Law Blog

Copyright law protects original works of expression, such as written material, fine and graphic arts, music, photography, software, video and cinema, by preventing the work from being copied or commercially exploited without the permission of the copyright owner. Copyright protection may also be available for a trademark if it has artistic elements included within it as well. Most companies now have a website and the information you place on that website may be protected by copyright, as well as any advertising material you may utilize or software you develop. By registering these copyrightable works with the Copyright Office, you can enforce these rights if your works are misappropriated

How do I obtain copyrights?
Copyright vests with the original creator or author of the work, unless the work was a work-for-hire, in which case the hiring party is considered the author. The copyright can be registered with the copyright office at any time during the term of the copyright.

How do I obtain a registration of my copyright?
The U.S. Copyright office is a division of the Library of Congress, and administers and issues registration of copyrights to those whose applications that are entitled to a registration.

Am I required to place a copyright notice on any works to which I am claiming copyright?
The copyright notice consists of three elements, the copyright symbol ©, the year of first distribution to the public and the name of the copyright owner. While this notice is not required in order to claim infringement or damages, it is advisable that the notice be placed on any work to which a business or individual is claiming copyright.

What are the advantages provided by a copyright registration?
Current law does not require registration of the work with the U.S. Copyright Office. However, registering a work provides the following advantages: registration is required to file an infringement suit; also if an application for registration has been filed within three months of publication or before the infringement occurs, the owner has the right to receive statutory damages. These statutory damages range from $750 per infringement to $30,000 per infringement. If infringement is shown to be willful, the damages can be tripled. Additionally, certain costs and reasonable attorney’s fees may be recovered.

If the work is unregistered, the copyright holder must show actual damages incurred. These can be reimbursed and the infringer can be forced to disgorge any profits that may have been made through the infringement.

As a business owner, what types of works can receive copyright protection?
Business owners frequently have items which are protected through copyright. Some examples are advertisements and commercials, website content, trademarks with significant design elements and software developed by the company.

What is the duration of the term of a copyright?
Works created on or after January 1, 1978, is the life of the author plus 70 years. If the work is anonymous or pseudonymous or a work-for-hire, the term is 75 years from publication or 100 years from creation. If the work is a joint work, with no work-for-hire authorship, the term is the life of the last surviving author plus 70 years. At the end of the term, the work falls into the public domain.

What is “Fair Use”?
There are some situations where copyrighted material can be used, without infringing the author’s rights, known as fair use. There are four factors to be considered in determining fair use:

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 accused use on the potential market for or value of the copyrighted work.
What are some examples of works that are not copyrightable?
Works that are not fixed in a tangible medium of expression. Trivial works without creative substance, i.e., words, names, titles, slogans and short phrases. Ideas, principles, concepts, plots, procedures, processes, systems and methods of operation (idea vs. expression dichotomy). While facts typically are not eligible for copyright proection, the expression of the facts may be copyrightable.

What are the two criteria for an infringement action?
Proof of ownership of the copyright and proof of copying by the infringer are the criteria needed for an action.

Recommended Web Sites
U.S. Copyright Office (www.copyright.gov) maintains a website which provides general information on copyright law and links to legal references. It also provides instructions on how to register and license a copyright as well as other information on copyright.

So you are thinking of starting your own business. The first thing your attorney will advise you to do is to check with the Secretary of State to see if the name of your business is available on the corporate name database. Unfortunately, after this step many business stop thinking about their trademarks and this can be a costly mistake.

A trademark is a word, name, symbol or device that is used by businesses in conjunction with its goods to indicate to the public the source of the goods. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a good. It is important to think about your company’s trademarks and service marks during the initial phases of set up. Many businesses neglect to check if their trademark is available for registration and, perhaps more importantly, if anyone else has already registered their trademark.

When setting up a business, a search for relevant trademark registrations should always be conducted. There are different avenues of searching for trademark registrations to determine if your trademark is infringing on another’s trademark. One method is the Kentucky Secretary of State’s Trademark Database, which can be found on the Secretary of State’s website. This database can help you identify companies in Kentucky that may be using a similar trademark.

