No One Said It Would Be Fun

Carla Ulbrich is an extremely talented singer-songwriter. In her song “If I Had the Copyright,” she speculates about how rich she would be were she to own the copyright on the word “fuck.”

How will I ever educate the world about intellectual property when a self-described professional smart aleck disseminates false information?

“What false information is conveyed in Ms. Ulbrich’s song?” I hear you ask.

Well, first, one cannot get a copyright for a single word. So there’s that. And if you have a copyright on a work titled “Fuck” that would not result in a royalty payment each time the word is spoken.

For example, Lady Crush owns the copyright on the song “Fuck” and no one is paying her a royalty when they articulate their feelings about the number 7 train.[1]

“Perhaps the song should have been titled ‘If I Had the Trademark’,” I hear you suggest hoping to shut me up.

‘Fraid not. Aside from completely destroying the song’s meter, having trademark rights in the word FUCK still wouldn’t result in royalty income sufficient to allow one to “retire on Brooklyn alone.”

There are currently five live applications to register the word “fuck” as a trademark.[2] If and when one of those becomes a registration, it doesn’t mean you’ll have to pay the owner a royalty for dropping the F bomb. It just means you can’t use it as a brand to sell goods or services that are similar to the goods and services in the registrations.

Truth is rarely as entertaining as Ms. Ulbrich. Such is life.

 

 

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[1] Title 17 USC §106: “Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following: (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.”

[2] As of October 16, 2018, there are applications to register FUCK for: alcoholic beverages; clothing; snow globes; and toys.

What Are All Those Symbols ®©™?

We see them all the time, everywhere we go. But what do all those symbols mean?

Trademark Symbols[1]

® – The “R in a circle” stands for “registered trademark.” A person or company using this symbol has trademark rights that are registered with either the United States Trademark Office or a trademark office of another country or jurisdiction (like the European Union).

™ – This stands for “trademark.” It means the person or company has trademark rights that may or may not be registered.

SM  – This stands for “servicemark”. It’s basically the same as ™ but for services instead of products.

Copyright Symbol[2]

© – This is the copyright symbol. It means that the person or company is claiming copyright. This symbol is used whether or not the copyright is registered.

Should I Be Using Them?

Yeah, you really should.

You should use the copyright symbol on all copies of copyrighted works. Here’s how I use it:

2019 © Berdinis Law P.C.

cropped-bee-only1You should use a trademark symbol on all your trademarks. If you have an UN-registered trademark, you should use the ™ (or SM). If you have a registered trademark, you should use ®.

SuperDry copy 2

Some companies, like SuperDry® really go all out in featuring the symbol.

Screen Shot 2018-09-04 at 2.43.58 PM.png

Lately, some companies don’t include the symbol because they feel it interferes with the look and lines of their mark. When you’re as famous as Google®, you’re welcome to lose the ®.

That wasn’t so bad, was it?

 

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[1] A trademark is a word, short phrase, design, etc. used to let people know the source of goods or services. Nike® is a trademark for athletic shoes. Google® is a servicemark for internet search services. A trademark can be one word, a few words or (rarely) lots of words. It can be a design, alone or with words. It can also be a sound or a smell or anything else that identifies a source of goods or services.

Trademark rights allow you to stop other people from using your trademark or a trademark that’s “confusingly similar” to your trademark.

[2] Copyright protects “original works of authorship”. This includes literary, dramatic, musical, and artistic works. The 1976 Copyright Act gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

Trademark’s Cousin: Copyright

Trademarks are my passion, but when cool stuff happens in copyright, I just have to write about it. [1]

What Happened?

Robert Davidson is the creator of the Lady Liberty statue at the New York-New York Hotel & Casino in Las Vegas.

In 2010 the United States Postal Service inadvertently selected a photograph of Davidson’s statue to use on its Forever® stamp. The Postal Service thought it was a picture of the actual Statue of Liberty.[2]

Davidson sued the Postal Service for infringing his copyright.

Everyone agreed that the image on the postage stamp was of Davidson’s statue but the Postal Service argued its use wasn’t infringing because:

  • Davidson’s statue isn’t entitled to copyright protection; and
  • The Postal Service’s use was “fair use” under the Copyright Act. [3]

The Statue is Entitled to Copyright Protection

The Copyright Act protects sculptural work derived from another work as long as its original and contains “nontrivial expressive variation.” [4] Davidson testified at length about how he had given the statue’s face a fresh look, modeling it on his mother-in-law.

The court found that the Postal Service used the image of Davidson’s statute specifically because of the differences Davidson made to the statue’s face.

The Postal Service’s Use is Not Fair Use

The Postal Service’s “use of the image on its . . . workhorse stamp, printing billions of copies and selling them to the public as part of a business enterprise . . . so overwhelmingly favors a finding of infringement that no fair use can be found.”[5]

This little mistake cost the Postal Service $3,554,946.95 + interest + legal fees.

Bottom line: Using someone else’s intellectual property is a really big no-no.

 

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[1] Trademark rights protect your brand. Copyright protects original works of authorship.

