WHY CAN’T I “BORROW” THAT? Developing a Protectable Brand and Protectable Content Without Imposing on the Rights of Others Presented by:
Courtney M. Dunn U.S. Registered Patent Attorney Lowndes, Drosdick, Doster, Kantor & Reed, P.A.
©2012 Lowndes, Drosdick, Doster, Kantor, & Reed, P.A.
Common Problems • Company picks a brand (without doing its homework) and… • Spends a lot of money using it: • company name • domain name(s) • website development • business cards • advertising/promotional materials • directly on product • Results: • Loss of money • loss of time invested • possible consumer confusion / advertising for others • Must rebrand • Potential lawsuit – payment to the prior user
Common Problems • Employee finds copy/images/layouts/sound bites/video clips on another company’s website that fits his company’s needs and ‘borrows’ it (or even makes a few changes). • The employee’s company • • •
develops website around the ‘borrowed’ material uses ‘borrowed’ material in advertising, promotional materials, demos, etc. builds product around the ‘borrowed’ material
• Results • • • • •
loss of money loss of time invested potential consumer confusion must re-develop website, advertising and promotional materials, and/or the product Potential lawsuit
Branding vs. Content Branding • Brands are protectable under trademark law • A brand (or trademark) is anything that is used to distinguish a particular product or service from others in the marketplace and/or identify the source of a particular product or service.
Picking the Right Mark: Weak Marks
Brand/Trademark Examples
Branding vs. Content Content • Content may be protectable under copyright law • Content protectable under copyright law refers to original works of authorship • e.g. on a website, app, or software program – text, graphics, script, data, code, audio, video
Branding “The single largest source of intangible value in a company is its trademark” - Forbes • Difference between company name and company’s brand
– e.g. The Walt Disney Company, Inc. vs. DISNEY® – Available corporate name (Sunbiz search) ≠ available or protectable brand
• Difference between company’s domain name and company’s brand – e.g. books.com vs. BARNES & NOBLE® – Available domain names ≠ available or protectable brand
• Difference between describing goods/services and branding – e.g. “automobiles” for automobiles vs. LEXUS® for automobiles
Dangers of Picking and Using the Wrong Mark • Willful infringement - treble damages • Rebranding after substantial investment • Actual confusion of brand • Expensive to fight infringement suit from either side
MCSLEEP™
METRO™
Advantages of Doing Your Homework • Easier to prevent and stop others from using same/similar mark
• Makes your brand stand out among your competitors (you don't want consumers confusing your products/services for products/services of inferior quality)
• Easier to build goodwill / consumer confidence with the mark when consumers can clearly differentiate your brand from another's • Avoids the cost of rebranding or litigating questionable trademarks • Most Valuable Trademarks (2011) Brand/Trademark
Value
GOOGLE
$44.3b
WALMART
$36.2b
MICROSOFT IBM
VODAFONE
$42.8b
$36.2b
30.7b
Picking the Right Mark: Types of Marks
• • • • • • •
Words Phrases Shapes Symbols Colors Sounds Smells
“Apple” “Happiest Place on Earth” Coca-Cola bottle, Aunt Jemima Home Depot Orange NBC chimes Plumeria scent for sewing thread
Picking the Right Mark: Sliding Scale of Protection Descriptive* Pet Land
Suggestive
Arbitrary
Fanciful
Dairy Queen
Apple
Google
* Allowable if distinctiveness has been acquired, e.g. McDonald’s
Picking the Right Mark: Weak Marks
Some believe describing your product/service in your Trademark is the best way to reach consumers. Descriptive marks provide almost NO scope of protection
Pet World
Pet Pet Town Land Pet Pet Universe City
Picking the Right Mark: Strong Marks Banana
Avocado
Apple Cherry Granny Smith
Picking the Right Mark: What Cannot be Trademarked? • • • • • • • • • •
Plain Numbers – 586 for Intel (7-Up okay) Scandalous Matter Disparaging Matter False Connection Government insignia/Flags Names of the living Surnames* Geographically descriptive* Merely descriptive/mis-descriptive* your corporate name – –
• •
