Trademarks & Copyright for Photographers

Giselle Ayala Mateus, Esq.

PDF HANDOUT HERE!

POWERPOINT HERE

Whether you photograph weddings, capture senior portraits, or shoot products, understanding key concepts like intellectual property, copyright, and trademarks is an essential part of succeeding as a working photographer. Join Giselle Ayala to explore the core concepts of Copyright and Trademarks that every photographer should know. You’ll learn when and why to proceed with your legal strategy. You’ll also learn about common infringement issues many photographers face.

Contents

TRADEMARKS. 4

What is a trademark?. 4

What is the difference between trademarks, copyright and patents?. 5

What is a domain name and how is it protected?. 5

Types of trademarks. 6

Specimens and evidence of use. 6

Are you required to submit a specimen?. 6

How many specimens do I need?. 7

 When do I submit a specimen?. 7

What are the requirements for an acceptable specimen?. 7

common reasons why specimens are refused. 8

some examples of specimens. 9

How are trademarks protected?. 11

The Examination Process. 12

Is the Mark Registrable?. 12

Difficult marks, rarely registrable. 13

Will the Application Be Blocked by Prior Marks?. 13

Trademark Clearance Searches. 14

Will the Application Provoke a Claim?. 17

Benefits of Trademark Registration. 18

Nationwide exclusive rights. 18

Leverage in disputes. 18

Easier online enforcement. 18

Inclusion in USPTO’s online database. 18

Constructive priority for intent-to-use applications. 18

Registration symbol. 19

Collateral for securing loans. 19

Incontestability (after five years). 19

Customs enforcement. 19

Basis for foreign registration and priority. 19

Federal registration can be contrasted with Common law protection and State registration. 19

Copyright 21

What is the Purpose of Copyright? 17 USC §102. 21

Who Owns the Copyright to the Work?. 21

Scope of Rights for Visual Art AuthorS. 21

Duration of Copyright; 17 USC §302. 22

Why Register A WORK BEFORE THE US Copyright OFFICE?. 22

PUBLIC RECORD.. 22

Presumption of Ownership. 22

The Ability to Enforce YOUR RIGHTS by Filing a Lawsuit for Copyright Infringement 23

Eligibility for Statutory Damages, Attorney Fees, and Costs of Suit 23

In sum…copyright registration. 23

How to Register Copyright?. 23

Remedies for Copyright Infringement 23

How can photographers protect themselves?. 24

TRADEMARKS

What is a trademark?

A trademark is any word, phrase, symbol, design, sound, smell, color, product shape, group of letters or numbers, or combination of these, used by a company to identify its products and services and distinguish them from those of others.

Trademarks are important and valuable assets for both businesses and consumers. A trademark (of a “mark”) is a distinctive sign that allows a business to build public goodwill and brand reputation in the goods or services it sells.

Marks also help consumers identify the source of goods and services and make informed choices based on their experiences. In fact, marks are also symbols of quality and prestige.

Trade names are not the same as trademarks. Although many companies use trade names as their marks, trade names are corporate or business names. A trade name is the legal name of a company, the trademark is the symbol that distinguishes its products or services in the market.

  Practical Note

Many photographers make of their name their brand. However, many of them don’t know about the world of trademarks and fail to register them. By failing to register their trademark they take the risk of getting involved in expensive litigations to defend their rights.

What is the difference between trademarks, copyright, and patents?

Trademarks, copyrights, and patents protect different types of intellectual property. A trademark typically protects brand names and logos used on goods and services. Copyright, on the other hand, protects the rights of authors regarding the use, display, reproduction, and economic exploitation of their works of authorship, like artistic or literary works. Finally, a patent protects the rights over an invention.

For example, if you invent a new kind of blender, you would apply for a patent to protect the invention itself. You would apply to register a trademark to protect the brand name of the blender, and you might register a copyright for the TV commercial that you use to market the product.

What is a domain name and how is it protected?