A new business owner should always search the U.S. Patent & Trademark Office website; www.uspto.gov for federal trademark registrations to determine if some else has federally registered their trademark. If you need assistance in searching for federal registrations, you can contact an attorney who is familiar with trademarks. Federal registration is important because it gives the owner nationwide rights in the United States and can be used to prevent others from using a confusingly similar mark. If you learn that someone else has already federally registered your trademark for a similar good or service, you should consider choosing a different trademark. There is nothing more frustrating to a business owner to have invested her time and money into developing a valued trademark only to later learn that she must stop using the mark, because someone else has a federal registration on a confusingly similar mark for similar goods. Changing a trademark or service mark for a company is both frustrating and a very expensive process.

Any business offering goods or services under a valuable trademark or service mark should consider seeking protection through a federal registration with the U.S. Patent and Trademark Office. Although it is not inexpensive, federal registration provides a number of benefits and assists in enforcement of trademark rights against infringers as well as enhanced monetary damages.

If I am already using a trademark in my business but have not obtained a federal registration on that mark, do I have any protection?
Individuals or business establish common law trademark rights by simply using the trademark in conjunction with the goods or service. By registering that trademark with the U.S. Trademark Office, those rights are enhanced. Common law rights are limited to only where the mark has been used. Federal registration on the other hand provides protection throughout the entire United States.

What kind of marks cannot be registered with the federal Trademark Office?
Not all words, names or symbols can be registered with the U.S. Trademark Office. Categories of marks that generally cannot be registered include:

Generic marks;
Surnames (unless they become well known as trademarks through advertising or long use, such as McDonalds.);
Marks consisting of a flag of the United States, a state or a foreign nation;
Primarily geographically descriptive marks;
Marks using the signature or portrait of a living individual without that the person’s consent;
Marks so similar to those already registered that they may cause confusion, mistake or deception;
Marks that merely describe the product or service; and
Marks using the name, signature or portrait of a deceased U.S. President, during the life of his widow, without written consent of the widow.
How can I determine if my trademark is eligible for federal registration?
The best way to determine if a trademark is eligible for federal registration is to conduct a search of the registered marks, to determine if there are any registrations which may be so similar in sound or connotation that it is likely to confuse consumers to the source of the goods or services. The USPTO website offers a search engine which allows you to conduct searches prior to filing an application for registration.

Our office assists with conducting the preliminary searches and can also initiate a clearance search which would insure that there are no prior users of the mark in other areas of the country.

What are trade secrets?
Trade secrets are proprietary information that has a commercial value and is held by a business. Trade secret laws protect formulas, patterns, devices and compilations of information, from use by unauthorized persons. Typically trade secrets are protected through use of confidentiality agreements and other documents.

What is the difference between the ™ and the ® ?
The ™ trademark indicates that an individual is claiming trademark rights to his/her trademark. The term SM may be used if a service is being provided by a business or individual. The term TM and SM does not indicate that any type of registration has been obtained.

The ® is the registration symbol for registration of a trademark or service mark on the federal trademark database. The ® symbol should not be utilized until a registration has actually been obtained. It is considered false advertisement to use the ® when an application for registration is merely pending.

I am thinking about starting a business and do not have the funds to register my trademark. Should I be concerned about federal registration of my trademark at this point?
Even though you may not have the funds available to obtain a federal registration for your trademark, you should take steps to insure that the trademark you are planning to use does not infringe upon someone else’s federally registered trademark. This can be accomplished by conducting a search on the USPTO website. This will help to insure that you will not receive a “cease and desist” letter from an owner of a federal trademark, two to three years after you have put in significant amounts of effort into developing name recognition of your trademark.

What is the term of the Federal Registration?
Federal registrations have terms with ten year renewals. In the first ten year term, an affidavit of continued use must be filed between the fifth and sixth year to maintain registration. Registration can be renewed indefinitely as long as the mark is in use. The US Trademark Office does not send reminders about maintenance of renewal of registrations.