DISNEY® okay The Walt Disney Company, Inc. is not
Any mark that would create a likelihood of confusion with a prior trademark generic
*allowable if distinctiveness has been acquired
Picking the Right Mark – Due Diligence • Internet Search • USPTO search – only applied-for marks • Clearance Search and opinion by an attorney
Protections Available • Common Law – Use in Commerce – free • State Registration – Available for marks used strictly inside a state – Attorney’s fees Federal Registration – Use of the ® symbol – Provides public notice of ownership claim – Creates a legal presumption of a party’s • ownership of the mark • Exclusive right to use the mark – Treble damages for willful infringement
Content
©
• Content may be protectable under copyright law • Content protectable under copyright law refers to original works of authorship • Copyright covers material in eight categories: 1. Literary works; 2. Musical works (including any accompanying words); 3. Dramatic works (including any accompanying music); 4. Pantomimes and choreographic works; 5. Pictorial, graphic and sculptural works; 6. Motion pictures and other audiovisual works; 7. Sound recordings; and 8. Architectural works. • Examples on a website, app, or software program – text, graphics, script, data, code, audio, video
What is not protectable? (under copyright law)
• Works that have not been fixed in a tangible form of expression (performances that have not been written or recorded) • Titles • Names • Short phrases • Slogans • Familiar symbols/designs • Works that contain no original authorship
– Mere listing of ingredients or contents – Works consisting entirely of information that is common property/no original authorship. E.g. rulers, tape measure, height charts, weight charts
• Ideas/Concepts/Discoveries • Procedures/methods • Devices
Fair Use •
•
Limited use of copyrighted material is allowed in some cases without the permission of the copyright owner – Criticism – Comment – News reporting – Teaching (including multiple copies for classroom use) – Scholarship – Research Four Factors for determining Fair Use: – Purpose and character of the use (commercial use? Non-profit use?) – Nature of the copyrighted work – Amount and substantiality of the portion used in relation to the copyrighted work as a whole – Effect of the use upon the potential market for or value of the copyrighted work.
Dangers of “borrowing” • How much is enough? – What if I change it about 10%? • What is 10%? – The Answer: It Depends • Test for infringement – Substantial/striking similarity – Does not have to be an exact or complete copy – A work can still be infringing even if wording has been changed
Protections Available/Advantages • Limited protection under federal law – Rights form automatically upon creation – Use of the © symbol Federal Registration – Requires registration with the U.S. Copyright Office – Use of the © symbol – Increased damages – Augmented enforceability
© ©
Five Rights Granted by Copyright The Copyright Act grants five rights to a copyright owner: • The right to reproduce the copyrighted work • The right to prepare derivative works based upon the work • The right to distribute copies of the work to the public • The right to perform the copyrighted work publicly • The right to display the copyrighted work publicly
Proper “Borrowing” OBTAIN PERMISSION if you want to use another’s content Any or all of the owner’s rights may be transferred (through license, sale, operation of law, inheritance, etc.)
– Transfer of Exclusive rights – requires transfer be in writing and signed by the conveying party – Transfer of Non-Exclusive rights – does not require written agreement, although it is recommended
Make Sure You Own It • Contractors
– Work for Hire Agreements – Assignments
• Employees
– Intellectual property provisions in employment contracts
Notice • optional for works after March 1, 1989, but highly recommended • 3 requirements 1. 2. 3.
© or “copyright” Year of first publication Owner name
1. 2.
For myself - ©2012 Courtney M. Dunn For my firm - ©2012 Lowndes, Drosdick, Doster, Kantor, & Reed, P.A.
• Examples:
Contact Info Courtney M. Dunn 407.418.6465
[email protected]
Lowndes, Drosdick, Doster, Kantor & Reed, PA 215 North Eola Drive Orlando, FL 32801 www.lowndes-law.com
