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  • CONTRACT FUNDAMENTALS FOR PRODUCERS


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  • OVERVIEW OF MINORS’ CONTRACTS IN THE ENTERTAINMENT INDUSTRY

    Issues relating to minors’ contracts are becoming increasingly important, as more and more young people under the age of 18 are being employed in the entertainment industry. How does the law address the contracts minors enter into? It is important to note that the majority of entertainment industry contracts are formed in the jurisdictions of California and New York. This blog will discuss the enforceability of minors’ contracts in the California jurisdiction.

    WHAT IS THE LAW GOVERNING MINORS’ CONTRACTS?

    Generally, a minor does not have the capacity to bind himself or herself by contract. The minor may void his contracts at any time at his election until the beginning of the day before the minor’s eighteenth birthday. The reasoning is that minors do not have sufficient capacity to understand questions involving contractual rights. Consequently, any person dealing with a minor does so at the mercy of the minor’s right to void the contract. Approval of a contract by the parent or guardian of a minor does not bind the minor.

    While common law held that beneficial contracts are binding on minors and prejudicial contracts are void, the law today simply views a minor’s contract as voidable by the minor, regardless of the contract’s merit.

    The only exception to a minor’s right to disaffirm a contract is when a contract provides the minor with necessities for life, pursuant to California Family Code section 6712:

    A contract, otherwise valid, entered into during minority, may not be disaffirmed on that ground either during the actual minority of the person entering into the contract, or at any time thereafter, if all of the following requirements are satisfied:

    1. The contract is to pay the reasonable value of things necessary for the support of the minor or the minor’s family;
    2. These things have actually furnished to the minor or the minor’s family
    3. The contract is entered into by the minor when not under care of a parent or guardian able to provide for the minor or the minor’s family.

    THE MINOR EMPLOYEE

    The capacity of a minor to enter into an enforceable contract is determined by the governing law where the contract is made, or by the law of a different place intended by the parties to govern. Most contracts for minors in the entertainment industry seek to employ them. However, the minor’s right to disaffirm contracts causes significant problems in the entertainment industry. In order for the industry to utilize the massive number of substantial contracts with minors, there must be certainty in contractual rights. To solve this problem, California has passed legislation providing protections for both industry and minor performers. Employment contracts and their disaffirmance are precluded upon judicial approval of the contract. See California Family Code section 6751, which states:

    (a) A contract, otherwise valid, of a type described in Section 6750, entered into during minority, cannot be disaffirmed on that ground either during the minority of the person entering into the contract, or at any time thereafter, if the contract has been approved by the superior court in any county in which the minor resides or is employed or in which any party to the contract has its principal office in this state for the transaction of business.

    (b) Approval of the court may be given on petition of any party to the contract, after such reasonable notice to all other parties to the contract as is fixed by the court, with opportunity to such other parties to appear and be heard.

    (c) Approval of the court given under this section extends to the whole of the contract and all of its terms and provisions, including, but not limited to, any optional or conditional provisions contained in the contract for extension, prolongation, or termination of the term of the contract.

    (d) For the purposes of any proceeding under this chapter, a parent or legal guardian, as the case may be, entitled to the physical custody, care, and control of the minor at the time of the proceeding shall be considered the minor’s guardian ad litem for the proceeding, unless the court shall determine that appointment of a different individual as guardian ad litem is required in the best interests of the minor.

    COURT APPROVAL

    In California, the procedure for court approval of a minor’s contracts involves either the employer or the minor petitioning the superior court in the appropriate county. The appropriate county is either where the minor resides or is employed, or where either party to the contract maintains a principal business office.

    The court may then approve the contract upon petition after notice to the other party and an “opportunity to such other parties to appear and be heard.” See California Family Code section 6751(a) and (b). The infant may appear by affidavit.

    A parental agreement providing written assent to the contract by the parent or guardian is not required in California prior to confirmation. Such an agreement will be accepted by the court but is not necessary and outside of the court’s authority to confirm.

    To approve the minor’s contract in California, the only parties to the proceeding are the employer and the employee.

    A copy of the contract must be attached to the petition. It is important to note that pursuant to California Labor Code section 2855, the term of a personal service contract may not exceed seven years.

    EARNINGS

    The Coogan Law, which is encompassed in the California Family Code and California Labor Code, requires that 15 percent of a minor’s gross earning, which is the total compensation payable to the minor under the contract, be set aside by the minor’s employer in trust in a “blocked account” located in California. For the benefit of the minor, the earnings are to be preserved until the minor reaches the age of 18 or is declared emancipated by the courts. The parent or guardian may request that more than 15 percent be set aside. It is important to note that net earnings are all the sums remaining from the minor’s gross earnings after payment of taxes, reasonable support maintenance, training, agency fees, manager fees, commissions, and attorney fees. Moreover, if the minor is employed or agrees to provide services as a musician, singer, songwriter, musical producer, or arranger only, the minor’s gross earnings will include any advances but will exclude the deductions to offset the advance or expenses incurred by the employer. See California Family Code section 6750(c)(1).

    This established trust also increases a minor’s control over his own earnings in cases where their contracts are not reviewed by a court. The law covers all minors’ contracts, not solely those approved by the court. In addition, if the services of the minor are being offered through a “loan-out company,” the contracting party is still considered the employer of the minor subject to the California requirements.

    Within ten business days of commencing employment, trustee(s) of the funds ordered to be set aside must supply a photocopy of the trustee’s statement to the minor’s employer, and the employer must provide written acknowledgement of such receipt.

    Within fifteen business days of receiving the trustee’s statement, the minor’s birth certificate, and a certified copy of the court’s appointment of guardianship if necessary, the employer must deposit 15 percent of the minor’s gross earnings to the trust along with a copy of the minor’s birth certificate.

    Any employment permits issued to the minor will be void after ten business days from the date it was granted unless the the trustee’s statement is attached. The permit will then be valid for six months.

    If the parent or guardian fails to establish a trust or if the trustee fails to supply the employers with the required documentation, the employer then must forward 15 percent of the minor’s gross earnings pursuant to the contract to the Actor’s Fund of America (AFA). The AFA will become the minor’s trustee and the employer will no longer have the obligation to account for the funds.

    PARENTAL LIABILITY AND REVOCATION OF APPROVAL

    In California, there are no express statutory provisions addressing whether the minor’s parent is liable under the contract or if the parent may revoke the court’s approval of the minor’s contract. However, California courts have determined that a parent’s signature on the contract may be sufficient to impose parental liability, even in the face of written disaffirmance by the minor during minority. See Raden vs. Laurie, 120 Cal. App. 2d 778 (1953) ; Waisbren vs. Peppercorn Prods., Inc. 41 Cal. App. 4th 246 (1996). Furthermore, California courts would have the inherent jurisdiction to revoke the approval of the minor’s contract on the basis that the court finds the well-being of the minor is impaired by the contract.

    THE MINOR EMPLOYER

    In California, the same statutory authorization, jurisdictional rules, and procedures for court approval that apply to contracts pursuant to which the minor is an employee also apply to contracts entered into by a minor who is an employer in which another party will render services to or for the minor.

    As the minor is acting as an employer, not employee, a trust need not be established; however, a limited guardian must still be appointed to protect the minor as the minor lacks legal capacity to fully bind himself to the contract.

    INTELLECTUAL PROPERTY RIGHTS

    Entertainment contracts often require the minor to transfer intellectual property rights. California’s disaffirmance statute expressly applies to contracts for the transfer of such rights. According to California Family Code section 6750(a)(2), the California disaffirmance statute also applies to contracts “pursuant to which a minor agrees to purchase, or otherwise secure, sell, lease, license, or otherwise dispose of literary, musical, or dramatic properties, or use of a person’s likeness, voice recording, performance, or story of or incidents in his or her life, either tangible or intangible, or any rights therein for use in motion pictures, television, the production of sound recordings in any format now known or hereafter devised, the legitimate or living stage, or otherwise in the entertainment field.”

    As a practical matter, issues involving the minor’s transfer of a copyright can be completely avoided, merely by contracting with the minor on a “work for hire” basis.

    LABOR LAWS

    In some states, minor entertainers are partially or completely exempted from the applicable labor laws. It is important to consult the labor laws of the relevant states to determine which state’s laws apply and what they require. In California, minors seeking employment in the entertainment industry must obtain an Entertainment Work Permit, which can be obtained through any of the local California Division of Labor’s District offices. The minor must obtain, among other requirements, written verification from the appropriate school district that the minor has satisfied certain district requirements, including age, school record, attendance, and health. The verification must also be filed at the same time as the application for Entertainment Work Permit. The permit will then be valid for only six months and the minor must reapply for renewal in the same manner as for the original permit.

    California provides comprehensive regulation in the California Administrative Code, Title 8, sections 11750 to 11765, which discuss the work conditions, work hours, travel time, work time, meal periods, education of minors while working in the entertainment industry, including the studio’s responsibility to provide teachers, the applicability of California’s labor laws when conducting work out of the state, and the parent’s or guardian’s presence on location. In addition, the unions in California, such as the Screen Actors Guild (SAG) and the American Federation of Television and Radio Artists (AFTRA), have also adopted their own regulations that apply to minors.

    CONCLUSION

    With the growth of minors’ employment in the entertainment industry, the law governing their employment is significantly more important. Accordingly, it is important to work with an attorney familiar with these laws and regulations.


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  • LEGAL ISSUES INVOLVED IN TELLING TRUE STORIES

    This publication addresses “Legal Issues in Telling True Stories” which includes books, films, and series that might be bio pics, or autobiographical, or based on news stories. These things get made all the time, but often people do not know that there are significant legal issues involved.


     

    QUESTION: If I want to talk about John Kennedy having Marilyn Monroe as a mistress, or talk about what life in my family was like growing up, don’t I have a right to do that? (Rights other people have to privacy, to control the exploitation of their name, to defend against libel, etc.)

    Yes. However, it is a balancing between the filmmaker’s or author’s First Amendment Freedom of Speech and the subject’s individual rights. Everyone has the right to not have their reputation defamed. And everyone has a right to privacy – the right to not have your personal matters intruded upon. People also have the right to not have their name or image exploited for commercial profit without their consent. This is known as their right of publicity. The legal issues involved are: (1) Defamation; (2) Right to Privacy; and (3) Right of Publicity.

    DEFAMATION

    Defamation is the unprivileged publication of a false statement of fact that injures another’s reputation. Defamation is a communication that harms the reputation of another so as to lower him in the opinion of the community or to deter third persons from associating or dealing with him. For example, those communications that expose another to hatred, ridicule or contempt, or reflect unfavorably upon one’s personal morality or integrity are defamatory. One who is defamed may suffer embarrassment and humiliation, as well as economic damages, such as the loss of a job or the ability to earn a living.

    There must be a balance of interests between protecting an individual’s personal reputation and the freedom of speech. The elements for the cause of action include: (1) False statement about the plaintiff; (2) Publication of the statement to a third person who understands the meaning of the statement; (3) Fault on the part of the defendant (which may be intentional, reckless, or negligent) in regard to falsity; and (4) Actual or presumed damages suffered by the plaintiff. Because of the fault element, there are significant limitations on the ability of public officials and public figures to win defamation actions because they have obtained the status of a person who can be commented upon in society, the plaintiff must show actual malice.

    False Statement of Fact

    In order for a statement to be considered defamation, it must be a false statement of fact. There must be a distinction from statements of opinion. Statements that do not consist of facts, but rather are merely the views of the person making the statement, do not qualify as defamation. The First Amendment to the Constitution protects freedom of expression. Statements of opinion are privileged speech and are not actionable as defamation.

    Fact vs. Opinion

    Whether an alleged defamatory statement is an opinion or an assertion of fact is a question of law to be decided by the Court.

    To discern whether a statement is one of fact or opinion, the Courts have established tests. The “Contextual Test,” also referred to as “Totality of the Circumstances Test”, considers the following factors in determining whether an alleged statement is constitutionally privileged: (1) The content and form of the communication taken in its totality; (2) The circumstances surrounding the communication; (3) The ordinary meaning of the words that make up the communication; (4) The likely and reasonably understandable interpretation of the words; and (5) The extent to which the words can be proved false or true by objective evidence.

    INVASION OF PRIVACY

    The right of privacy is based on an individual’s reasonable expectation to be left alone. The right of privacy is not absolute. Again, there is a balance with the First Amendment Freedom of Speech. Newsworthy events and statements are not protected by privacy unless they are disseminated with actual malice. A matter is considered “newsworthy” if it is a legitimate concern to the general public. In addition, injury to an individual’s reputation is not required to pursue a claim for invasion of privacy. Also, truth is not a defense to invasion of privacy. True statements may be the basis for invading a person’s privacy. Likewise, matters of public record are not considered private. If a person voluntarily reveals private facts to others, they are no longer considered private and the individual has consented to its dissemination.