A domain name is an electronic address where consumers or third-parties find a business or an artist. A domain name, in turn, is comprised of:

  • A top-level domain, which can be:
    • A generic top-level domain or gTLD (such as .com, .net, or .org)
    • A country code top-level domain or ccTLD, the use of which is quite popular outside the United States (such as .ca for Canada or .uk for the United Kingdom)
  • A second-level domain or SLD (which in many instances includes a trademark of a business or organization)

For example, for the website www.lego.com, the domain name is lego.com, the gTLD is .com, and the well-known LEGO trademark is the SLD, which indicates to consumers that the website is associated with the LEGO brand.

As opposed to trademarks, domain names are registered specifically in the United States. There are many registrars in and out of the US. Additionally, in contrast with US trademarks the registration of the domain name is necessary to use and protect the domain.

In regard to trademarks, a domain name is also important for businesses and artists, like photographers, especially because it helps trademarks to become stronger. Many businesses opt to “over register” domain names that correspond to their trademarks, usually including variations of their trademarks (together with generic or descriptive terms that correspond to their field of business), registering alternate spellings of their marks, or even registering common misspellings of their marks.

The purpose of this is basically to discourage third parties from registering confusingly similar domain names or engaging in “typosquatting,” which is a form of cybersquatting (creating sites under someone else’s brand or copyright) that targets Internet users who incorrectly type a website address into their web browser. Over registering often makes sense, as domain name registrations are inexpensive and certainly less expensive than being forced to take legal action against cybersquatters. In addition, this approach can help ensure that consumers who type the incorrect domain name will nevertheless be directed to the intended website.

Types of trademarks

Specimens and evidence of use

A specimen is a sample of your trademark as it is used in commerce. It is piece of evidence that allows the Examining Attorney of the USPTO to determine whether your trademark is being used in relation to the class or goods selected in the application for registration. A specimen must reflect the use of the trademark to promote, offer and distinguish your products in the market. Accordingly, it is real-life evidence of how you are actually using your trademark. The Specimen is what consumers see when they are considering whether to purchase the goods or services you provide in connection with your trademark. 

Are you required to submit a specimen?

There are four bases to file a trademark application, if your application is based on “use in commerce” or “intent to use,” you are required to submit a specimen. On the other hand, if the application is based on a foreign application or registration, or the application is filed under the Madrid Protocol, the applicant is not required to submit a specimen in order to register the mark. However, all registrants are required to submit specimens at other required intervals to maintain their registrations.

How many specimens do I need? 

If you are planning to register the trademark in several classes, you are required to submit a specimen for each class of goods or services. If the specimens are not effective the USPTO examiner attorney will issue a Notice of Action and request additional evidence of use. Thus, it is best to have the office review the specimen before filing them with the USPTO.  

When do I submit a specimen?

Use-in-commerce applicants

In the case of “use-in commerce” applications, the applicant must include a specimen with the initial filing. 

 Intent-to-use applicants

In the case of an “intent-of-use” application, the applicant must submit a specimen before the application is approved for publication by filing an Amendment of Allege Use (AAU), or After the Applicant receives a Notice of Allowance (NOA), by filing a Statement of Use (SOU). 

 After the trademark has been registered

Once your trademark has been registered, you must submit a specimen and a Section 8 or 7 Affidavit or Declaration of Use. Our office offers this service, if you have questions or concerns, please contact us. These declarations are filed between the fifth and sixth year after the registration of the trademark, and then every ten years from the registration date, during that tenth year, the twentieth year, and so on. 

 What are the requirements for an acceptable specimen?

An acceptable specimen must:

  • Be a real example of how you use your trademark in commerce in providing your goods or services (not a mockup, printer’s proof, digitally altered image, rendering of intended packaging, or draft of a website that shows how your mark might appear).
  • Show your trademark used with the goods or services listed in your application.
  • Show your use of your trademark (not used by someone else, such as press releases sent exclusively to news media).
  • Be an appropriate type of specimen-based on whether you have goods or services. 
  • Show your trademark used in a way that consumers would perceive it as a source indicator for the good or services. 
  • For website screenshots, a specimen must include the URL and date you accessed or printed the webpage.

common reasons why specimens are refused 

  • Your specimen does not show the trademark in your drawing.
  • Your specimen does not show trademark use with the goods or services in your application.
  • Your specimen does not show your own use of the trademark.
  • Your specimen is not in actual use in commerce.
  • Your specimen is not an appropriate type for your goods or services.

