A Short(-ish) Guide to U.S. Copyright and Trademark Law

[Burnt Umber]

Introduction:

 

Intellectual Property (IP) holds a place of personal and professional interest to me.  And, after a number of topics/posts concerning copyright law and trademarks in the forums, I thought I could make something of a reference guide for other players who might have questions on the topic.

 

That said, a few disclaimers:

 

First, I am going to try to keep this guide as legally factual as possible.  I am NOT trying to provide legal advice or opinions.  Rather, I am trying to provide a consolidated and clear guide to publicly available information regarding U.S. IP law.

 

Second, although I am a lawyer, I am NOT your lawyer. I do not know the facts of your circumstances.  I am not representing you, commenting on specifics circumstances, or custom tailoring the information provided.

 

Third, this guide does not overrule a Dev or GM in an argument over whether you are in the right or in the wrong.  Indeed, they may be operating on much better and more specific guidance.

 

With those points in mind let’s get started.

 

Copyright:

 

I. Subject-Matter

 

Copyright is a constitutional right granted under Article 1, Section 8 of the U.S. Constitution, which grants copyright holders the exclusive rights to their works for limited duration.  These rights include making copies, distributing, performing, displaying, or making derivative work(s) of that copyrighted work. 

 

The copyright holder is not only the creator of a copyrightable work but also the employer of that creator (such as a corporation) if the copyrightable work was a “work made for hire.”  A “work made for hire” is, under 15 U.S.C. §101, any work specially ordered or commissioned for use as a contribution to a collective work or as a supplementary work if the parties expressly agree in a written instrument signed by them (i.e., a written contract) that the work shall be considered a work made for hire.  This means that, if an employee of a corporation or an independent contractor for a corporation makes a copyrightable work within the scope of their employment with that corporation, then that corporation is a copyright holder for that work.

 

Currently, a copyright lasts for the lifetime of the author plus an additional 70 years; if the work was a work for hire, then copyright lasts for 120 years after creation or 95 years after publication, whichever is shorter.  After that duration, the copyrighted work enters the public domain and no longer is able to be used exclusively by the copyright holder.

 

Under 15 U.S.C. §102, copyright is given only to “original works of authorship fixed in any tangible medium of expression now know or later developed.”  Copyright does not extend to functional, utilitarian works.  However, the aesthetic part of something is copyrightable if it can be “physically or conceptually” separated from the utilitarian part.  Otherwise, the features are “inextricably intertwined” with the utilitarian function of the article and are not conceptually separable, and thus, not copyrightable. 

 

Moreover, copyright does not extend to ideas themselves but only to their expression.  Under the merger doctrine, a subject matter that can only able to be expressed in a limited number of ways cannot be copyrighted.  Similarly, under the scenes a faire doctrine, scenes or aspects that are indispensable to a type of story or are otherwise standard expressions cannot be copyrighted.  Of particular importance, the court noted the distinction between “stock” characters and “distinct” characters within a creative work.  In Nichols v. Universal Pictures Corp., the court recognized that if every fictional character were copyrightable - regardless of whether that character is fully developed or merely a trope - then copyright protection would operate contrary to its intended purpose by hindering creators from making works of art or literature.  Instead, a copyrightable character must be distinct and specific.  Further, in Warner Bros. Pictures v. Columbia Broadcasting System, the court suggests that a character is copyrightable only if that character is essentially the story being told, and not if that character is just a means for the story to be told.  And, finally, a character having been visually depicted can have some bearing on whether that character is distinctly delineated and, therefore, copyrightable.  In Walt Disney Productions v. Air Pirates, the court granted copyright protection to Disney’s characters (including Mickey Mouse and Donald Duck) because those characters had visual representations that distinguished the characters, noting that “it is difficult to delineate distinctively a literary character . . . [w]hen the author can add a visual image, however, the difficulty is reduced . . . a [visual] character, which has physical as well as conceptual qualities, is more likely to contain some unique elements of expression.”

 

(Sidebar: there’s a good deal of ink (bits?) to be spilled on the topic of a character’s copyrightability since there is not definitive U.S. Supreme Court case on the topic and since many copyright holders have spent a great of money to protect their intellectual property.)