    There are specific legal causes of action for the violation of an individual’s right of privacy. These include: (1) Public Disclosure of Private Facts; (2) Intrusion into Seclusion and Private Matters; (3) Misappropriation of Person’s Name or Likeness; and (4) Portraying a Person in a False Light.

    (1) Public Disclosure of Private Facts

    In order to recover for a cause of action of public disclosure of private facts, the matters revealed to the public must be highly offensive to the reasonable person and the matter must not be newsworthy.

    (2) Intrusion into Seclusion

    In order to recover for a cause of action of intrusion into a person’s seclusion, solitude, or private affairs, the matters revealed must be obtained through an unwarranted means, such as nonconsensual videotaping or recording. There are two required elements: (1) An intrusion into a private place, conversation, or matter, and (2) Which is done in a manner highly offensive to a reasonable person. There must be an objectively reasonable expectation of seclusion or solitude in the invaded place or conversation.

    (3) Misappropriation of Name or Likeness

    A cause of action for misappropriation of an individual’s name, voice, photograph, or likeness is similar to a violation of an individual’s right of publicity. Misappropriation compensates the individual for the emotional distress suffered when someone uses your name or likeness for publicity without consent. The right of publicity compensates the individual for the commercial value in exploiting their name or likeness, and is generally maintained by celebrities who perform publicly for a living. Again, this cause of action is balanced against the First Amendment Freedom of Speech. If an individual is involved in a newsworthy event, the person cannot recover for misappropriation.

    The right of privacy ordinarily does not survive a person’s death. However, pursuant to the California Civil Code a statutory cause of action is available for the misappropriation of a deceased celebrity’s image.

    (4) False Light

    The cause of action for portraying a person in a false light to the public is similar to defamation. However, the plaintiff does not need to prove harm to his or her reputation. Rather, all that is needed to show is the portrayal is highly offensive to the reasonable person, and may expose the person to hatred, contempt, or ridicule in the public eye.

    For an unflattering fictionalized story based on an individual, there must be great care in not portraying that person in a false light. Since the story is fiction, it is known to the creator that the statements are not true and a Court may consider the story to be published with actual malice.

    Moreover, photographs are not actionable if they are fair and accurate depictions of the person, even if they are unflattering.

    THE RIGHT OF PUBLICITY

    The right of publicity is the right of an individual to commercially profit from their own name or likeness. The nonconsensual use of another’s name or likeness for commercial gain is prohibited. However, the right of publicity is generally only limited to celebrities who earn significant fees from performing publicly or by endorsing products.

    There must be a balance with the First Amendment Freedom of Speech. A celebrity by virtue of their notoriety in the public is newsworthy and can be commented upon. Newspapers, magazines, books, movies, plays are expressions of speech protected by the First Amendment. By placing a celebrity’s image on such a product, there must be a balancing of the First Amendment against publicity rights. The nonconsensual use of a celebrity’s image may be used based on Freedom of Speech. When balancing rights, the First Amendment is generally paramount but not absolute. The seller of the product must be making a statement or expressing an opinion about the celebrity – there must be commentary, rather than solely exploiting the name and likeness of the celebrity. In such a situation, there is no competing First Amendment concerns, and the right of publicity will prevent the unauthorized use of the celebrity’s likeness.

    California Civil Code section 990 provides that the right of publicity survives the death of a celebrity for products, merchandise and goods, but does not survive for books, plays, television and movies. The heirs of the celebrity can enforce the right of publicity for up to 70 years after death.


     

    QUESTION: So other people have rights that have to be protected, but people do tell these stories all the time. Sometimes the stories say Person X killed Person Y, or Person A had an affair with Person B that destroyed a family. How do these people get away with doing these really non-complimentary stories? (Matters of public record, purchasing life rights, etc.)

    MATTERS OF PUBLIC RECORD

    There is no invasion of the plaintiff’s right of privacy if the disclosure concerns matters about him or her that are of public record and open to public inspection. There is no liability when the defendant merely gives further publicity to information about the plaintiff which is already public or when the further publicity relates to matters which the plaintiff leaves open to the public eye.

    THE ABSOLUTE DEFENSE OF TRUTH

    Truth is an absolute defense to an allegation of defamation, even if the statement was published with the intention of bad faith, malice, or ill will. Truth is an absolute privilege. If the statement is true, it does not qualify as defamation. However, in some circumstances, the burden to prove truth rests with the person publishing the allegedly defamatory statement.

    FIRST AMENDMENT FREE SPEECH FAIR COMMENT

    The right to comment and criticize is considered Free Speech. However, the privilege to comment upon another is not absolute. The statement must be about a newsworthy person or event and cannot be made with bad faith or abuse. Public figures, celebrities, and public officials have a higher burden in order to prevail in a defamation action in that they must prove not only is the statement false but that the statement was also made with “actual malice.” Actual malice means that the person publishing the statement intentionally defamed another or acted with reckless disregard for the truth. Negligence on the part of the person making the statement is not enough to create liability when the subject is a public figure.

    PURCHASING LIFE RIGHTS

    When purchasing the rights to make a story about another’s life, it is actually a waiver from the party who may assert claims against you. For instance, you will want to be protected against lawsuits for potential defamation, invasion of privacy, and violation of the individual’s right of publicity. In the life story rights agreement, you may also negotiate the ability to consult with the individual’s family members or heirs and have access to information in their possession.

    However, if the subject of a life story is deceased, the need for a waiver of claims is less significant since the causes of action for defamation and invasion of privacy do not survive the death of the individual. However, the right of publicity may or may not descend to individual’s heirs, depending on the particular state law that will have jurisdiction over the matter.

    In addition, public figures must meet the higher burden of proof to establish defamation or invasion of privacy. They must prove that the person making the statement acted with actual malice – that is, intent and knowledge of its falsity or reckless disregard of the truth.

    Terms of the Life Story Rights Agreement

    (1) Extent of the Rights:

    Whether the agreement will include creating remakes, sequels, television series, merchandising, novelization, live-stage rights and radio rights; whether the story is limited to only a particular time period of the individual’s life; and whether the rights worldwide or limited in geography. Typically, the buyer of the rights will want as broad a grant as possible, whereas the seller may insist on retaining or limiting certain rights.

    (2) Releases of Third Parties:

    If other individuals are also portrayed in the project, those parties will need to release potential claims as well. These parties may include the subject’s spouse, children, friends and relatives. Many times, these “secondary characters” may have to be fictionalized if releases cannot be obtained.

    (3) Assignment of Rights:

    If the buyer of the life story will need to obtain financing, the rights may need to be assigned to a studio, a production company, or a network as part of a financing/distribution agreement.

    (4) Option/Purchase:

    The life story agreement may be an option/purchase deal or an outright sale, oftentimes with a reversion clause included. A reversion clause means that if the rights are not exploited and the film is not made within a certain number of years, then all rights would revert back to the subject so that he can resell the right to make his or her life story to another producer.

    (5) Consideration:

    A required element for any contract agreement is the reciprocal bargained for exchange which is known as consideration. This is usually an amount of money, but it can also be anything of value including mutual promises. Courts of law will not make judgement on value so long as it is more than a mere sham. To satisfy the consideration requirement and to establish an exchange of value, contracts usually recite provisions such as “For one dollar and other valuable consideration…” The amount of consideration must actually be paid and have supporting evidence such as a copy of the check for proof of payment. Compensation to the individual for their life story rights may include a flat fee amount, percentage of the projects net profits, additional consulting fees, and other types of negotiated bonuses to be paid as the film is exploited in different markets.

    (6) Warranties:

    Certain promises must be made in the life story agreement. These are known as the warranties. The seller of the life story must warrant to the buyer that they will not sue for violation of their right of publicity, invasion of privacy, or defamation.

    (7) Creative Rights:

    The buyer of the life story must have the ability to embellish, fictionalize, dramatize, and adapt the story. This is important so that the filmmaker can attract the audience with an interesting story. Many times the individual granting the life story rights may insist on script approval, however the producer will never agree to granting final approval of the script. Rather, the individual may be allowed to have approval over the treatment or in selecting the writer of the script. The producer may also allow the individual to serve as a creative consultant to the project, even so the director will not be required to accept the individual’s suggestions. In addition, the time period portrayed of the individual’s life can be strictly limited. The individual may also have the ability to determine if the actual names of characters are used and what the screen notice attached to the project will be, such as whether the film will be billed as a “True Story” or a “Dramatization.”


     

    QUESTION: If I want to tell a true story, what should I do first, second, third…. (Consult with an experienced entertainment Attorney before you write the story if you are the writer and before you produce the project if they are a producer. Errors and Omissions Insurance will be needed in order to distribute a biopic/based on a true story. Without that protection, oftentimes distributors will not get involved with the project.)

    Steps you can take to avoid liability from subjects portrayed in your script or film, include:

    (1) Obtain Releases:

    Even if it may not be legally required, it is best to obtain a release from anyone or anything portrayed in the story including family members, third parties, locations, etc. The key is to create a paper trail to cover your project.

    (2) Depiction Releases:

    Written releases are required from all persons who are recognizable or whose name, image or likeness is used, especially for private individuals who are not public figures and are still alive. Moreover, if such a person is a minor, the release should be binding which may require Court approval. If a subject is deceased, a release usually is not needed but may be required in some circumstances. Releases are not needed if the recognizable person is part of a crowd or background shot and is not shown for more than a few seconds or given special emphasis. Nonetheless, it is best to obtain as many releases as possible.

    (3) Content of the Release:

    A sufficient release should: (a) Give the right to edit and modify material; (b) Give the right to fictionalize the people portrayed; and (c) Give the right to market production in all media and markets.

    (4) Consider Fictionalization:

    If proper releases cannot be obtained, consider changing the identity, names, and location of the people and places portrayed so that they are not identifiable to any living person by the general public.

    (5) Include a Disclaimer:

    Add an express disclaimer stating that the characters are fictional and any resemblance to any individual is by coincidence.

    (6) Maintain Script Annotations and Evidence of Sources:

    Maintain all evidence to prove that any alleged defamatory statements are in fact true and to defend against any allegations of invasion of privacy. The script must be annotated by identifying the sources of the information contained in the project. The elements that should be annotated include characters, events, settings, and dialogue. The annotations are typically included in the margins of the script or in footnotes and endnotes. Annotations of characters include: (a) whether the character is real, fictionalized, or a composite; (b) whether the actual person is living or deceased; and (c) for composite characters, what is the actual name of the person and what characteristics the character is based. Annotations of scenes include: Whether the scene is based on fact, inference from actual facts; What is the source of the information, including books (stating the book’s title, author, publisher, and pages), newspaper or magazine articles (stating the title, author, publisher, and page), internet sites (stating the author, title, and web address, and date work first appeared if possible), radio or television interviews (stating date of broadcast, station, name of interviewer, and the program name), other interviews stating the name of the interviewee, if notes or recordings exist, transcript page number), deposition or Court transcripts (stating the Court and case number, date, the name of the deponent, and transcript page)

    (7) Script Clearance:

    An Attorney may be required to provide an opinion as to any potential liability before the script goes into production. Many insurance carriers will require an Attorney’s opinion before offering an insurance policy to cover the work.

    (8) Errors and Omissions Insurance:

    The production company must obtain an Errors and Omissions (E & O) Insurance policy. All potentially liable parties should be named as additional insureds in the policy.


     

    QUESTION: Let’s say I have decided that I want to fictionalize my piece, or say it is fiction, can I do that? So my story is about Monroe and Kennedy, but I give them different names. Or I change the story I tell about my family. Am I “safe” then? (Recognizable characters)

    FICTIONAL CHARACTERS

    In order to avoid liability or if releases cannot be obtained, the author or filmmaker should consider fictionalizing a true story by changing the names of individuals, the locations, and other characteristics so that the real-life people and places are not recognizable to the public. However, audience attraction may be put at risk because the fictional story will lose the appeal of a true story.

    An author or filmmaker may use fictional characters in their works. The author is under no duty to address the possibility that someone may identify with the fictional characters. However, a disclaimer in a fictional work is a relevant factor in determining the defamatory nature of the work. But the disclaimer is not a dispositive factor, and the work may still be considered defamatory if other factors are present. A disclaimer should state that any resemblance of the fictional characters to actual persons is purely accidental.

    When a person attempts to show the similarities and resemblance of the supposedly fictional character, the test is whether the third party recipient could reasonably believe that the character is a portrayal of the plaintiff. The jury will be required to make a comparison between the plaintiff’s characteristics and that of the fictionalized character.

    Moreover, celebrities, public figures, and certain events can be fairly commented upon if they are considered newsworthy. Public figures also have a higher standard to meet in establishing defamation and invasion of privacy.

    In addition, if the fictional character is drawn from another literary work, you may be infringing that author’s copyright. Exceptions would include if the literary work is considered public domain or if the doctrine of fair use is applicable. If you use the name of a character from another literary work, you may be liable for trademark infringement or unfair competition.