Some examples of specimens

Just Imagine to promote books for children 

LNDR to promote sports clothes

Just Do It (tag) to promote tennis

RE ROUGH ENOUGH for wallets and bags

NOT JUST A BRAND. A LIFESTYLE. For sports clothing

How are trademarks protected?

Under US law, two basic requirements must be met for a trademark to be eligible for legal protection: it must be in use in commerce, and it must be distinctive. The Lanham Act provides federal protection for distinctive marks that are used in commerce.  See 15 U.S.C. §§ 1051 et seq. 

Although registration is not a prerequisite to federal trademark protection, registered marks enjoy significant advantages over unregistered marks. A federal trademark registration is obtained by filing an application, along with the requisite fee, with the U.S. Patent and Trademark Office (USPTO).

An application may be filed on either the Principal Register or Supplemental Register and is examined/prosecuted in the USPTO by one of many staff trademark attorneys. If there are any grounds for refusing an application, the examiner will raise them in an Office Action. The examiner’s objections must be fully resolved or withdrawn for the application to proceed to publication.

Once a Principal Register application is published, third parties may object to the application by filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB). The application will proceed to registration if no opposition is filed or if an opposition is withdrawn or successfully defended. Supplemental Register applications proceed directly to registration once published.

The Examination Process

The application is examined in the USPTO by one of many staff trademark attorneys. An examiner can reject the application on various grounds:

  • Likelihood of Confusion
  • Sound
  • Appearance
  • Meaning
  • Commercial Impression
  • Broad Description of Goods
  • Broad Description of Services
  • Merely Descriptive
  • Primarily Geographically Descriptive
  • Primarily Geographically Deceptively Misdescriptive
  • Primarily Merely a Surname
  • Ornamentation
  • Failure to include a disclaimer
  • Lack of a good Specimen

The application proceeds to registration only if the examiner approves the application. Note, however, that a Principal Register application must be published for opposition following the examiner’s approval and proceeds to registration only if:

  • No one files an opposition proceeding –or–
  • An opposition is filed but is withdrawn or successfully defended.

If the application is filed on the base of an intent to use, it proceeds to registration only after proof of use is filed. Otherwise, the application proceeds to registration promptly after it is published and is not opposed. Registrations that are successful provide useful trademark protection that goes beyond the protection afforded by common law rights derived from the mere use of the mark. 

Is the Mark Registrable?

Marks must be distinctive to be registered on the Principal Register, either inherently or through acquired distinctiveness. Acquired distinctiveness exists for marks that have become well known to consumers. In this case, the application must be supported with strong evidence. Marks that do not meet the necessary level of distinctiveness will be rejected.

  • Arbitrary, fanciful, and suggestive marks are inherently distinctive.
  • Descriptive terms are not inherently distinctive but may acquire distinctiveness. Then, the might be registered on the Principal Register.
  • Generic terms are not distinctive and can never be registered.

Difficult marks, rarely registrable

Generic terms.

Generic terms for the goods or services identified in an application are not distinctive and thus are never registrable.

Descriptive terms.

Descriptive terms for the goods or services identified in an application, while not considered inherently distinctive, may be registered on the Principal Register if they have acquired distinctiveness. Otherwise, they are registrable on the Supplemental Register. Note, however, that suggestive terms that imply some information about the product or service, but which do not directly describe it are inherently distinctive and registrable on the Principal Register.

Geographically descriptive terms.

Geographically descriptive terms are terms that identify a place where the goods or services originate. These terms are not considered inherently distinctive but may register on the Principal Register upon acquiring distinctiveness. Otherwise, they are registrable on the Supplemental Register.

Surnames.

Surnames are generally not inherently distinctive but may acquire distinctiveness. If acquired distinctiveness is demonstrated these marks may be registered on the Principal Register. Otherwise, they are registrable on the Supplemental Register.

Deceptive terms.

Deceptive terms are not registrable material.

Certain slogans or taglines.

Multi-word slogans or taglines may be rejected as insufficiently distinctive, even if they are not literally descriptive, if they consist of common phrases.

