thus, fair use is intended to allow the unauthorized use of copyrighted materials for the benefit of society, believing such use serves a higher purpose.  But fair use has its limits, too.  Specifically, Section 107 of the Copyright Act states that:

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 -

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work. 

17 USC § 107. 

All four factors (as indicated by the “and” before the last factor) are considered by a court to determine whether a use is fair. 

The “purpose and character of the use” is considered one of the most important indicators of fair use.  Courts determine whether the copyrighted work has been used to create a new work (often referred to as a “transformative use”) instead of simply copied and/or placed into another work.  

A court is more likely to find fair use when the “nature” of the copyrighted work used has been published, rather than unpublished.  Copyright law recognizes the right of photographers to control the first public appearance of works.

An unauthorized use will more likely be considered a fair use if a small amount or insubstantial portion of the entire work has been used, such as a short quote from a book.  While such a “de minimis” use is more difficult with photographs than when copying text, it can occur when the photos are in the background of a video, for example. 

When the unauthorized use directly effects and competes with the copyright owner’s business or potential for income, a court will usually find that the use was not a fair use.  This is true even when the use is not in an area of business directly competing with the photographer – such as selling sculptures based on a photo.  What matters is that the photographer could have made money in that field.  

Apparent Inconsistencies in Fair Use Cases
Because of the subjective nature of the fair use factors, many court holdings on fair use appear to be inconsistent.  For example, in July 2008, a federal court in Massachusetts determined that CBS news’ use of Christopher Fitzgerald’s photograph of Stephen Flemmi being arrested was not fair use.  A summary and analysis of the case written by Fitzgerald’s attorneys can be reviewed at http://www.nppa.org/news_and_events/news/2007/07/fitzgerald.html.  However, some courts have found fair use when a photograph has been used by news organizations.  See the October 25, 2006, blog at http://www.photoattorney.com/2006_10_01_photoattorney_archive.html on Chris Harris’ case for an example.  However, it’s clear that the unauthorized use of a photograph is much more likely to be deemed a fair use when the photograph itself is newsworthy.

A review of significant fair use cases can be found at http://fairuse.stanford.edu/Copyright_and_Fair_Use_Overview/chapter9/9-c.html.  A review shows that it is sometimes difficult to predict how a court will rule on a fair use case.  While this can partially be attributed to the specific fact situations presented, it does appear that the current application of the law on fair use is unstable and unpredictable.

Conclusion

It is always a judgment call until a court gives a final ruling whether the use of a photograph is fair.  But if you find your work has been used without your permission and the defense is “fair use,” don’t be too quick to accept that answer.

For more information, please contact Carolyn E. Wright at (404) 633-9230.

Trademarks or service marks allow people to identify the source of goods (trademarks) or serv­ices (service marks), not the products or services themselves. When people see your trademark, they will know where the product came from or who is providing the service. Trademarks can be names, symbols, packaging, the shape of a product, the colors of a product, the sounds, or scents associated with the product, or any combina­tion of these. If a customer can identify the source of a product or service based on the trademark, then you have developed “secondary meaning” and have a strong trademark. To promote, protect, and keep your business from being con­fused with another, you should consider establishing a trademark for your busi­ness. Once you establish a trademark, you should vigorously defend it. Then, no one in your line of business can use your trademark.

A trademark cannot be a generic name, such as “photography.” It’s harder to get the rights to a trademark that is merely descriptive, referencing a component of the product, such as “portrait photography.” But if you can demonstrate second­ary meaning for the mark, then you get registration rights for it. The next level of a trademark is a suggestive mark that requires a “leap of imagination,” such as “Portrayals.” An arbitrary trademark is an existing word that has no relation to the goods or service, such as “Silver Photography” (as long as you are not selling pictures of silver and silver is not your name). Fanciful marks are coined terms with no prior meaning, made up for use as a trademark, such as “Kixxy Photography.”

Rights to use a trademark come from using the mark in commerce with the prod­uct or service. You may use the ™ symbol immediately with your trademark, but you may only use the ® symbol after federally registering the trademark.

Since trade and service mark rights are based on actual use in commerce and priority rights are based on time and geography, not everyone registers marks since it is not required.  This means that when you apply for a trademark, you may wish to first conduct a “trademark search.”  A thorough trademark search includes phone books, newspapers, the internet, state company trade name registrations, the U.S. Patent and Trademark Office (“USPTO”), and other sources.  The results of such a search are several hundred pages of analyses of similar words and/or graphic representations of the marks from the U.S. including many that may not be registered but may have prior rights in the mark.

A trademark search is not a requirement of registration but if you choose to apply without one, you are taking two risks:

     1.     the USPTO may reject your mark due to pending applications not yet updated in the USPTO database or because of the USPTO’s own national search for the mark; and

     2.     even if your company obtains permission for proceeding with the application from the USPTO, another party may claim prior use of the mark during the application process (called “opposition”) or after you receive registration and contest your rights to use the mark due to their prior use.

Therefore, it you intend to invest large sums of money in brands recognition, corresponding domain names or company name recognition, a full search rather than a lesser search is the smart choice.  Alternatively, if you are not particularly attached to the trademark, are willing to change it in the future if necessary and want to take the risk by saving money early on, skipping a search may be more in line with your business goals.

For more information, please contact Carolyn E. Wright at (404) 633-9230.

When someone infringes your copyright, you have a limited time to make your claim. This is based on a legal principle called “statute of limitations.” Statutes of limitation, in general, are laws that prescribe the time limit to file lawsuits. The deadlines vary by the type of claim and maybe by the state where you live. The purpose of them is to reduce the unfairness of defending actions after a substantial period of time has elapsed. They allow people to go on with their lives, regardless of guilt, after a certain time.

Because copyrights are governed by federal law, there is only one statute of limitations for claims related to them. Copyright infringement claims have a three-year statute of limitations from the “last act” of the infringement. What constitutes the last act can vary. For example, if your image is published in a newspaper without your permission, you have three years from the date that the newspaper was distributed to file your claim in court. But if the infringement is continuing, such as when someone is using your image on the web without your consent, then the time to calculate the statute can get a bit tricky. It sometimes starts when you have “constructive” notice of the infringement, even if you don’t have actual knowledge of it.

If someone uses your photo without your permission, you may wish to seek legal remedy from that person within three years of the last act of infringement. So don’t sit on your claim once you have it. Note, however, to pursue any copyright infringment claims in court, you must first register your copyright with the U.S. Copyright Office.

For more information, please contact Carolyn E. Wright at (67 592-8025.

The Trademark Dilution Revision Act (”TDRA”) became effective October 6, 2006. The Act establishes a “likelihood of dilution” standard rather than “actual dilution” when a challenged and allegedly diluting mark has already been put into use. The new law also provides for relief from both dilution by blurring and dilution by tarnishment. Dilution by blurring occurs when “an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” A famous mark now means it is nationally famous and is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”

Of specific concern were suggested revisions to the “fair use exceptions” for trademarks. The proposal eliminated “noncommercial use of a mark” and changed the fair use definition. Fortunately, the final TRDA maintained the “noncommercial use” exception. The fair use exception has been revised to include “any fair use, including a nominative or descriptive fair use, or facilitation of such fair use.” This language appears to be more inclusive than that originally proposed. But the final affect of the TDRA won’t be known until the courts interpret it.

For more information, please contact Carolyn E. Wright at (67 592 - 8025.