     

    EXPERIENCED ENTERTAINMENT ATTORNEY

    The Sterling Firm’s Entertainment Law practice represents clients in all areas of the entertainment industry including film, television, music, stage, and publishing.  If you have any legal issues involved in the entertainment industries, contact The Sterling Firm at (310) 498-2750 or email Info@TheSterlingFirm.com to speak with an experienced Entertainment Attorney.  


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  • PURPOSE OF TRADEMARK LAW

    I. PURPOSE OF TRADEMARK LAW

    Trademark is defined as a distinctive mark, signature, or device, affixed to an article or to its wrapper, package, or container, to show that it is marketed, manufactured, grown, or selected by a particular person, firm, or corporation. A Trademark is an insignia, which serves as a guarantee that the product is authentic and genuine, and that the product is made with the same degree of quality as other products with the same insignia. The rationale of trademark law is to protect the symbol used to identify a particular manufacturer or seller’s products or services and distinguish them from the products or services of another. No person should be able to unfairly use, compete, or trade on the reputation of another – you should be able to trade only on one’s own reputation. Trademark law protects commercial identity and protects the consuming public by allowing them to easily identify the source of goods and services. As a result, trademark law reduces the customer’s costs of shopping and making purchase decisions, and at the same time trademark law encourages the production of quality goods.

    Trademarks serve three basic functions:

    (1) Indicate the source or origin of a product;
    (2) Guarantee that the product is of the same quality as other products with the same trademark; and
    (3) Distinguish the goods or services from other manufacturers or providers.


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  • TYPES OF TRADEMARKS

    A. TYPES OF TRADEMARKS

    Trademarks should be dramatic. It should stand out because you will have a better chance of it being protected. A Trademark concerns a sale of goods, a Service Mark concerns the sale of services. There are not much differences and they are used interchangeably. There is also a Certification Mark which identifies the authoritative entity which certifies a particular good. There is also Collective Membership Marks, which is a type of trademark used by members of a collective, association, or other organization to indicate membership and to distinguish the goods and services of members from those of non-members.

    B. WHAT IS A TRADEMARK?

    Trademarks are symbols. The symbols can be words (i.e. word marks), slogans, phrases, logos (i.e. design mark, such as the NBC peacock symbol), font-style (i.e. the Coca-Cola lettering), scents, packaging, sounds (i.e. the MGM lion roar), a series of musical notes, or even a color scheme. Protection is afforded to the source of the good, not the good itself. A trademark represents business reputation, goodwill, and brand identity. Trademark law provides incentive to businesses to invest in the quality of their goods.

    The language of the Lanham Act, also known as the Trademark Act, the Federal law regulating trademarks, states that trademarks include: “any word, name, symbol, or device, or any combination thereof.” The definition is therefore not restrictive and covers almost anything that is capable of carrying meaning.

    C. WHAT IS NOT A TRADEMARK
    Many “names” do not qualify as trademarks because they do not properly indicate the source of a good or service.

    1. DOMAIN NAMES ARE NOT TRADEMARKS

    The use of a domain name to identify a web address is not a trademark. Moreover, registration of a domain name on an accredited registrar does not give you any legal rights. In fact, the registered domain name may be required to be surrendered if it infringes on a trademark.

    2. BUSINESS NAMES ARE NOT TRADEMARKS

    The use of business name does not qualify as a trademark. In fact, despite filing your business with the Secretary of State, the use of the business name may be prevented if it is found to likely cause confusion with an existing trademark.

    3. ORNAMENTAL DESIGNS ARE NOT TRADEMARKS

    A design being used in a purely ornamental or decorative manner is not protected as a trademark. For example, use of a design on the front of a t-shirt has not traditionally been protected as a trademark. However, if the design on the t-shirt is recognized as a mark of another source, such as a television show, then the use may be considered as a trademark. Another example is the Nike Swoosh – it depends on how the mark is marketed. Nike does not always depict the mark on the front of the t-shirt but rather as a logo on the product. Even more, public perception is very important – it is all about how the public perceives the mark.

    4. PRODUCT FEATURES ARE PROTECTED BY TRADE DRESS

    Identifying features of a product are protectable if they do not present an unfair competitive advantage. Product features are generally protected under “trade dress,” which allows for protection if the consumers associate the specific feature with the particular manufacturer rather than with the product in general. For example, the Listerine container is protected by trade dress.

    5. FUNCTIONALITY IS NOT PROTECTED BY TRADE DRESS OR TRADEMARK

    However, the feature will not be protected if it serves a functional purpose because such protection would present an unfair competitive advantage to the particular manufacturer. For example, if the product feature allows for functionality of the product, such as easier handling or storing, then the feature will not be protected by trademark or trade dress. Also, a scent cannot be trademarked if it is a function of the good you are selling, such as a perfume.

    II. TRADEMARKS MUST BE DISTINCTIVE

    When selecting a trademark, the key characteristic is its distinctiveness. The most distinctive marks are fanciful, the next distinctive mark is arbitrary, then suggestive, descriptive, and lastly generic. Coined, arbitrary, fanciful, and suggestive marks are considered “inherently distinctive marks” and are registered on the Principal Register, the primary register of trademarks maintained by the United States Patent and Trademark Office (USPTO). The Courts group marks into four categories based on the relationship between the mark and its product. Some marks are afforded more potent rights and therefore more protection.

    The four categories of trademarks, from the strongest to the weakest in terms of being distinctive and protected, are:

    (1) Arbitrary and Fanciful (Strongest);
    (2) Suggestive (Medium);
    (3) Descriptive (Weak); and
    (4) Generic (No Protection).

    A. ARBITRARY OR FANCIFUL MARKS

    A fanciful mark is an invented word with no dictionary meaning. They consist of coined terms. For example, the marks “Exxon,” “Kodak,” “Polaroid,” “Starbucks,” “Xerox,” and “Haagen Daz.” They bear no relationship to their underlying product which are respectively gasoline, cameras, coffee, copy machines, and ice cream.

    An arbitrary mark also bears no relationship to its product. For example, “Apple” for computers, or “Banana” for tires, or “All-State” for insurance, or the Nike Swoosh for sports apparel.

    Arbitrary and fanciful marks are inherently distinctive and are given a very high level of protection under trademark law. They are prima facie registrable.

    B. SUGGESTIVE MARKS

    A suggestive mark refers to a particular characteristic of the underlying product. But it does not specifically describe the good. Rather, it is subtle. The consumer must exercise his or her imagination to understand the reference. Suggestive marks are considered distinctive and are given protection. For example, “Whirlpool” washing machines, “Coppertone” suntan lotion, and “Ivory” soap.

    C. DESCRIPTIVE MARKS

    Descriptive marks directly describe the product, or some important characteristic of the product. For example, a depiction of a television for a “television repair service.” Descriptive marks are initially not protectable. Describing the nature or quality of the good is not protectable, unless it acquires a secondary meaning. As a practical note, in order to make a descriptive mark distinctive, it is possible to give the mark a distinctive type font and register it as a design logo by submitting a Special Form Mark drawing.

    D. DESCRIPTIVE MARKS MUST HAVE SECONDARY MEANINGS TO BE PROTECTED

    Secondary meaning is when the public perceives the mark as a trademark rather than its primary meaning. A common example is the mark “Holiday Inn.” The mark must be thought of as a brand and not as a descriptive word. The public must associate the mark with a particular company and not the product in general. The test is for whether the mark has acquired secondary meaning is: Does the consuming public primarily associate the mark with a particular producer, rather than the underlying product? The Court will base the determination of secondary meaning on factors:

    (1) Amount and manner of advertising;
    (2) Volume of sales;
    (3) Length and manner of the mark’s use (generally extensive use in commerce over a five (5) year period); and
    (4) Results of consumer surveys.

    Where the Defendant seeks to justify the use of a common word by the argument that he needs it to describe the particular product, Courts have developed a test to determine whether there is an “unnecessary use” by the Defendant. The concept of necessity is evoked not as a standard of legality, but rather as a test for an illegal intent. If there is no real necessity for the use of a particular term, because there are others of equal effect and in common use, or if the Defendant cannot offer a reasonable explanation for the particular usage, then a strong presumption that an intent to unfairly compete exists. The Defendant bears the burden to justify the use.

    E. GENERIC MARKS

    A generic mark describes the general category of the product. Generic marks are entitled no protection whatsoever under trademark law. For example, the mark “Apple” could not be used to identify apples as a product. No producer is entitled to have the exclusive right to use a generic term. Furthermore, in some circumstances, an original term can become generic over time through a process referred to as “genericity.”


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  • FAIR USE OF COPYRIGHTED MATERIAL

    ORIGINAL FACTORS FOR FAIR USE

    Dating back to the 1800’s, the original factors for determining when a person could use another’s work in their own work without permission included: the nature and objects of the copyrighted work used, the quantity and value of the portions of the copyrighted work used, and the degree in which the new work would adversely impact the market for the underlying copyrighted work used (that is, would the new work adversely impact the underlying copyrighted work’s sales, profits, or purpose).

    EQUITY AND FAIRNESS DETERMINED ON A CASE-BY-CASE BASIS FOR FAIR USE

    Today, Court’s look to four factors to decide whether Fair Use is applicable. The factors are described in Section 107 of the Copyright Act. However, the Copyright Act allows the Courts to decide the application of Fair Use on a case-by-case basis. This is because Fair Use is based on equity. Fair Use is considered a form of equitable relief and an equitable defense to a claim of infringement. In the United States there are two jurisdictions that the Courts administer – Courts of Law and Courts of Equity. Simply put, equity is based on what is fair and reasonable when there is no legal statutory authority controlling the factual situation. Equitable relief permits the Court to order a party to do or not do something. In this type of factual situation, it is important that the party seeking equity have clean hands and show good faith and fair dealing. Therefore, each case falls on its own facts and there is no bright-line rule.

    THE FOUR FACTORS FOR FAIR USE IN SECTION 107 OF THE COPYRIGHT ACT

    Section 107 of the Copyright Act balances copyright law with the First Amendment right to freedom of expression. Section 107 lays out the balancing factors to be considered. Section 107 is titled “Limitations on exclusive rights: Fair Use” and states:

    “[T]he 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.”

    Again, there is no bright-line rule and each case is determined based on its own facts – a case-by-case basis. There is no exhaustive list of the uses of copyrighted work that are always allowed pursuant to the Fair Use doctrine. Rather, the U.S. Supreme Court has made it clear that all factors must be considered in any given case.

    PURPOSE OF THE FAIR USE DOCTRINE

    Fair Use does not allow you to steal other people’s creative works. Rather, the purpose and rationale of the Fair Use doctrine is to promote creativity – to allow people to make more original creations. Fair Use is a limit to the exclusivity of the rights belonging to a copyright owner. Material from a copyrighted work can be used without the permission of the copyright owner if that material is simply a component, an ingredient, an element of a new original creative work as a whole. The underlying copyrighted work used cannot be the focus or the purpose of the new work. Instead, the new work must be a new creation. This is in line with the purpose of the Copyright Act, which is to promote creativity.

    CONCLUSION

    Now that we’ve covered the basics of the Fair Use doctrine, you can be more aware of when you may be able to use copyrighted material without the copyright owner’s permission. However, it is always better to be safe and attempt to get permission – this shows good faith on your part.


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  • TRADEMARK LAW OVERVIEW

    I. PURPOSE OF TRADEMARK LAW

    Trademark is defined as a distinctive mark, signature, or device, affixed to an article or to its wrapper, package, or container, to show that it is marketed, manufactured, grown, or selected by a particular person, firm, or corporation. A Trademark is an insignia, which serves as a guarantee that the product is authentic and genuine, and that the product is made with the same degree of quality as other products with the same insignia. The rationale of trademark law is to protect the symbol used to identify a particular manufacturer or seller’s products or services and distinguish them from the products or services of another. No person should be able to unfairly use, compete, or trade on the reputation of another – you should be able to trade only on one’s own reputation. Trademark law protects commercial identity and protects the consuming public by allowing them to easily identify the source of goods and services. As a result, trademark law reduces the customer’s costs of shopping and making purchase decisions, and at the same time trademark law encourages the production of quality goods.

    Trademarks serve three (3) basic functions:

    (1) Indicate the source or origin of a product;
    (2) Guarantee that the product is of the same quality as other products with the same trademark; and
    (3) Distinguish the goods or services from other manufacturers or providers.

    A. TYPES OF TRADEMARKS

    Trademarks should be dramatic. It should stand out because you will have a better chance of it being protected. A Trademark concerns a sale of goods, a Service Mark concerns the sale of services. There are not much differences and they are used interchangeably. There is also a Certification Mark which identifies the authoritative entity which certifies a particular good. There is also Collective Membership Marks, which is a type of trademark used by members of a collective, association, or other organization to indicate membership and to distinguish the goods and services of members from those of non-members.