Certain logos or designs.

Logos or designs consisting of simplified depictions of the product, or a product feature may be deemed descriptive.

Product configurations.

Three-dimensional configurations of entire products are always deemed inherently non-distinctive and are only registrable on the Principal Register with proof that they have acquired distinctiveness.

Will the Application Be Blocked by Prior Marks?

During the examination process, the USPTO trademark attorney is required to perform a search of the USPTO database of existing registrations and pending applications for prior similar marks, or blocking citations, and to cite such marks as bars to registration of the applied-for mark.

The test is whether a typical purchaser is likely to be confused that the respective goods/services originate with or are sponsored by the same party, based mainly on:

  • Similarity of the marks in sound, sight, or meaning.
  • Degree of relatedness of the goods or services
  • The USPTO attorney only looks at information listed within the applications and registrations. The examining attorney does not consider real-world factors not identified in the USPTO filings, for instance:
  • That the marks are always used together with other marks.
  • That the products are actually sold in very narrow trade channels not stated in the application or registration.
  • That the mark owners use the respective marks in widely separated geographic areas.

While these additional confusion-avoiding factors are considered by a court applying the likelihood of confusion test in a trademark infringement suit, they are not considered in the USPTO. Accordingly, a mark may be unavailable for registration, but available for use.

Trademark Clearance Searches

To assess the likelihood that an application or registration will be cited against a client’s proposed mark, and to also confirm that the mark is available for use without infringing prior rights of others, it is necessary to conduct trademark clearance search prior to filing an application.

The search is designed to identify third-party trademarks, both common law and registered, that are identical or similar to the proposed trademark for the same or related goods and/or services. Conducting such searches can help avoid unnecessary costs, objections, and possibly lawsuits down the line by parties with similar or identical marks.

There are two types of trademark clearance searches:

  • Preliminary (or knock-out) searches
  • Comprehensive searches

Preliminary Searches

A preliminary search, sometimes called a database or knock-out search, is an inexpensive search to disclose obvious blocks to use or registration of a mark. This type of search identifies identical or near-identical marks in a computer database of federal trademark applications and registrations.

The database can be searched for all the following:

  • Words
  • Marks consisting of:
    • Letters
    • Numbers
    • Punctuation marks
    • Any combination of the above
    • Design matter (such as a logo featuring an alligator or a design of interlocking circles)

It is possible to search for designs because the USPTO assigns one or more numerical codes to each application or registration for design marks, or for a mark that contains a word and design, to identify the design matter in the mark.

A skilled searcher can query the database by entering relevant design codes and Restricting the search results.

  • International class number
  • Particular keywords in the goods or services list

Comprehensive Searches

If a preliminary search yields no potential issues, then you should advise the client to proceed with a full and comprehensive search. A full search, includes a broad search of USPTO applications and registrations, as well as searches of:

  • State registrations
  • Trade names (i.e., company names and DBAs)
  • Domain names
  • Other common law mark sources

Before proceeding with a full search, it is necessary to as much information as possible about the mark and how the proposed mark will be used given.

The Likelihood of Confusion Inquiry

A number of factors are pertinent to the likelihood of confusion inquiry, including, but not limited to, the following:

  • The strength of the proposed mark
  • The degree of similarity between the respective marks
  • The degree of relatedness of the respective products/services
  • The sophistication of the relevant consumers
  • The channels of trade in which the products/services are sold or offered for sale
  • Whether the proposed mark will be used with another mark (such as a house mark)
  • Whether prior similar marks are:
    • Diluted (i.e., many prior similar marks coexist in a crowded field)
    • Inherently weak (e.g., marks with a prefix NUTRI for dietetic foods or DURA for durable products)

In evaluating search results, it is useful to know if the owner of a fairly close prior mark has policed its mark aggressively, such as by filing:

  • Opposition proceedings against applications for similar marks at the Trademark Trial and Appeal Board (TTAB)
  • Cancellation proceedings against registrations for similar marks at the TTAB
  • Lawsuits in federal court
  • Other legal research tools can identify reported or unreported cases in which a party sued for infringement of its mark, such as:
  • The print or online versions of Shepard’s citations
  • The PACER database of federal civil actions (which can be queried for cases filed by particular parties under the trademark infringement code).

