Intellectual Property: Copyright and Trademark

by   |  05.29.09  |  Copyright and Trademark, Current Events

By Charles Marler

Intellectual, Artistic, Persona, News and Trade Property Monopolies Summary

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What is the history of the copyright concept?

1. “From the fruit of his mouth a man’s stomach is filled; with the harvest from his lips he is satisfied.” – Prov. 18:20
2. “A wife of noble character who can find? … She sets about her work vigorously …. Give her the reward she has earned, and let her works bring her praise at the city gate.” – Proverbs 31:10ff
3. “For the Scripture says, ‘Do not muzzle the ox while it is treading out the grain,’ and ‘The worker deserves his wages’.” – 1 Timothy 5:18
4. “Food gained by fraud tastes sweet to a man, but he ends up with a mouth full of gravel.” – Proverbs 20:17
5. The first English copyright law was enacted in 1709.
6. “Congress shall have the power … 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.” – U.S. Constitution, Article 1, §8.
7. U.S. laws were enacted in 1790, 1831, 1909 and 1976.
8. U.S. signed Universal Copyright Convention in 1955.

What can be copyrighted?

1. “Original works of authorship
2. “fixed in any tangible medium of expression now known or later developed,
3. “from which they can be perceived, reproduced, or otherwise communicated either directly or with the aid of a machine or device.” – Copyright Act of 1976

What are the steps of protecting an original work?

1. Create a work in a tangible medium (at this point common and statutory protection accrues to creator of work).
2. Affix to the work in location that gives “reasonable notice of claim of copyright” (Copyright © John Doe, 1996).
3. Secure a registration form from the Copyright Office of the Library of Congress.
4. Send two copies of published work, or one copy if unpublished, with proper form and fee to the Copyright Office.

What cannot be copyrighted?

1. Works not in a tangible medium.
2. Titles, names, phrases, slogans, symbols, dingbats, etc.
3. Ideas, procedures, systems, processes, concepts, etc.
4. Works comprising information that is common property.
5. Facts, including news facts.

What are the classes of copyrightable material?

1. Literary works.
2. Musical works, including accompanying words.
3. Dramatic works, including accompanying music.
4. Pantomimes and choreographic works in script form.
5. Pictorial, graphic and sculptural works.
6. Motion pictures and other audiovisual works.
7. Sound recordings.
8. Computer software.

How long are copyrighted works protected?

1. Old system (before 1/1/78): 28 years + 28-year renewal.
2. New system (after 1/1/78): life of creator + 70 years.
3. Combined (created before 1/1/78): 28 + 67 = 95 years.
4. Anonymous or for hire: 95 years from date of creation.
4. Works pass into the public domain or common ownership after period of protection ends to be used by anyone.
5. Versions of public domain works can be copyrighted, but protection extends only to unique portions of new work such as introductions, analyses, notes, commentary, etc.

What is permitted by the Fair Usage Doctrine?

Scholars, journalists, teachers, critics and others can use limited amounts of copyrighted materials under limited conditions of the Fair Usage Doctrine, created by Folsom v. Marsh (1841) and adopted as statute in §107 by Congress (1976). Four tests must be applied to see if a usage is fair:

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

How does a plaintiff prove infringement in court?

The plaintiff must prove three factual points to win an action:

1. Originality of work the plaintiff is seeking to protect.
2. Proof of access to original work by the alleged infringer.
3. Substantial similarity between the compared works.

What are the remedies for copyright infringement?

1. Injunctive relief.
2. Impoundment – and possible destruction.
3. Recovery of actual damages.
4. Minimum-maximum statutory damages are $250-$10,000, or up to $50,000 if willful infringement proved.
5. Costs and fees may be awarded to prevailing party.
6. §506 permits up to $50,000 fines and two years in prison.
7. §506 permits $2,500 fine for fraudulent placement of a copyright notice on a work.

What is unfair competition or misappropriation?

1. News facts are not copyrightable, but news is considered quasi-property under unfair use concept.
2. Costs of reporting gives news medium inherent rights; once transmitted it isn’t only in public domain (INS v. AP).
3. “Bodily appropriation of a statement of fact or a news article with or without rewriting, but without independent investigation or expense” is unfair use (Pottstown).
4. Injunctive relief is available.

What do the leading copyright cases mean?

1. Abstracted copyrighted research reports were “substantial in quality, and … quantity,” not fair use (Wainwright, 1977).
2. Off-air videotaping for private, home use is ” time shifting” and fair usage (Universal Studios Inc. v. Sony, 1984).
3. Excerpts from nonfiction work were substantial and unique, hence not fair usage (Harper & Row v. Nation, 1985).
4. Extensive taking of facts from unpublished letters for historical work is unfair usage (Salinger v. Random House Inc., 1987). Copyright §107 was amended in 1992 to say the “unpublished factor” cannot alone create unfair usage.
5. Works-for-hire doctrine – the copyright belongs to the employer – does not extend to works done under independent contract (Creative Non-Violence v. Reid, 1989).
6. Facts in phone directories can not be protected under copyright or unfair competition (Feist v. Rural Telephone, 1991).
7. Unlicensed rentals of videotapes to motel residents is not protected fair usage (Prof. Real Estate v. Columbia Pictures, 1993).
8. 2 Live Crew parody that took enough of Orbison’s “Oh, Pretty Woman” to suggest the original favors a fair usage finding (Campbell v. Acuff-Rose, 1993)
9. A menu command hierarchy is not copyrightable (Lotus Development Corp. v. Borland International Corp., 1996).
10. Wal-Mart v. Samara Brothers (2000) dealt with trade dress of goods sold by retailers.
11. New York Times v. Tasini (2001) teaches that freelancers retain secondary rights to royalties for Web postings.
12. Eldred v. Ashcroft (2001) tested a copyright amendment.


1. Trademarks are words, names, symbols, slogans, numbers, logos, shapes, devices and sometimes colors used to identify and distinguish products. Service marks for services and trade names for business or enterprises serve the same purpose. All can referred to as “trademarks.”

2. The strongest protection belongs to “arbitrary” or “fanciful” trademarks that communicate convey no informa-tion about a product except for identifying the source, e.g., coined words like “Dreft” and “Kodak.”

3. Next, in protection are “descriptive” marks that merely describe or characterize a product or its functions, e.g., geographic terms or surnames. When these names acquire “secondary meaning,” they can enjoy strong protection.

4. The weakest protection is offered to “generic” marks, e.g., “The Shop,” which usually offer no protection.

5. Search for duplication is advised before use begins.

6. Register your trademark with the appropriate governmental agency. Under federal law, register a trademark if you are using it, or intend to use it. In the latter case, application must note a bona fide intention to use the mark in commerce

7. Application is published in the U.S. Patent and Trademark Office Official Gazette.

8. If no “Notice of Opposition” is received about an application, registration will be issued.

9. Federal trademark registration is evidence in litigation of (a) validity of registration, (b) ownership of mark, and (c) exclusive right to use mark on specific goods.

10. States also have registration and protection systems.

11. Protection continues as long as mark usage is continued; abandonment will result in loss of registration.

12. “Likelihood of confusion” is central in trademark dis-pute. Factors that can enter the issue are: (a) “strength” of plaintiff’s mark, (b) marks’ degree of similarity, (c) whether products compete, (d) likelihood plaintiff may enter defen-dant’s market, (e) consumers’ sophistication, (f) quality of defendant’s product, (g) existence of actual confusion, and (h) defendant’s “bad faith” in using mark.