    B. WHAT IS A TRADEMARK?

    Trademarks are symbols. The symbols can be words (i.e. word marks), slogans, phrases, logos (i.e. design mark, such as the NBC peacock symbol), font-style (i.e. the Coca-Cola lettering), scents, packaging, sounds (i.e. the MGM lion roar), a series of musical notes, or even a color scheme. Protection is afforded to the source of the good, not the good itself. A trademark represents business reputation, goodwill, and brand identity. Trademark law provides incentive to businesses to invest in the quality of their goods.

    The language of the Lanham Act, also known as the Trademark Act, the Federal law regulating trademarks, states that trademarks include: “any word, name, symbol, or device, or any combination thereof.” The definition is therefore not restrictive and covers almost anything that is capable of carrying meaning.

    C. WHAT IS NOT A TRADEMARK

    Many “names” do not qualify as trademarks because they do not properly indicate the source of a good or service.

    1. DOMAIN NAMES ARE NOT TRADEMARKS

    The use of a domain name to identify a web address is not a trademark. Moreover, registration of a domain name on an accredited registrar does not give you any legal rights. In fact, the registered domain name may be required to be surrendered if it infringes on a trademark.

    2. BUSINESS NAMES ARE NOT TRADEMARKS

    The use of business name does not qualify as a trademark. In fact, despite filing your business with the Secretary of State, the use of the business name may be prevented if it is found to likely cause confusion with an existing trademark.

    3. ORNAMENTAL DESIGNS ARE NOT TRADEMARKS

    A design being used in a purely ornamental or decorative manner is not protected as a trademark. For example, use of a design on the front of a t-shirt has not traditionally been protected as a trademark. However, if the design on the t-shirt is recognized as a mark of another source, such as a television show, then the use may be considered as a trademark. Another example is the Nike Swoosh – it depends on how the mark is marketed. Nike does not always depict the mark on the front of the t-shirt but rather as a logo on the product. Even more, public perception is very important – it is all about how the public perceives the mark.

    4. PRODUCT FEATURES ARE PROTECTED BY TRADE DRESS

    Identifying features of a product are protectable if they do not present an unfair competitive advantage. Product features are generally protected under “trade dress,” which allows for protection if the consumers associate the specific feature with the particular manufacturer rather than with the product in general. For example, the Listerine container is protected by trade dress.

    5. FUNCTIONALITY IS NOT PROTECTED BY TRADE DRESS OR TRADEMARK

    However, the feature will not be protected if it serves a functional purpose because such protection would present an unfair competitive advantage to the particular manufacturer. For example, if the product feature allows for functionality of the product, such as easier handling or storing, then the feature will not be protected by trademark or trade dress. Also, a scent cannot be trademarked if it is a function of the good you are selling, such as a perfume.

    II. TRADEMARKS MUST BE DISTINCTIVE

    When selecting a trademark, the key characteristic is its distinctiveness. The most distinctive marks are fanciful, the next distinctive mark is arbitrary, then suggestive, descriptive, and lastly generic. Coined, arbitrary, fanciful, and suggestive marks are considered “inherently distinctive marks” and are registered on the Principal Register, the primary register of trademarks maintained by the United States Patent and Trademark Office (USPTO). The Courts group marks into four categories based on the relationship between the mark and its product. Some marks are afforded more potent rights and therefore more protection.

    The four (4) categories of trademarks, from the strongest to the weakest in terms of being distinctive and protected, are:

    (1) Arbitrary and Fanciful (Strongest);
    (2) Suggestive (Medium);
    (3) Descriptive (Weak); and
    (4) Generic (No Protection).

    A. ARBITRARY OR FANCIFUL MARKS

    A fanciful mark is an invented word with no dictionary meaning. They consist of coined terms. For example, the marks “Exxon,” “Kodak,” “Polaroid,” “Starbucks,” “Xerox,” and “Haagen Daz.” They bear no relationship to their underlying product which are respectively gasoline, cameras, coffee, copy machines, and ice cream.

    An arbitrary mark also bears no relationship to its product. For example, “Apple” for computers, or “Banana” for tires, or “All-State” for insurance, or the Nike Swoosh for sports apparel.

    Arbitrary and fanciful marks are inherently distinctive and are given a very high level of protection under trademark law. They are prima facie registrable.

    B. SUGGESTIVE MARKS

    A suggestive mark refers to a particular characteristic of the underlying product. But it does not specifically describe the good. Rather, it is subtle. The consumer must exercise his or her imagination to understand the reference. Suggestive marks are considered distinctive and are given protection. For example, “Whirlpool” washing machines, “Coppertone” suntan lotion, and “Ivory” soap.

    C. DESCRIPTIVE MARKS

    Descriptive marks directly describe the product, or some important characteristic of the product. For example, a depiction of a television for a “television repair service.” Descriptive marks are initially not protectable. Describing the nature or quality of the good is not protectable, unless it acquires a secondary meaning. As a practical note, in order to make a descriptive mark distinctive, it is possible to give the mark a distinctive type font and register it as a design logo by submitting a Special Form Mark drawing.

    D. DESCRIPTIVE MARKS MUST HAVE SECONDARY MEANINGS TO BE PROTECTED

    Secondary meaning is when the public perceives the mark as a trademark rather than its primary meaning. A common example is the mark “Holiday Inn.” The mark must be thought of as a brand and not as a descriptive word. The public must associate the mark with a particular company and not the product in general.

    The test is for whether the mark has acquired secondary meaning is: Does the consuming public primarily associate the mark with a particular producer, rather than the underlying product? The Court will base the determination of secondary meaning on factors:

    (1) Amount and manner of advertising;
    (2) Volume of sales;
    (3) Length and manner of the mark’s use (generally extensive use in commerce over a five (5) year period); and
    (4) Results of consumer surveys.

     

    Where the Defendant seeks to justify the use of a common word by the argument that he needs it to describe the particular product, Courts have developed a test to determine whether there is an “unnecessary use” by the Defendant. The concept of necessity is evoked not as a standard of legality, but rather as a test for an illegal intent. If there is no real necessity for the use of a particular term, because there are others of equal effect and in common use, or if the Defendant cannot offer a reasonable explanation for the particular usage, then a strong presumption that an intent to unfairly compete exists. The Defendant bears the burden to justify the use.

    E. GENERIC MARKS

    A generic mark describes the general category of the product. Generic marks are entitled no protection whatsoever under trademark law. For example, the mark “Apple” could not be used to identify apples as a product. No producer is entitled to have the exclusive right to use a generic term. Furthermore, in some circumstances, an original term can become generic over time through a process referred to as “genericity.”

    III. COMMON LAW TRADEMARK RIGHTS

    Trademarks are governed by both State and Federal law. However, the Federal law provides the most extensive protection available. Still, common law trademark rights and State common law actions are still available.

    Assuming that a mark is distinctive and qualifies for protection, there are two ways that rights in a trademark are acquired: (1) first to use the mark in commerce; and (2) first to register the mark with the United States Patent and Trademark Office (USPTO).

    Under the common law, the basis of getting rights in the trademark is by the use of the mark. You must use the mark in a particular territory. Use is the primary basis of getting rights in the mark. The use must be as a trademark, not in some other manner. The mark must be used in the course of business. Use of the mark means the actual sale of a product to the public with the mark attached.

    Under common law, the first to use the mark is the owner of the mark. The owner may be an individual, Corporation, Partnership, Limited Liability Company, or other legal entity. However, common law trademark rights are not preferred, as they extend only to the places where a trademark has been used in commerce and areas in which there is a reasonable expectation of expansion.

    Courts look at many factors in determining whether one has acquired common law rights in a mark: widespread distribution, public association with the mark, whether consumers associated the mark with the source of the goods, whether the mark has become distinctive, and whether the mark owner has exercised control over the quality of the goods and has used the mark in a trademark sense. Moreover, if the mark is descriptive, there may be a period of time in which the mark is used in commerce before it acquires a secondary meaning. During this period the mark is not entitled to protection. Only until the mark acquires secondary meaning is the mark protected by trademark law.

    Common law rights are severely limited because they are restricted to the geographical area where the mark was used or reasonably expected to be used (the natural zone of expansion). Common law rights, when recognized, will protect a mark holder as against infringement only within that specific geographical market. If another mark-user comes along and registers the same mark on the federal level, the subsequent registrant will have rights in that mark in all areas but the limited geographical area where the prior mark-holder had used the mark in commerce, or the area where the common law mark holder would reasonably be expected to expand. Simply put, Federal registration is preferred if one seeks nationwide protection for a trademark because it will put the entire nation on notice of your claim of trademark rights in the mark.

    Common law rights are a right of last resort. If you are seeking trademark protection on the internet and across the nation, it is best to seek a Federal registration with the United States Patent and Trademark Office (USPTO).

    IV. TRADEMARK SEARCH

    A trademark search, also known as the “clearance” process, should be conducted before applying for trademark registration so that you do not waste the non-refundable filing fee. The USPTO’s Trademark Electronic Search System (TESS) can be used to conduct a free clearance search for word marks, design marks, and combinations of words and designs that are being used or applied for. The search focuses on whether there is a “likelihood of confusion” between your mark and a mark that has already been applied for or registered. A likelihood of confusion results when there is the same or similar mark and related goods and services. If there is a likelihood of confusion, your mark will be refused.

    There are no set rules for conducting a search. The TESS (for Federal registrations and applications), Secretary of State web sites (for State registrations), and online internet searches (for common law trademarks) should be examined. Furthermore, the marks must be evaluated to determine if they are in the same class of goods and services.

    A comprehensive search is offered by trademark search companies. The price ranges from $800 to $1,000. The trademark search company will run a better search strategy than any other individual or entity. They have state common law databases, and search domain names, business names, and many other categories. Still, a comprehensive search is not perfect, although very recommended when you think you have an important mark that has value to you.

    V. BENEFITS OF FEDERAL TRADEMARK REGISTRATION

    The Federal Government has the ability to regulate trademarks according to the Commerce Clause of the United States Constitution. The Lanham Act grants the United States Patent and Trademark Office the administrative authority to regulate trademark registrations. A Federal trademark registration is essentially a grant by the United States Government of a right to exclude others from using the mark in the same form or near resemblance that may be likely to cause confusion, mistake, or deception. The right to exclude others is renewable for successive ten (10) year periods as long as the mark is used in commerce or there is a justifiable reason for non-use.

    Trademark registration on the Principal Register provides:

    (1) Nationwide trademark rights;
    (2) Presumption that the mark is valid;
    (3) Presumption that the owner listed on the registration is the true owner;
    (4) Presumption that the mark has not been abandoned through non-use;
    (5) Presumption of the exclusive right to use the mark nationwide – that is, registration is considered prima facie evidence of exclusive rights;
    (6) Access to Federal Courts for trademark infringement litigation;
    (7) After five (5) years of unopposed registration, the mark is considered incontestable, which means the mark cannot be attacked on the grounds that it is merely descriptive;
    (8) Constructive notice so that infringers cannot claim that they were not aware of the registered mark – this is referred to as “notice-priority”;
    (9) Right to use the Federal registration symbol consisting of an R enclosed within a circle “®”, or the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”;
    (10) Listing in the USPTO’s online databases;
    (11) Enhanced remedies for infringement, such as triple damages and criminal penalties for counterfeiting;
    (12) Use of the U.S. Registration as a basis to obtain registration in foreign countries; and
    (13) Right to have the United States Customs Service prohibit import goods that bear an infringing mark – this is important for large well-known brands.

     

    Federal registration affirms the rights you have under common law and adds more. The basis for Federal trademark registration is actual use and an intent to use. A Use-based application must show actual use at the time of filing. An intent-to-use application states that there is a bona fide intent to use the mark with the particular identified goods and services.

    It is a good idea to register your mark because it allows you to get into Federal Court. You can still get into Federal Court without Federal registration but certain presumptions are not permitted, whereas with registration presumptions are permitted. With registration there is a presumption of ownership. Registration gives the public constructive notice of the owners’ trademark. Registration permits the use of the symbol ® with the mark – this symbol can only be used once the mark has been examined, approved, and registered with the USPTO. The TM symbol can be used any time even without registration. Registration also allows for statutory damages in an infringement action.

    One of the benefits of the Federal trademark registration is that it covers the entire country, even if actual sales are restricted to only a limited area. However, the nationwide right is restricted to the extent that there were prior similar marks already being used by others within a specific geographic area. The prior user retains the right to use the mark within the limited specific geographic area.

    A. FEDERAL TRADEMARK APPLICATION FILING FEES

    Before filing for trademark registration, you should determine whether the mark is distinctive and how difficult it will be to protect your mark based on its strength. A strong mark will allow you to easily prevent third-party use. A weak mark is usually descriptive and will be difficult and expensive to police and protect.