In addition, conducting internet research about relevant references revealed in a search may help to assess the risk a reference may present. In some cases, it may be helpful to instruct an investigator to research a particular reference in order to learn more about whether, where, and how the mark is in use.

It is also important to keep in mind that, since trademark rights can be derived from use without registration, there is no way to ensure that a search report will include every potentially conflicting mark. You should thus advise your client that it is possible that potentially conflicting marks may exist but may not be picked up in the search report, but that searches usually disclose the vast majority of such marks.

Crowded Field Considerations

If there are many prior similar marks, they are only entitled to a narrow scope of protection and, as such, you might be able to avoid a blocking citation based on such marks (or remove a blocking citation by argument). At the same time, if a crowded field exists an applicant obtains a registration, the client’s registration will likewise be weak and only entitled to a narrow scope of protection. Such a registration may be of little value and not worth the cost of obtaining it.

Timing / Length of Use Considerations

If an applicant has not yet used its mark but intends to use the mark in U.S. commerce within the next several years, it may take advantage of the intent-to-use application. This allows an applicant to reserve a mark for future use in the United States, well prior to launch, while market research and product development are ongoing. The filing date is deemed the constructive first use date, giving the applicant an earlier date on which to rely for priority purposes. This locks in the applicant’s rights at the time of filing (so long as the application matures to registration) in case there is an intervening filer or user between the time the applicant files and starts using its mark.

An intent-to-use application will not mature to registration unless and until the mark is actually used in connection with commercial products or services in the United States and the applicant files proof of use—including a specimen of use—in the USPTO.

An applicant has until three years after the application is allowed (following publication) to prove use of the mark, provided that the applicant files an extension of that deadline every six months, and it usually takes roughly one year or more before an application is allowed. Thus, the average intent-to-use applicant will have about four years to prove use of the mark; otherwise, the application will be deemed abandoned.

Will the Mark Be Used in a Trademark Manner?

The USPTO will reject registration of a mark that is not used in a trademark manner. For example, the mark AJAX CORPORATION would be considered an unregistrable “trade name” if, in fact, that is the company name of the applicant and it appears on the required specimen of use only above the applicant’s address. Terms used as model numbers or grade designations, usually following another trademark, are also considered unregistrable.

Other notable examples of non-trademark use

Titles of single works of authorship.

Trademark registrations cannot be obtained for the names of single books, movies, or other works of authorship. However, the USPTO allows the titles of single video games and single mobile apps to be registered. Although the USPTO generally will not grant a trademark registration for the title of a single work, note that such a title can be protected under common law if it has acquired secondary meaning.

Titles of a series of books or movies, however, such as STAR WARS, are eligible for trademark registration. Similarly, titles of continuing television shows, such as THE BIG BANG THEORY, are considered service marks for a type of entertainment service and are eligible for registration.

Ornamental matter.

Marks which constitute a prominent part of a product, such as words on a bumper sticker or a design or phrase prominently printed on the front of a T-shirt, may be rejected on grounds that they are “merely ornamental,” rather than trademarks.

To the great relief of the licensing industry, however, a prominent logo or word mark on a T-shirt, cap, lunch box, or on other typical licensing products usually is considered a trademark if the mark is already in use or is registered as a mark for some other product or service such that consumers already perceive it as a mark.

Will the Application Provoke a Claim?

Filing a trademark application puts the world on notice that the applicant is using or intends to use a mark on specific goods and/or services and may put the applicant at risk of a third-party claim.

Because a registration creates nationwide rights, many prior owners view another party’s application for a similar mark as particularly threatening, even though the prior owner might not try to police every small use.

A prior owner may request that the applicant withdraw the application or even object to the applicant’s use (not just registration) of the mark. Indeed, there are trademark watching services that review all of the applications filed and published for opposition in the USPTO and generate watch notices of potentially conflicting applications for their subscribers. Thus, filing an application may wake a sleeping dragon.