 

II. Infringement & Fair Use

 

Under 15 U.S.C. §106, someone infringes when the (i) work was copied-in-fact and (ii) the copying constitutes improper misappropriation.  Whether a work was “copied-in-fact” is shown through direct evidence - a watermark or the like - or circumstantial evidence - the accessibility of the copyrighted work and the similarity of the infringing work.  Accessibility and similarity counterbalance each other, with more similarity reducing the need for accessibility, and more accessibility reducing the need for similarity.

 

Under the fair use doctrine, however, copyright infringement is allowed so long as it was for a “fair use.”  “Fair use” is codified in 15 U.S.C. §107, and it is evaluated based on four factors:  1) the purpose and character of use, specifically whether for commercial use or for personal, educational, or nonprofit use; 2) the nature of the copyrighted use; 3) the amount or substantiality of the portion used in relation to the whole of the copyrighted work; and 4) the effect of the use upon the potential market for or value of the copyrighted work.  In Harper Row, the Court did not grant “fair use” to a factual news story based on the unpublished work of another because, although only a small portion of the unpublished copyrighted work was used, the “heart” of the unpublished work was used.  However, in Campbell v. Acuff-Rose, the Court allowed the copying of a copyrighted song melody to the extent that the melody was sufficiently “transformative.”

 

 

Trademark:

 

I. Subject-Matter

 

Under the Lanham Act §45, 15 U.S.C. §1127, a “trademark” includes any word or name used by persons in commerce to identify and distinguish their goods, including a unique product, from those manufactured or sold by others as well as to indicate the source of the goods.  A trademark lasts for as long as the trademark is actively used in commerce (hence, the "use it or lose it" concept).

 

Moreover, under Lanham Act §2, 15 U.S.C. §1052(e), a trademark is defined as a mark that is not merely descriptive of the goods upon which it appears.  As described in Qualitex Co., a potential trademark is classified as (i) generic, (ii) descriptive, (iii) suggestive, or (iv) arbitrary or fanciful.

 

A generic trademark is one that connotes the basic nature of a product rather than any individualized characteristic of the product, and such a mark will not receive protection.

 

A descriptive trademark is one that only identifies a specific characteristic or quality of a product, and such a mark ordinarily would not receive protection.  However, even if the trademark is only descriptive, such a mark would receive protection as long as it has acquired a secondary meaning.  A secondary meaning is when the trademark primarily invokes the producer rather than the product in the consuming public.

 

A suggestive trademark is one that suggests - rather than describes - a specific characteristic or quality of a product, and such a mark receives protection.

 

An arbitrary or fanciful trademark is one that bears no relationship with the product to which it is applied, and such a mark will receive protection.

 

A mark is not protectable if it is likely to cause confusion with an existing mark with “priority.”  To establish priority, the owner must either use the trademark in commerce or register the trademark with the U.S. Patent and Trademark Office for the intent to use it in commerce.  The filing of the application, so long as the mark is later accepted and registered, is constructive use, nationwide in effect, to establish priority against similar marks.  The certificate of registration is “prima facie evidence of the validity of the registered mark.”  Registration itself is constructive notice of claim of ownership, and the trademark receives national protection.

 

II.  Infringement

 

Under Lanham Act, 15 U.S.C. § 1114, trademark infringement occurs when the infringing mark appears in commerce despite the infringer knowing that doing so will likely cause confusion among consumers trying to distinguish between the two marks.  Courts evaluate the likelihood of confusion based on the relationship between the goods upon which the marks appear.  When goods are related and compete for sales, courts will usually find infringement if the marks are “sufficiently similar that confusion can be expected.”  But when the goods are totally unrelated, courts will not find infringement because confusion is unlikely.  However, when the goods are related but not clearly competing for sales, courts use a multi-factor test (varying by jurisdiction).    These factors include, among other things:  (i) the strength of the mark; (ii) the similarity between the parties’ marks; (iii) the competitive proximity of the parties’ products; (iv) the potential customers’ likely degree of care; (v) the intent of the infringer to pass off his goods as those of the trademark holder; and (vi) evidence of actual confusion.

 

 

And that's it.  I may edit or add to this as time goes on.  But for now, I hope this helps outline some of the basics of U.S. law regarding copyright and trademark.

[Nyghtmaire]

What, no video? How am I supposed to get my CLE credits?!?!

[Glacier Peak]

That's a lot of words! Good stuff.