    Federal trademark registration applications can be completed online through the USPTO website for a cost of $225.00 per class for a Trademark Electronic Application System (TEAS) Plus Application, $275.00 per class for a TEAS Reduced Fee Application, and $325.00 per class for a TEAS Regular Application. For TEAS Plus Applications, payment for each class is required at the time of filing; whereas, TEAS Reduced Fee Applications and TEAS Regular Applications only require the fee for one class to be paid at the time of filing, but any additional fees must be submitted before the application process is completed. The status of a pending application can be monitored with the serial number through the online Trademark Status and Document Retrieval (TSDR) system.

    To note, the TEAS is a public information database. Therefore, if the product is meant to be a secret, such as a unique patentable product, then it is not a good idea to file for trademark registration until the patent is first received.

    B. CLASSIFICATIONS OF GOODS AND SERVICES FOR TRADEMARKS

    The USPTO Trademark Registration Application filing fee is based on the type of application form and the number of International Classes of Goods or Services in the application. The class of goods or services to which the mark is or will be applied must be identified. There are about 45 classifications of goods and services. The number of classes will determine the total filing fee for the application. The USPTO requires a filing fee for each class of goods and services. There is an advantage for filing multiple separate applications for each class – a separate examiner will be reviewing the application. Whereas in a single application for multiple classes the same examiner will review the individual application. The USPTO has issued the International Schedule of Classes of Goods and Services and the Acceptable Identification of Goods and Services Manual (ID Manual) to assist in selecting the classification. To note, design marks are given a numerical classification.

    C. TRADEMARK REGISTRATION FILING DATE NOTICE-PRIORITY

    Once an application is filed, a “filing date” will be assigned, which is presumed to have priority over later applications. That is, if a later application is considered to likely cause confusion with your mark, then that later application will be “suspended” until your prior application is registered or is abandoned. However, the priority of a filing date is not absolute. A mark owner with “stronger” rights than a prior applicant can “intervene” in the application process and assert an opposition to the registration of the applied for mark. An example of strong rights include a long history of earlier use of the mark in commerce, despite not having filed a prior application.

    D. OFFICE ACTION BY USPTO TRADEMARK EXAMINER

    The application process may take up to a year or even longer. Within three (3) months, a USPTO Trademark Examiner will examine the application to determine if the mark complies with Federal law pursuant to the Trademark Manual of Examining Procedure, which can also be obtained through the USPTO website. The Examining Attorney will issue an “Office Action” letter stating any reasons for refusing the mark. If a Preliminary Rejection is issued, the applicant will have six (6) months to request a re-examination or file a Reply Response with supporting arguments. It is imperative that the applicant have the assistance of an Attorney in submitting a Reply to the USPTO. If a Reply is not filed, a Final Rejection will be issued.

    E. FINAL REJECTION BY USPTO TRADEMARK EXAMINER

    If the applicant receives a Final Rejection from the Trademark Examiner, the applicant can file an Appeal with the administrative tribunal Trademark Trial and Appeal Board (TTAB). In addition, if the application is opposed by any third parties, the Opposition Appeal will be reviewed by the TTAB. It is also important that the applicant have the assistance of an Attorney during this process. If the applicant is not satisfied with the decision of the TTAB, the applicant may appeal to the United States District Court for the District of Columbia by filing a civil action to obtain a registration. The applicant may also appeal to the United States Court of Appeals for the Federal Circuit.

    F. OFFICIAL GAZETTE PUBLICATION OF TRADEMARK

    The Trademark Official Gazette is a weekly online publication. Once an application is allowed, the application will be published in the Official Gazette. An exception to the publication on the Official Gazette exists when the mark is granted registration on the Supplemental Register. Any entities or individuals who would like to oppose the registration of the mark will have thirty (30) days to file an Opposition Appeal. An Appeal is a proceeding that is held before the Trademark Trial and Appeal Board (TTAB). The third party may also first file a Request for an Extension of Time to file an Opposition. Ultimately, if no Appeal is filed, the registration will finally be issued to the applicant. The USPTO will issue a Registration Certificate eleven (11) weeks after publication.

    For an “intent to use” registration, the USPTO will issue a Notice of Allowance eight (8) weeks after publication. A Notice of Allowance indicates that the mark has been allowed, but the mark has not yet been registered, unless within six (6) months a Statement of Use is submitted to the USPTO. A Statement of Use contains a sworn statement that the mark is being used in commerce on all the indicated goods and services. The filing fee for a Statement of Use is $100.00 for each class of goods or services. If a Statement of Use is not filed within six (6) months, the mark will be considered abandoned unless a Request for an Extension is filed with a statement of the ongoing efforts to use the mark in commerce. Up to five (5) Requests for Extensions may be filed. If the mark is used in commerce before a Notice of Allowance is issued, the applicant can file an Amendment to Allege Use.

    G. ACTUAL USE VS. INTENT TO USE TRADEMARK IN COMMERCE

    Federal trademark registration applications can be based upon: (1) the “Actual Use”; and (2) a bona fide “Intent to Use” (ITU) the mark in commerce.

    For an Actual Use application, the mark must be used in “interstate commerce” through the sale or transport of goods, or in the rendering of services. Interstate commerce means there must be transactions across state lines or with another country. If the mark is only being used intrastate (i.e. within one state), it may not be the proper time to file for Federal registration. But if you are doing business across State lines (i.e. over the internet), Federal registration is proper.

    For an Intent to Use (ITU) application, the mark will not be registered until the applicant in fact uses the mark in interstate commerce. The purpose of an ITU application is to establish priority in determining which party first acquired trademark rights in the event of a dispute. An ITU application still requires that there be actual use before registration is in fact completed. As a result, an ITU application requires filing an additional form and fee – a Statement of Use. It is also possible to file an application in which some of the goods and services are in use and others are intended to be used. There must be a bona fide intent to use the mark, which is more than just the idea – it must be supported by evidence such as: a business plan, sample products, or other initial business activities.

    H. TRADEMARK “DRAWING”

    The “drawing” in the USPTO Trademark Application refers to the depiction of the mark. The USPTO uses the drawing to upload the mark into the USPTO databases and to print the mark in the Official Gazette and on the Registration Certificate. Each variation of the mark requires a separate application and fee. The mark may appear as: (1) a Standard Character Mark, or (2) a Special Form Mark.

    A Standard Character mark grants broad protection solely to the wording (including letters and numbers) without regard to font, style, size, or color – this means that you can be flexible and change how you display the wording in your mark at any time.

    A Special Form mark consists of special characteristics, such as a particular font, stylization, design, logo, color, or combination thereof. There are two categories of Special Form marks: (1) Stylized marks (in which wording appears in a particular font), and (2) Design Marks (in which wording is combined with a design). A Special Form drawing has additional requirements, in that the “literal element” must be identified. All the words that appear in the mark image must be indicated. If the mark is in color, the applicant must claim each of the colors in the mark and indicate the location of each color within the mark. If you are submitting a color drawing, you must include: (1) a “Color Claim” naming the color(s) and stating that the color(s) is a feature of the mark, and (2) a Separate Statement describing the mark and indicating where the color(s) appear in the mark.

    Because of the additional requirements for a Special Form mark with color, most applicants only apply for Standard Character marks or Special Form marks in black-and-white and no color.

    I. TRADEMARK “SPECIMEN”

    If the mark consists of stylized words or a design, then the mark must be submitted to the USPTO as a JPG image. If the application is based on a mark that is actually being used in commerce and the goods and services with the mark are currently being sold, then a “specimen” of the particular use must be submitted as a JPG or PDF image file for each class of goods and services. A scanned copy or a photograph image of how the mark actually appears must be submitted – this can be a tag, label, packaging, or advertisement. To note, a specimen is not required for a “text only” mark or for a mark that is not yet used in commerce.

    If the registration is based on an intent to use, a specimen for each class of good and services must be submitted when the Allegation of Use is filed, which may be filed prior to publication (i.e. Amendment to Allege Use) or after publication (i.e. Statement of Use).

    J. PRINCIPAL REGISTER VS. SUPPLEMENTAL REGISTER FOR TRADEMARKS

    The benefits of Federal trademark registration only apply to those marks on the Principal Register. Purely Descriptive Marks never are placed on the Principal Register. The only marks that are placed on the Principal Register are: (1) Arbitrary or Fanciful Marks; (2) Suggestive Marks; and (3) Descriptive Marks with Secondary Meaning.

    The Supplemental Register consists of Descriptive Marks that have not yet obtained secondary meaning and therefore are not considered to be distinctive.

    Moreover, Generic Marks are ineligible for trademark protection and are not registered on either the Principal or Supplemental Register.

    K. SECONDARY MEANING OF DESCRIPTIVE MARKS

    To acquire secondary meaning, a Descriptive Mark must be used for at least five (5) consecutive years in commerce. Alternatively, the user must provide evidence of substantial advertising and market recognition.

    The test for secondary meaning is:

    In the minds of the public, does the primary significance of the mark identify the source of the product rather than the product itself?

    L. REJECTION OF TRADEMARK BY THE UNITED STATES PATENT AND TRADEMARK OFFICE

    The USPTO will reject marks that are determined: generic, geographic, surnames (i.e. an individual’s name or likeness), title of a book or movie, matter that is used in a purely ornamental manner, or a foreign term that translates to a descriptive or generic term. The USPTO will also reject marks that are immoral, obscene, or scandalous. In addition, the mark will be rejected if it creates a likelihood of confusion with a prior existing mark. Rejection does not automatically mean that the mark is not protected. Rejection by the USPTO merely signifies that the mark will not be entitled to the benefits available pursuant to Federal registration.

    VI. STATE TRADEMARK REGISTRATION

    State registrations are considered less potent and not as strong as Federal registration. In order to qualify for Federal registration, the mark must be used in interstate commerce. If a mark is only used within a particular State, then State registration is appropriate and Federal registration may not be necessary. To obtain a State registration, the application must be submitted to the State’s Secretary of State.

    California has a State registration system for trademarks and service marks pursuant to California Business and Professions Code section 14000 et seq. California has adopted the Model State Trademark Law.

    The Secretary of State’s office maintains registration and all updates of California State trademarks and service marks. This information is accessible to the public upon request.

    The classification of goods and services are those adopted by the United States Patent and Trademark Office and a single application may include multiple classifications of goods or services. Applicants are required to state a declaration of accuracy that the material facts in the application are true. A willful inaccurate statement is subject to a civil penalty of up to $10,000.00 to be enforced by a public prosecutor. The duration of California registrations has been reduced from ten to five years and the renewal application requires submission of a specimen showing actual use of the mark. The applicant is required to state whether they previously sought to register the mark with the United States Patent and Trademark Office and, if registration was refused, to disclose the reasons why it was refused at the Federal level.

    VII. LOSS OF TRADEMARK RIGHTS

    Unlike other areas of intellectual property law, trademark protection does not have a set duration or definite expiration date. Trademark rights only expire once the mark is no longer being used in commerce. However, Federal trademark registration expires ten (10) years from the registration date unless renewed within one (1) year prior to expiration. Moreover, the rights in a trademark can be lost through:

    (1) Abandonment;
    (2) Improper licensing and assignment; and
    (3) Genericity.

    A. ABANDONMENT OF TRADEMARKS

    An abandonment of the trademark occurs when its use is discontinued with an intent not to resume. Intent can be inferred based on the circumstances surrounding the discontinuance. Non-use of a mark for three (3) consecutive years is prima facie evidence of abandonment.

    B. IMPROPER LICENSING AND ASSIGNMENT OF TRADEMARKS

    The rights in a trademark can be lost and the trademark cancelled if the mark is licensed without the proper quality control and supervision over how the mark is being used by the licensor. Moreover, if the mark is assigned in gross without the corresponding sale of the business assets which are the underlying product for which the mark is attached, then the mark will be cancelled. Simply put, under these situations, the purpose of the mark in identifying the source of the goods no longer exists.

    C. TRADEMARK GENERICIDE

    A mark can lose its distinctiveness when in the minds of the public the mark symbolizes a broad category of products. The mark no longer specifically identifies the source or manufacturer. The mark in fact has become a generic term used by the public. To determine genericity, Courts will evaluate: (1) dictionary definitions, (2) use by newspapers and magazines, and (3) attempts by the trademark owner to police its mark. For example, the terms “escalator,” “thermos,” “aspirin,” “nylon,” “post-it notes,” and “cellophane” have become generic terms.

    D. DUTY TO POLICE YOUR TRADEMARK

    It is important to note that a trademark owner has a duty to police infringing uses of its trademark. It is solely the responsibility of the mark owner to file a civil lawsuit in State or Federal Civil Court in order to restrict infringement. If a trademark owner does not enforce its trademark rights or otherwise fails to maintain quality control over the trademark (i.e. a naked license)‚ trademark rights may be lost. Cease and Desist Notices should be sent before initiating litigation.