By contrast, a mark which is merely used, without an application, is much more difficult to detect and might not come to the attention of a prior trademark owner. A small or local user, who has no strong interest in obtaining a registration, might find it prudent to fly under the radar and not file an application for that reason, especially if a clearance search identified a prior party with a close registration. Prior parties with famous marks are especially likely to react aggressively.

Benefits of Trademark Registration

Obtaining a U.S. federal trademark registration on the Principal Register provides numerous benefits for a trademark owner, including:

Nationwide exclusive rights.

A registration gives the owner the exclusive right to use the mark nationwide for the goods/services listed in the registration (absent a federal registration, trademark rights are limited to the geographic area in which the owner sells or distributes the products/services). 15 U.S.C. §§ 1057(b) and 1115(a).

If the owner actually uses the mark in a small geographic location (as opposed to nationwide), the owner will reap the benefit of a priority date calculated from the filing date of the application (rather than the actual later first use date of the mark in an expanded geographic area). 15 U.S.C. § 1057(c). However, the owner might not be able to win an infringement suit until it actually sells in the infringer’s geographic area.

Leverage in disputes.

A registration makes demand letters to infringers and lawsuits against infringers more convincing. For guidance on demand letters and a sample letter, see Cease and Desist Letters in Trademark Disputes: Drafting the Letter and Cease and Desist Letter (Trademark Infringement). For an overview of federal trademark litigation, see Trademark Infringement and False Designation of Origin Claims, Remedies, and Defenses.

Easier online enforcement.

Similarly, owners of federal registrations have an easier time enforcing their rights over the Internet, including actions against cybersquatters and infringement on social media sites. For guidance on cybersquatting claims and domain name disputes, see Domain Name Disputes. For a sample cease and desist letter, see Domain Name Cease and Desist Letter.

Inclusion in USPTO’s online database.

Registered marks are included in the USPTO’s online database, which makes the mark likelier to appear in search reports and deters third party adoption of a confusingly similar mark, and which also allows the USPTO to cite the mark as a bar against another party’s application. See Will the Application Be Blocked by Prior Marks? above.

Constructive priority for intent-to-use applications.

During the gap between the time an application is filed, and the time use begins, an intent-to-use application locks in rights to the mark at the time of filing, assuming that the application matures to registration (by preventing third parties from obtaining prior rights if they begin use or file an application after you have filed).

Registration symbol.

Having a registration allows you to use the federal trademark registration symbol (®) to deter copying (or the words “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”). 15 U.S.C. § 1111.

Collateral for securing loans.

A registration can be used as collateral for securing a loan and also makes the mark more valuable and saleable. For guidance on trademark security interests and a sample agreement, see Perfection Outside Article 9: Vessels, Aircraft, Intellectual Property, and Life Insurance Policies and Trademark Security Agreement (Short Form).

Incontestability (after five years).

A trademark may become incontestable (i.e., immune to challenge on inherent registrability and some other grounds) if the mark has been used continuously for five years after registration and the owner files a claim to incontestability under Section 15 of the Lanham Act in the USPTO. 15 U.S.C. §§ 1065 and 1115(b). See Trademark Registrations: Maintenance and Renewal — Claim of Incontestability.

Customs enforcement.

Under Customs regulations, 19 C.F.R. § 133, federal registration allows the owner to record the mark with U.S. Customs to help prevent the importation of any infringing or counterfeit goods from abroad (at least to the extent that Customs detects them and then seizes the goods). See Policing and Enforcing Trademarks — United States Customs and Border Protection.

Basis for foreign registration and priority.

A U.S. trademark application or registration can be used as a basis to obtain registration in many foreign countries, including possible earlier rights by claiming priority (if the U.S. application was the owner’s first filing for the mark and the foreign application is filed within six months of the U.S. application).

A federal trademark registration on the Supplemental Register (the register for inherently non-distinctive marks) also provides some limited benefits. Specifically, the owner of a Supplemental Registration can:

  • Use the trademark symbol “®”
  • Block another party’s application for an identical or near identical mark.

However, a Supplemental Registration is an acknowledgment that the mark is not inherently distinctive, and the mark is not protectable in a cancellation proceeding or in an infringement suit unless and until it acquires distinctiveness through long use.