[2] Judge Eric G. Bruggink of the U.S. Court of Federal Claims described the selection process like this: Terry McCaffrey, the manager of stamp development at the time, “initially narrowed his selection to . . . three images . . ., one of which was of plaintiff’s statue, a photograph of the [statue’s] face taken by Raimund Linke. Mr. McCaffrey . . . did the subsequent culling by himself over the course of a single afternoon. He then . . . obtain[ed] digital image files that he could work with to make his final selection. The photograph of plaintiff’s sculpture came from Getty Images (“Getty”). Mr. McCaffrey did not realize that it was not of the New York statue. The other two pictures, from other vendors, were of the original statue.” Opinion of the U.S. Court of Federal Claim, Case No. 13-942C at page 10 (July 29, 2018).

[3] 17 USC §107. Here’s a great way to understand “fair use”: Everyone always thinks their use is fair use but it almost never is. Literally, not once has it been fair use when one of my clients has used copyrighted materials thinking it was “fair use.”

[4] 17 USC §102(a)(5). Shrock v. Learning Curve Int’l, Inc., 586 F.3d 513, 521 (7th Cir. 2009).

[5] Here are the reasons the court gave for finding that the Postal Service’s use was not “fair use.”

  • The “purpose and character” of the Post Office’s use was commercial.
  • The “nature” of the copyrighted work as a “replica” favors neither party.
  • The “portion used” was only the face of the entire statue but that was the part that was most original.
  • The “effect of the use” did not result in any revenue lost to Mr. Davidson because there was no ready market for images of the statue’s face. For the Post Office.

Opinion at pages 21-24.

 

Featured image By user: Flicka [GFDL or CC BY-SA 3.0 ], from Wikimedia Commons

When Can I Use the Mouse?

So: When can I use an image of Mickey Mouse® in my advertising?

Never: You’ll never be able to use an image of Mickey Mouse in your advertising.

Really?: Never is a very long time.

Okay: You’ll be able to use Mickey Mouse when Disney® stops using Mickey Mouse and then all the kids who were alive when Disney was using Mickey Mouse have grown old and died. And their kids, too. And maybe their grandkids.

But why?: At some point the copyright will run out, won’t it?

Hahaha: Yeah, someday the copyright will run out on Steamboat Willie, but that has nothing to do with what you asked.

But: Why not?

Because: Copyrights run out but trademarks never die, unless the trademark owner stops using the trademark and it fades from the public’s memory as a trademark. Hence, my comment about grandkids.

Hmmm: My ad is very funny. Maybe it will pass as parody.

Fat chance: Parody’s allowed only when the interests of free speech outweigh the interests of the trademark owner. That’s almost never true with advertising, which traditionally has very low free-speech interests.

But: That doesn’t seem fair to me.

OK: Think about it this way. Disney has spent decades and millions of dollars promoting its goods and services using the mouse. Why shouldn’t they get the full benefit of their investment? Why should you be allowed to piggy-back on their brand recognition to sell your stuff?

Well: When you put it that way . . .

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Protection of Clothing Designs

The U.S. Supreme Court recently ruled in the Star Athletica v. Varsity Brands case, which involved copyrights for designs on cheerleading uniforms.

The Court ruled in favor of Varsity Brands (the owner of the copyrights), but fashion designers shouldn’t get too excited. The ruling doesn’t expand their rights all that much.

Think of it this way:

  1. It’s always been true that a fabric design CAN be copyrighted.
  2. It’s always been true that a dress design can NOT be copyrighted.

All the Court said is that Varsity Brands’ copyrighted designs on the fabric of their uniforms are more like statement 1 (rather than statement 2) and the court should hold a trial to determine whether Star Athletica’s cheerleader uniforms infringe on Varsity Brand’s copyrights.

The ruling does NOT mean that the cut, shape, style, or fit of a piece of clothing can be protected through copyright. Here’s what the court said:

“[T]he only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric. [Varsity Brands has] no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions . . .. They may prohibit only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.”

Clothing designers are going to have to continue to rely primarily on the strength of their brands, the quality of their goods, and the loyalty of their customers.

Working Title

Can the title of a movie be a trademark? What about a book or play title?

“The title of a single creative work is not registrable”,* says the Trademark Office.

Copyright is what protects the content of things like books, movies and plays. If you don’t want someone printing off copies of your book or selling bootleg copies of your movie, you’ll be using copyright, not trademark rights, as the basis of your claim.

So does that mean you can start selling Harry Potter® T-shirts?

See that little ®? You know that means you can’t do it. Because like everything in the law, it’s more complicated than it seems.

First, you can have trademark rights for the name of a series of books (or a series of movies or a TV series).  HERE’S LUCY® was registered in 1969. SESAME STREET® was registered in 1973. STAR WARS® was registered in 1979.

Second, you can certainly have trademark rights for all the promotional items that are sold in connection with your book, movie, play, or TV show. There are US trademark registrations for marks containing HARRY POTTER® in fourteen different classes for everything from balloons to dried fruit. So, don’t even think about selling that Breaking Bad chemistry set.

If you’re an author or a film maker, you’ll mostly rely on copyright to protect your work, but you should also consider registering a trademark if you plan to have a series or do merchandising.

 

*Trademark Manual of Examining Procedure, Section 1202.08.

 

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