    To maintain Federal trademark registration, a Declaration of Continued Use must be filed with the USPTO before the end of the sixth year after the registration date. In addition, a Combined Application of Continued Use and Application for Renewal must be filed before the end of every ten (10) year period after the date of registration. If the documents are not timely filed, the registration will be cancelled and cannot be reinstated; rather, a new application must be filed. Federal trademark registration rights can last indefinitely if properly maintained.

    VIII. TRADEMARK INFRINGEMENT AND THE LIKELIHOOD OF CONFUSION TEST

    A claim for infringement of a trademark may be based upon a violation of Common Law rights, State trademark registration, or Federal trademark registration, and all three claims may co-exist at the same time.

    Trademark registration only reinforces your rights. Contrary to popular belief‚ due to common law rights you need not own a trademark registration for trademark infringement to exist. The key inquiry in a matter of trademark infringement is whether an ordinary consumer is likely to be confused between the trademarks. If the trademarks are confusingly similar‚ the prior user should request that the subsequent user cease use of the trademark. This commonly occurs in the form of a Cease and Desist Notice. If the subsequent user refuses‚ trademark litigation may ensue.

    The standard for trademark infringement is “likelihood of confusion.” No trademark shall be refused unless it causes confusion, mistake or deceit with a previous existing mark. A mark is infringing if it is confusingly similar to an existing mark. It is about public perception – will the public be confused? Specifically, the use of a mark in connection with the sale of a good is infringing if it is likely of causing confusion in the consuming public as to the source of those goods or as to sponsorship or approval of the particular goods.

    The Courts weigh factors to measure the likelihood of confusion:

    (1) Strength of the mark;
    (2) Proximity of the goods;
    (3) Similarity of the marks;
    (4) Evidence of actual confusion;
    (5) Marketing channels used;
    (6) Type of goods and the degree of care likely to be exercised by the purchaser (also known as “purchaser sophistication”);
    (7) Defendant’s intent in selecting the mark;
    (8) Likelihood of expansion of the product lines;
    (9) Quality of Defendant’s goods or services; and
    (10) Whether the Defendant’s attempt to register the mark was bona fide and in good faith.

    Simply put, there are no hard and fast rules in determining whether a likelihood of confusion exists. To summarize, the Courts will look at:

    (1) The similarity of the trademarks;
    (2) The similarity of the goods or services;
    (3) The similarity of trade channels;
    (4) The number and nature of similar trademarks in use on similar goods; and
    (5) The extent of any actual confusion.

     

    The most important factors are often the first two. Marks are considered very similar if they are close enough in sound, appearance, or meaning. However, using the same mark on a completely unrelated product will not give rise to infringement because consumers are not likely to believe that the goods are being produced by the same business. However, famous marks such as Coca-Cola and Coach are registered in a broad range of classes, making them virtually impossible to use in a different channel of distribution.

    A. TRADEMARK LITIGATION

    In trademark litigation‚ a frequent issue is whether or not a likelihood of confusion exists between two trademarks. Many factors are considered in this determination‚ but the two primary factors are the similarity of the trademarks and the similarity of the goods or services. If a typical consumer is confused between the two uses‚ then a likelihood of confusion exists. It is the Plaintiff’s burden to prove that a likelihood of confusion exists. Generally, the Plaintiff must also prove ownership and prior use. For these issues‚ a trademark registration can create presumptive rights. If the Plaintiff is successful in proving prior use and a likelihood of confusion‚ the Court may issue an injunction against the Defendant. Other damages potentially available in trademark litigation matters apart from an injunction include costs of litigation‚ damages‚ Plaintiff’s loss of profits, the Defendant infringer’s profits‚ treble damages‚ and Attorney’s fees.

    B. TRADEMARK DILUTION

    In some cases the likelihood of confusion is not present, but there is still damage done to a recognized mark by a second seller’s unfair use of it. If the mark makes the public think there are two different sources for the same mark, even though there is no confusion. This type of perception injures the brand. The mark is weakened because it is identified with dissimilar goods. Therefore, the mark can be charged as diluting another mark.

    An action for trademark dilution can be brought under either Federal or State law. However, under Federal law there is a strong standard to have an existing mark to be diluted – the mark must be “famous” and well-known.

    To determine if a mark is “famous,” the Court will weigh factors:

    (1) Degree of inherent or acquired distinctiveness;
    (2) Duration and extent of use;
    (3) Amount of advertising and publicity;
    (4) Geographic market;
    (5) Channels of trade;
    (6) Recognition in trading areas;
    (7) Use of similar marks by third parties; and
    (8) Whether the mark was registered.

     

    Under State law, the mark does not need to be famous. Rather, an action for trademark dilution exists if: (1) the mark has “selling power” or distinctive quality; and (2) the two marks are substantially similar.

    C. TRADEMARK TARNISHMENT

    Another related cause of action is trademark tarnishment. A trademark is tarnished when an infringing mark portrays the infringed mark in a negative unflattering light – usually in the context of sex, drugs, or crime. Tarnishment can also happen if the infringer is offering low quality goods. The rationale is that through the association of inferior products or services, the mark’s commercial value and quality is diminished.

    D. UNFAIR COMPETITION

    Unfair Competition, both the Common Law tort and the Federal statute, attempts to enforce a certain level of “honest practices in industrial or commercial matters.”

    A State law cause of action for Unfair Competition consists of: passing off, contributory passing off, reverse passing off, and misappropriation. Passing off involves the Defendant “passing off” the product as if it is coming from the Defendant. Contributory passing off involves the Defendant assisting or inducing another, such as a retailer, to pass off a product as if it is coming from another source. Reverse passing off involves the Defendant trying to pass off the Plaintiff’s product as if it is Defendant’s own product, for example by putting on a different label on Plaintiff’s product.

    An injured party brings Federal Unfair Competition claims under section 43(a) of the Lanham Act. Because the Lanham Act is a Federal statute, there must be some degree of interstate commerce involved. Unlike trademark infringement claims under the Lanham Act, Unfair Competition claims do not require any Federal registered marks. As a result, section 43(a) involves all Federal trademark infringement claims and extends further to cover other unfair business practices. Section 43(a) claims break down into two categories: likelihood of confusion and false advertising.

    As in Federal trademark infringement analysis, a likelihood of confusion exists when there is confusion as to the source, sponsorship, or association between goods or services.

    The elements to prove a section 43(a) Unfair Competition claim based on likelihood of confusion are:

    (1) One uses any word, term, name, symbol, device, or combination,
    (2) In interstate commerce, and
    (3) Which is likely to cause confusion as to source, sponsorship, or association.

     

    The elements for a section 43(a) claim of likelihood of confusion are comparable to trademark infringement except one does not need a Federal registered trademark.

    One seller unfairly competes with another seller by adopting and using a trademark that is confusingly similar to the prior adopted and used trademark of the first seller. It is easy to see why this type of practice is prohibited by the law. If it were otherwise, consumers would be confused as to the origin of a certain product and, thus, could not rely on receiving consistent quality. In addition, there is something inherently unfair in letting an infringer get the benefit of the first seller’s time, money, and effort in building good will for the trademark.

    IX. DEFENSES TO TRADEMARK INFRINGEMENT CLAIMS

    The affirmative defenses to trademark infringement are: (1) Classic Fair Use; (2) Nominative Fair Use; and (3) First Amendment Free Speech Parody. All defenses require that there be no consumer confusion as to the source or sponsorship of the product or services.

    A. CLASSIC FAIR USE OF TRADEMARK

    Fair Use, in the context of trademark law, consists of using a descriptive mark in good faith for its primary meaning and not for its secondary distinctive meaning. Therefore, no consumer confusion is likely to result. The use of the mark is considered fair because it is used in purely a descriptive accurate manner and does not invoke the distinctive nature of the mark. Such use is considered privileged from a trademark infringement action.

    B. NOMINATIVE FAIR USE OF TRADEMARK

    Another Fair Use defense is when the mark is used in its nominative nature. The trademark is being used to actually refer to the trademarked product or the trademark owner. That is, the use of the mark is necessary in order to identify another producer’s product. The rationale is that the use of a trademark is sometimes necessary in order to comment and reference another party’s product and services. The use is not directly profiting from the mark.

    C. PARODY OF TRADEMARK

    Parody is a form of speech protected by the First Amendment to the United States Constitution. Parody promotes public comment and criticism. However, the connection to the use of the mark and the form of speech must not be directly tied to commercial purposes, rather it must be for editorial and artistic purposes.

    D. ADDITIONAL DEFENSES TO TRADEMARK INFRINGEMENT

    Additional Defenses include asserting that Plaintiff’s mark is invalid, that no confusion or dilution exists, that the Defendant is the senior user of the mark, that there was insufficient notice and Defendant is an innocent infringer, or that the Statute of Limitations under State law has expired (to note, infringement of a Federal trademark does not have a specific Statute of Limitations; instead, Courts often apply the most analogous State law).

    X. REMEDIES FOR TRADEMARK INFRINGEMENT

    The remedies available for trademark infringement under Federal law include an injunction and monetary damages. An injunction is an order by the Court to stop using the infringing mark or to stop diluting the mark of the Plaintiff. In addition, the Court may order the seizure and destruction of the infringing goods.

    Section 35(a) of the Lanham Act, 15 U.S.C. section 1117(a), allows for monetary damages, which may include: (1) Defendant’s profits; (2) actual damages sustained by the Plaintiff (i.e. Plaintiff’s lost profits); and (3) Attorney fees. Generally, absent clear and convincing evidence of actual harm, Courts and juries will often look for evidence of intentional, culpable, or reckless conduct in order to award monetary damages in trademark infringement cases. The recovery of Defendant’s profits requires a showing of willful intent to deceive, bad faith, or an intent to confuse. In order to recover damages for Plaintiff’s actual harm, the Plaintiff must provide evidence of actual consumer confusion or deception. If Plaintiff can prove Defendant’s actions were intentionally deceptive, then a rebuttable presumption of consumer confusion exists. Some Courts will presume that the Defendant’s profits would be profits that would have belonged to Plaintiff but for the infringement. Thus, Courts will use Defendant’s profits as a measure of actual damages.

    Moreover, upon showing bad faith displayed by the Defendant, the Plaintiff may recover treble damages. However, no damages, whether Defendant’s profits or Plaintiff’s actual damages, may be recovered unless the infringer had actual notice of the registration or Plaintiff used the symbol R within an enclosed circle ®, or the words “Registered in U.S. Patent and Trademark Office,” or the abbreviated “Reg. U.S. Pat. & Tm Off.” In addition, no damages can be recovered from any infringement that occurred prior to the date of registration. Also, punitive and exemplary damages to punish the Defendant are not recoverable under the Federal Lanham Act, but may be available pursuant to State law causes of action for trademark infringement and unfair competition. Furthermore, under the Lanham Act, Attorneys’ fees are awarded to the prevailing party only in “exceptional cases,” such as bad faith on the part of the infringer Defendant or on the part of the Plaintiff bringing an unfounded action.

    For trademark dilution lawsuits, the Plaintiff is required to prove willful conduct on the part of the Defendant in order to recover monetary damages. The Plaintiff must show that the Defendant willfully traded on the Plaintiff’s goodwill and business reputation. Otherwise, the Plaintiff is only allowed the remedy of an injunction.

    XI. INTERNATIONAL TRADEMARKS

    Trademark protection is country specific. That is, foreign trademark protection is obtained primarily through actual registration in each particular country. This can be an expensive process. Fortunately, there are international treaties that facilitate the process.

    A. PARIS CONVENTION

    The Paris Convention for the Protection of Industrial Property allows you to file in signatory countries within six (6) months of filing in the United States. The Paris Convention gives you a six (6) month period to file in an international country. The Paris Convention has been adopted by 175 countries, which are referred to as the Paris Union. The main principle of the Paris Convention is that nationals of any Paris Union country are afforded the same intellectual property protection and enforcement that the national law of any country of the Union grants its own citizens.

    B. MADRID PROTOCOL

    Another treaty is the Madrid Protocol, in which U.S. applicants can get protection in multiple countries by simply filing one application. The Madrid Protocol allows applicants to file in a single country and the filing costs will be less in filing in the other approximately 60 signatory countries. You also get the benefit of the Paris Convention through the Madrid Protocol. The rule of thumb is: if you want to register your mark in three (3) or more countries, it is advisable to file under the Madrid Protocol. An International Application under the Madrid Protocol is filed with the USPTO which is then transmitted to the United Nation’s World Intellectual Property Organization (WIPO), which will then forward the International Application to each designated country for evaluation. Significant costs are saved because payment of agents and Attorney’s fees abroad may be eliminated. However, if the International Application is rejected by any of the designated countries, a foreign trademark Attorney will need to be retained in order to file a response. A rejection in one designated country will not affect the other designated countries. An International Registration under the Madrid Protocol lasts ten (10) years and can be renewed for an additional ten (10) years.

    C. EUROPEAN UNION’S COMMUNITY TRADEMARK

    The Community Trade Mark (CTM) registration process through the European Union allows you to file in all EU territories with one application for a single fee.

    D. DEFENSIVE REGISTRATION IN CHINA

    In order to protect against trademark piracy, a mark owner should file a defensive registration. Many trademark pirates will take United States trademarks and register them in China. As a defensive measure, the trademark owner should file a trademark application in China so that their goods are not blocked at customs if selling in China.


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  • DEFAMATION BASICS

    DEFAMATION DEFINED

    Everyone has a right to not have their reputation damaged by false statements. Defamation is the unprivileged publication of a false statement of fact that injures another’s reputation. There must be a balance of interests between protecting an individual’s personal reputation and the freedom of speech.

    The elements for a Defamation cause of action include:

    (1) False statement about the plaintiff;
    (2) Publication of the statement to a third person who understands the meaning of the statement;
    (3) Fault on the part of the defendant (which may be intentional, reckless, or negligent) in regard to falsity; and
    (4) Actual or presumed damages suffered by the plaintiff.

    Defamation consists of libel and slander:

    (1) Libel consists of written or printed words, embodiment of words in a physical form or any other form of communication that has similar characteristics as written or printed words, such as pictures or signs.

    (2) Slander consists of oral spoken words or gestures, such as conduct.

    There is no bright-line rule as to what words are considered defamatory. Some statements may be injurious to some people’s reputations, whereas the same statement may not be injurious to others. Whether a statement qualifies as defamation is determined on a case-by-case evaluation, and must be evaluated based on what the average reasonable person or the general public would understand the statement to mean.

    THE PUBLICATION MUST BE READ AS A WHOLE

    In determining whether the specific statement is defamatory, the words must not be read in isolation, rather the publication must be read in its entirety. This means that the entire article, statement, broadcast, or piece of literature must be read. Any alleged defamatory interpretation of a particular statement can be absolutely negated by the statements immediately preceding or following the particular statement. This includes any explanation that the statement is merely an opinion and not an assertion of fact. Simply, a particular work must be read in its entirety and not be divided into separate units. This principle is also applied to headlines, chapter titles, illustrations, and captions.

    THE PARTY MUST BE IDENTIFIABLE

    It is necessary for the party alleging defamation to prove that he or she is the person about whom the statement was made. It is not necessary that every single person who receives the material understands the statement to be made about the plaintiff. Rather, all that is required is that some of the readers or listeners understand the statement to be about the plaintiff.

    Moreover, the statement does not need to identify the plaintiff by name. The intention of the author and the recognition of the plaintiff that the statement is about him or her is not relevant. The test is whether a third person recipient would reasonably understand that the statement was written or uttered in reference to the plaintiff. This is a question of fact that is decided by the jury.

    Many times words are used broadly to describe a group or class. The statement is defamatory only if the statement can be reasonably understood to be about a particular member of the group or to every member of the particular group. The larger the group or class, the more difficult to prove the likelihood of the statement being about a single member or every member of the particular group.

    FICTIONAL CHARACTERS

    An author may use fictional characters in their works that may be widely distributed. The author is under no duty to address the possibility that someone may identify with the fictional characters. However, a disclaimer in a fictional work is a relevant factor in determining the defamatory nature of the work. However, the disclaimer is not a dispositive factor, and the work may still be considered defamatory if other factors are present. Nonetheless, an example of a disclaimer should state that any resemblance of the fictional characters to actual persons is purely accidental.

    When a person attempts to show the similarities and resemblance of the supposedly fictional character, the test is whether the third party recipient could reasonably believe that the character is a portrayal of the plaintiff. The jury will be required to make a comparison between the plaintiff’s characteristics and that of the fictionalized character.

    HARM TO BUSINESS

    A false assertion of fact concerning a business can only be considered to be defamatory if the statement is about business credit, efficiency, financial soundness, property, reputation, or ethics. In doing so, the statement may prejudice the business in its affairs by deterring third persons from working or dealing with the business. As an aside note, if the statement is a false assertion of fact concerning a product, the proper cause of action is not for defamation but rather a different cause of action for injurious falsehood. Moreover, words spoken or written about a particular employee, officer, or owner of a business is not defamatory against the business itself unless the statement directly relates to the business trade or affairs. Instead, if the statement relates only to the individual’s personal capacity, only that particular individual has standing to allege defamation.

    FALSE STATEMENT OF FACT

    In order for a statement to be considered defamation, it must be a false statement of fact about the plaintiff. There must be a distinction from statements of opinion. Statements that do not consist of facts, but rather are merely the views of the defendant, do not qualify as defamation. Defamation must be a false assertion of fact. The First Amendment to the Constitution protects freedom of expression. Statements of opinion are privileged speech and are not actionable as defamation.

    FACT VS. OPINION

    Whether an alleged defamatory statement is an opinion or an assertion of fact is a question of law to be decided by the Court. If the statement has any tendency to be interpreted as an opinion, the jury will decide whether that meaning was actually attributed to it by the recipient so that the statement was in fact considered to be an opinion.

    To discern whether a statement is one of fact or opinion, the Courts have established various tests.

    The “Contextual Test,” also referred to as “Totality of the Circumstances Test”, considers the following factors in determining whether an alleged statement is constitutionally privileged:

    (1) The content and form of the communication taken in its totality;
    (2) The circumstances surrounding the communication;
    (3) The ordinary meaning of the words that make up the communication;
    (4) The likely and reasonably understandable interpretation of the words; and
    (5) The extent to which the words can be proved false or true by objective evidence.

    Furthermore, the Court must be able to determine if the statement is one of verifiable fact or whether the reasonable person would believe the statement to be an assertion of fact. This requires two inquiries by the Court:

    (1) Whether the statement is “sufficiently factual to be susceptible of being proved true or false; and
    (2) Whether the reasonable person would believe that the assertion is one of fact.

    Whether a reasonable person would believe the statement to be a fact is based on factors, including:

    (1) How the statement is phrased;
    (2) The context of the whole statement; and
    (3) The circumstances surrounding the statement, including the medium of dissemination and the intended audience.

    The focus of the analysis is on objectivity and verifiability of the assertion. Therefore, many terms, epithets, or name-calling are considered hyperbole and embellishments which are incapable of defaming because they are not falsifiable assertions of discreditable fact. The defamatory capability of such terms cannot be determined without considering the context in which the statement is made. Moreover, the First Amendment freedom of expression protects opinions that may even be unpopular.

    REQUIREMENT OF FAULT

    The degree of fault on the part of the party making the false statement depends on certain facts, such as whether the person about whom the statement was made is a public figure or a private person. Public figures can be either: (1) public officials, (2) a person who has received pervasive fame and notoriety, or (3) a private person who voluntarily injects themselves into the public spotlight or is involved in a public controversy.

    STATUS OF THE PLAINTIFF

    Whether a plaintiff alleging defamation is a private individual or a public figure is a question of law for which the Court will decide.

    Public Officials

    Public officials include those who have, or reasonably appear to have by virtue of their position, substantial responsibility for or control over the conduct of government affairs.

    Pervasive Fame and Notoriety

    A person who has achieved pervasive fame or notoriety is a public figure. Such a person voluntarily seeks to influence the public.

    Limited-Purpose Public Figure

    A person who voluntarily injects themselves is considered public figure with regard to the particular event. Furthermore, a person may be drawn into a particular public controversy. This type of person is considered to be a public figure by virtue of the person’s attempts to be thrust in front of the public. In this type of situation, the alleged defamation must be relevant to the voluntary participation in the particular public controversy.

    DEGREE OF FAULT REQUIRED FOR DEFAMATION ACTIONS

    The different degree of fault required on the part of the person making the false statement is according to the controlling State laws.

    For instance, in California:

    (1) Private Individual

    A private individual alleging defamation must prove that the defendant was at least negligent with respect to the truth or falsity of the statement.

    (2) Public Figure

    In order for public officials, public figures, and limited-purpose public figures to recover for injury to reputation, they must prove that the defendant acted with actual malice, which is a standard that places an extremely high burden of proof on the plaintiff to establish by clear and convincing evidence that the defendant had knowledge that the statement was false or that the defendant acted with reckless disregard for whether the statement was false or not. The public figure plaintiff must at least show that the defendant has a very high degree of awareness that the statement was false or that the defendant entertained serious doubts as to the veracity of the statement.

    (3) No Liability Without Fault

    Above all, regardless of the controlling State law, according to the United States Constitution there cannot be liability without some degree of fault.

    As a result, the mere distributor, disseminator, or transmitter of the alleged defamatory statement may not be liable if the dissemination was done within the regular course of business without the requisite intent or negligence. This includes entities such as newspaper and periodical distributors or telegraph and telephone companies. However, broadcasters and publishers are subject to the same liability as an original publisher. This includes radio and television broadcasting companies.

    Furthermore, the defendant can attempt to show that he or she lacked the requisite intent as a defense to the allegation of defamation. The defendant will have to prove that he or she was not culpable by producing evidence that demonstrates the defendant’s good faith, due care, or the observance of customary standards.

    AVAILABLE DAMAGES IN DEFAMATION ACTIONS

    Presumed Damages for Defamation Per Se

    Defamation per se includes a statement that concerns a matter of purely private concern and by its very nature is defamatory. There is no need for extrinsic evidence to explain the statement’s defamatory nature. It is defamatory on its face. If the alleged defamatory statement is not apparent on its face, the statement is considered defamation per quod (i.e. situations in which the statement is not obviously defamatory).

    Pursuant to State law, in general there are four categories of defamation per se that cause serious injury to a person’s reputation to the extent that it is conclusively defamatory:

    (1) Commission of a crime;
    (2) Incompetence in business, trade, profession, or office;
    (3) Serious sexual misconduct, such as unchastity of a woman; and
    (4) Loathsome disease, such that the individual is excluded from society.

    If the statement qualifies as defamation per se, general damages are presumed as a matter of law because injury to the plaintiff’s reputation is conclusive and he or she need not introduce any evidence of actual damages in order to obtain or sustain an award. For defamation per se, a plaintiff need not show special damages, which include the recoverable damages to the plaintiff’s property, business, trade, profession or occupation, including expenditures that resulted from the defamation. However, there is no fixed standard in how courts calculate presumed damages. Furthermore, the amount of presumed damages can be nominal, as low as only one dollar. Presumed damages allows the jury to assume the damage to the plaintiff’s reputation and feelings, allowing the jury to provide an appropriate compensatory amount based on general considerations such as the seriousness of the accusation, credibility of the publication, circumstances and standing of the plaintiff in society, and any other factors. In addition, a plaintiff entitled to presumed damages may also recover special damages.

    On the other hand, it is indispensable in defamation per quod actions that the plaintiff provide evidence as to why the statement is defamatory and to provide proof of actual damages.

    Special Damages

    Special damages are damages that the plaintiff has suffered in regard to loss in property, business, trade, profession, or occupation, loss of income, loss of profits, loss of credit, loss of employability, and also including the amount of money the plaintiff has expended as a result of the alleged libel. When the alleged defamatory statement does not qualify as defamation per se, an allegation of special damages is an essential element of the cause of action. Special damages are limited to only specific computable pecuniary economic harm directly, naturally, and proximately caused by the loss of reputation arising from the defamatory statement. Special damages must specifically show how others have treated the defamed person differently as a result of the published falsehood based on a monetary calculation. Therefore, the plaintiff is required to provide the specific identity of the customers who withdrew business patronage from the plaintiff. Simply put, special damages must be alleged with particularity.

    Punitive Damages

    Punitive damages, also known as exemplary damages, are awarded in order to punish the defendant and to deter similar conduct by others. In order to recover, the plaintiff must show actual malice and the defendant’s wantonness in making the statement.

    THE ABSOLUTE DEFENSE OF TRUTH

    Truth is an absolute defense to an allegation of defamation. Regardless of whether the statement was published with the intention of bad faith, malice, or ill will, if the material at issue is true then it is not defamatory.

    STATUTE OF LIMITATIONS

    The statute of limitations defense for a defamation action is controlled by State law. For instance, pursuant to California Code of Civil Procedure section 340(c), California’s statute of limitations for defamation is one year. Moreover, California applies the single publication rule, which states that the statute of limitations begins to run from the time that the statement is first published.

    RELATED CAUSES OF ACTION

    The facts underlying the allegation of defamation may also give rise to other available causes of action. These often include:

    (1) Intentional or Negligent Infliction of Emotional Distress, which includes extreme and outrageous conduct;
    (2) Injurious Falsehood, which includes the disparagement of property (known as slander of title) and disparagement of the quality goods or services provided by a business (known as trade libel); and
    (3) False Light Invasion of Privacy.

    False light stems from an individual’s right to privacy. False light is subjective and based on injury to a person’s personal feelings. The defendant must have had knowledge of the falsity of, or acted reckless in regards to ascertaining the truth of, the communication which placed the plaintiff in a highly offensive light within the public eye based as viewed by a reasonable person.

    Moreover, there is no cause of action for defamation of a deceased individual. However, if the individual commenced a lawsuit and then died, the lawsuit can be pursued by the personal representative of the estate or by the decedent’s successor in interest such as the surviving spouse. This is based on the State’s particular controlling survival statute.


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  • HOW TO PROTECT YOUR IDEAS

    COPYRIGHT DOES NOT PROTECT IDEAS

    It is important to recognize that Copyright Law does not protect ideas. Copyright Law only protects the “expression of an idea that is fixed in a tangible form.” Only written words can be protected by copyright. Ideas or concepts are not protected. This is because the law promotes creativity. An idea or a concept behind a written work can inspire another person to create something. Only the actual written words are protected from infringement once the work is registered with the U.S. Copyright Office. Copyright law protects against actual copying of the written words, but the ideas behind your work are allowed to inspire additional creations.

    The solution to fully protect your idea against someone else using it is to simply write it down. The more you write your idea and express it in a tangible form, the more your idea is protected as an expression. Federal Copyright Law only protects what you write, not the inspirational idea behind your work no matter how original or novel it may be. The Federal Courts regularly state in opinions that:

    “Ideas are as free as the air.”

    CONTRACT LAW

    Fortunately, you may have a legal recourse based on state laws when you feel your idea has been stolen from you. For example, both New York and California recognize legal claims for Implied In Fact Contracts when it comes to idea submission and idea theft.

    Contract law was developed in order to hold people to their promises. An implied contract is an agreement that arises without any party specifically, in writing or verbally, expressing the terms to be enforced. Rather, the parties indicate by their conduct that they have reached an agreement. The parties behave in a way that indicates they have entered into a contract.

    This legal concept is important in the scenario of an idea pitch. There are certain basic principles that must be established in order for a contract claim to exist. So what are these basic principles? It takes a bilateral expectation that the party receiving the confidential information will compensate the other party for the reasonable value of the idea. A bilateral expectation, in a nutshell, is what creates an implied contract. This is based on the factual circumstances.

    The key factors are as follows:

    First, the courts look for whether or not the idea was solicited or unsolicited. If it was solicited, the likelihood an implied contract exists is very well; but if the idea was unsolicited, then it weakens the case for the existence of an implied contract.

    Second, was there an opportunity for the person, who was the receiver of the idea, to reject? Once the person knew there was some information that was going to be shared, did he or she have an opportunity to say “no I do not want to hear this” or even able to walk away? This is another key factor that the courts will look at to determine whether an implied contract exists.

    Third, were there general business circumstances surrounding the disclosure? Was there a lawyer or an agent present? Did it take place in a business environment or was it simply at a party? All of these factors, in a realistic sense, are what the courts will turn to when determining whether or not there was a reasonable bilateral expectation of payment.

    Fourth, the idea needs to in fact be used. So, it is not possible to simply make a claim unless the idea was in fact used.

    Fifth, is a factor that does not exist in California, but does in New York. This factor is about whether or not the idea has to be novel, or new, or not. In New York it does. So if someone tells you an idea, and you already knew it, and it was not new, then you would not have a breach of contract claim. But as in California, you would have a contract claim because novelty is not a requirement as of yet.

    There is also another theory that does not exist in California, but does in New York, and that is the tort theory of misappropriation. In a tort misappropriation cause of action, you are not suing because of a breach of implied contract, but instead you are suing because someone actually committed conversion of a property right. In order to state a claim for misappropriation in New York the idea must be “novel” and “concrete”. There also needs be some sort of legal relationship between the parties that satisfies the duty element in the tort cause of action.

    As a noteworthy point, the California legislature has proposed bills concerning this area of the law. A recent bill was proposed that would include novelty as a requirement for a breach of implied contract claim. As of yet, the requirement has not been introduced into California law.

    IMPLIED IN FACT CONTRACT CAUSES OF ACTIONS ARE DIFFICULT

    It is tough to win on breach of implied in fact contract claims for idea submission cases. The plaintiff has the burden of establishing by a preponderance of the evidence all the facts necessary to prove the elements of the cause of action. If the plaintiff cannot prove one of the elements, then the Court will find for the defendant.

    To recover for implied in fact contract, the plaintiff must prove:

    (1) That the plaintiff submitted his or her idea to the defendants and that the defendants received them,
    (2) That before the plaintiff submitted his or her ideas to the defendants, disclosure was clearly conditioned upon the defendants’ agreement to pay for those ideas,
    (3) That the defendants knew, or should have known, the condition upon which the disclosure was being made before the disclosure was in fact made, and
    (4) That the defendants voluntarily accepted the submission on the plaintiff’s terms and thereby implicitly agreed to pay the plaintiff of any ideas that they might use.

    CREATE A PAPER TRAIL

    No matter if you are a writer or a producer, you should create a paper trail memorializing all meetings and conversations in which ideas are exchanged. For example, if you are a producer and you were already working on a project that had the ideas and concepts of what another author pitches to you, it is important to memorialize the fact that you had a similar project in the works already and that you are not using the author’s ideas. Similarly, if you are a writer and you pitch an idea to a producer, it is important to memorialize the fact that if the producer uses your idea there is an expectation that you will be fairly compensated.

    As a script writer, you can take the following suggested steps to protect your ideas:

    (1) Fully write out all your ideas – the more detailed, the better;
    (2) Save all the drafts of your work;
    (3) Register your work with the Writers Guild of America (however, it is important to be aware that registration with the WGA has no legal effect, but it does add to the paper trail evidencing the date and history of your creation);
    (4) Register your work with the U.S. Copyright Office;
    (5) Memorialize all pitch meetings about scripts and treatments (this even includes telephone conversations);
    (6) Bring an attorney if you have an in- person meeting (it could also be an agent, manager, or a third party because it creates more of a business setting);
    (7) If you are sending an email to memorialize a pitch meeting, copy your lawyer, or agent, so it creates circumstances that show this really is a business submission; and
    (8) Make sure the cover of your treatment or script shows your WGA registration number, U.S. Copyright Office registration number, your name, your address, your agent, and your lawyer.

    GENERAL RULE: REGISTER WITH THE U.S. COPYRIGHT OFFICE IF YOU ARE SHARING YOUR WORK WITH OTHERS

    At the idea submission stage of the process, it has been the standard not to file for copyright registration with the U.S. Copyright Office. This is now wise. It is advisable to always register for copyright. WGA registration alone is not sufficient legal protection. Registration with the U.S. Copyright Office allows the Federal Court’s to have jurisdiction over a potential infringement action – WGA registration simply does not have any legal effect. Usually at the idea submission stage, the created work is merely in a treatment form. A treatment tells a story about a script in an abbreviated form. Writers tend not to register for copyright with the U.S. Copyright Office because the work is not final and will undergo many drafts. Rather, writers tend to only register with the WGA, which will give the treatment or script a number, seal it in an envelope, and store it in a vault for five years. This serves as evidence, but it does not have the legal effect as registering with the U.S. Copyright Office. As a very important general rule, if you are showing your work (whether it be a script, treatment, or any other creative work) to anyone – if you are sharing your work with others – you must protect your work by registering it with the U.S. Copyright Office.

    Now that we’ve covered the basics of how to protect your ideas, you can submit your ideas with an awareness of what steps should be taken.


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  • WHAT IS COPYRIGHT?

    BRIEF HISTORY

    The word “copy-right” essentially means the right to copy. Originally, copyright was a right only held by authors and it only covered copying. Copyright was developed from the U.S. Constitution which states: “The 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…” The key phrase here, is the exclusive right. Congress immediately passed the copyright law of 1790 which gave authors the absolute monopoly over who could make a copy of their creations in order to encourage them to create new works. Originally, copyright only lasted for a period of 14 years with an option to extend the right for another 14 years.

    COPYRIGHT RIGHT TODAY

    Today, copyright protection has expanded. Copyright law now gives authors a monopoly over much more than mere copying of their works. The exclusive rights of a copyright owner has expanded and evolved due to modern –day advances. Today, copyright protection lasts for much longer than 14 years. Also, today, the categories of works that are covered by copyright protections has expanded more than the original list of just maps, charts, and books.

    WHO IS THE COPYRIGHT OWNER?

    Copyright law states that the creator of a work is its author. This is true, however there are exceptions. The first exception is employment relationships. If the creator is an employee working within the course and scope of employment, then the employer is considered the author of the creative work. The second exception is a work for hire relationship. If the creator is not an employee but is an independent contractor or an independent person commissioned to write a script or create another category of creative work, and there exists a signed written agreement between the parties expressly stating that the work is a work for hire, then the author is the person or company who paid for the work to be done. There is a narrow list of works pursuant to copyright law that may be considered to be work for hire. These are:

    1. A contribution to a collective work;
    2. Part of a motion picture or other audio-visual work;
    3. A translation;
    4. A compilation;
    5. An instructional text;
    6. A test;
    7. Answer material for a test;
    8. An atlas; and
    9. A supplementary work.

     

    The concept of work for hire was developed as a result of the motion picture industry. In the early 1900’s, the early film entrepreneurs and movie moguls realized that they had to lobby for legal protection because there were so many creative components involved in the production of a film.

    COPYRIGHT PROTECTION INHERES AT THE MOMENT OF CREATION

    The moment that a creation takes on a tangible form, copyright inheres in the work. Prior to 1978, the work had to be registered with the Copyright Office and have a notice of copyright in order for it to be protected. This has since evolved. Copyright protection attaches automatically and immediately once a work is created and expressed in a tangible form. Copyright does not protect ideas. Copyright protects the embodiment of those ideas in a tangible medium. Once a creative idea is expressed in a tangible form, the creator has a monopoly over the uses of the work and has exclusive rights to that work. It is important to note that it is strongly encouraged that you register your work for copyright protection with the U.S. Copyright Office. Registration grants federal court jurisdiction in the case of copyright infringement and also grants certain presumptions to the copyright owner. Federal court jurisdiction also allows for special remedies such as injunctive relief and statutory damages in the case of a copyright infringement.

    HOW LONG DOES COPYRIGHT PROTECTION LAST?

    Today, copyright protection lasts for the life of the author plus 70 years. If the author is a corporation because the work was created in an employment relationship or because of a work for hire agreement, then the copyright protection lasts the shorter of 95 years from the day the work was published or 120 years form the day it was created. A work is published if it is presented to the public – no matter for charity or for profit.

    EXCLUSIVE RIGHTS OF COPYRIGHT OWNER

    Copyright protection grants to the owner certain exclusive rights. If any other person wants these rights, that person must get the permission of the copyright owner. There are four main rights that come into play:

    (1) The right to make copies,
    (2) The right to prepare a derivative work,
    (3) The right to distribute the work, and
    (4) The right to publicly perform the work.

     

    1. The right to make copies.

    Even making a single copy of a protected work is a violation of copyright law. There are exceptions, however, the biggest being the fair use exception. The core of copyright law still is the exclusive right of the copyright owner to makes copies of his or her own work. In order to make a copy, a person must get the permission of the copyright owner.

    2. The right to prepare a derivative work.

    A derivative work is a modification or alteration of an already existing work. Copyright law protects original works of authorship. For example, a derivative work can be a movie that is made from a script, a book, or another movie, or even a knock-off painting. In order to modify a work, permission from the copyright owner is required.

    3. The right to distribute the work.

    Distribution occurs when you make the copyrighted work available to the public. This can be done through selling the work, transfers of ownership, or licensing. If someone wants to distribute a copyrighted work to the public, that person must get the permission of the copyright owner.

    4. The right to publicly perform the work.

    Every time a movie is played in the theatres, aired on Netflix, or a song is played at a concert, that is a public performance of a work. The test for whether a work is being publicly performed is whether the public is invited. This is regardless of whether a fee is being charged or if it is for charity of for free. In order to perform a work to the public, permission is required from the copyright owner.

    Two other exclusive rights are important to note:

    1. The right to publicly display a work (which involves images), and
    2. The right to digital audio transmission of sound recordings.

     

    The types of creations expressed in tangible medium that are protected by copyright include: books, plays, songs, musical compositions, music recordings (even if the music is itself part of the public domain), photographs, paintings, sculptures, jewelry, choreography, computer programs, movies, scripts, treatments for scripts, and translations.

    CONCLUSION

    Now that we’ve covered the basics of copyright, including its history, its powers, and its protections, you can confidently start creating works and distributing them to the public with an essential knowledge of what factors to keep in mind when considering if your projects are being used, and enjoyed, fairly. Keep in mind that this is only the tip of the iceberg when it comes to the universe of copyright law.


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