Federal registration can be contrasted with Common law protection and State registration.

Federal Registration vs. Common Law Protection

A common law trademark is a mark that is in use in the United States but is not registered. Common law trademark owners have legitimate rights in their marks, as registration is not a requirement for ownership or protection in the United States. Under Section 43(a) of the Lanham Act, a common-law trademark user can sue for infringement. Prior use is also a basis for an opposition proceeding against an application in the USPTO.

However, common law protection, in an infringement suit, is limited to the geographic area in which the mark is used (thus, a good-faith user in a distant geographic area can develop its own independent rights in the same mark). A federal registration, by contrast, reserves nationwide rights in the mark and provides various other benefits, as discussed above.

Federal Registration vs. State Registration

Trademark owners can obtain a federal registration and/or state registration(s) for their marks. State registration systems in the 50 states, the District of Columbia, and Puerto Rico coexist with the federal registration system. State registrations are usually obtained by filing an application with the appropriate office in the state government (typically in the Office of the Secretary of State) for a much smaller fee than with the USPTO. State registrations are granted with little or no examination.

However, state registrations usually create no substantive rights beyond those created under the common law by use of the mark. A federal registration is thus generally far preferable, if available. There are situations, though, where having a state registration in addition to a federal registration provides material benefits. Furthermore, if a federal registration is unavailable (e.g., because the USPTO will not register marks for marijuana), obtaining a state registration (or a registration in a U.S. territory) is one way to make sure that the owner’s mark appears in full search reports.

Copyright

What is the Purpose of Copyright? 17 USC §102

The basis for copyright protection for works of authorship comes directly from the U.S. Constitution. In consequence, the primary purpose of copyright is to promote arts and to reward authors, through the provision of property rights and the exclusive privilege of exploiting their works economically and making those works available to the public to enjoy.

While copyright law is intended to serve the purpose of enriching the general public through access to creative work, it is worth noting that the copyright imposes no obligation upon creators to make their copyrighted works available. Accordingly, an unpublished work is also entitled to protection as a published works are.

Copyright protects an author’s original works that have been fixed on any tangible medium of expression (e.g., pictorial and graphic works)

It does NOT protect ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries.

Who Owns the Copyright to the Work?

  • The author(s) of the work has the initial copyright in the work.
  • The employer is considered the author and has the initial copyright of the work if the work is made for hire, unless parties agree otherwise in writing.
  • The author has the copyright in a contribution to a collective work. The owner of the copyright in the collective work can only reproduce or distribute the contribution as part of the collective work.

Any of the exclusive rights under copyright may be transferred and owned separately; the transfer must be recorded in writing

Scope of Rights for Visual Art AuthorS

Under the copyright law, authors of visual art are entitled to several rights, including but not limited to:

  • Rights of attribution and integrity.
    • Claim authorship of the work
    • Prevent the use of his/her name as author of work he/she did not create
    • Prevent the use of his/her name as author of his/her work if it has been distorted/modified/mutilated such that it would be prejudicial to the author’s reputation.
    • Prevent his/her work from being distorted/modified/mutilated such that it would be prejudicial to the author’s reputation.
    • Prevent his/her work from being destroyed, whether intentionally or grossly negligently, if the work is of recognized stature.
  • Co-authors of a joint work of visual art are co-owners to the rights of attribution and integrity.

Exceptions:

  • If a work of art has been modified due to passage of time.
    • If a work of art has been modified as a result of conservation or of the public presentation, unless the modification was due to gross negligence.

Duration of Copyright; 17 USC §302

For works created on or after January 1, 1978, copyrights generally last until 70 years after the author’s death.

Why Register A WORK BEFORE THE US Copyright OFFICE?

In the first place, it is worth explaining that Registration is not a condition of copyright protection. However, registration greatly enhances the value of an author’s work. Moreover, there are several ways registration benefits an author.

PUBLIC RECORD

As a result of the copyright registration, a public record of copyright ownership is created. An author is a better position if he can protect his work demonstrating copyright ownership. Ownership is often at issue in disputes over copyright enforcement. Additionally, even if an alleged infringer is not claiming copyright ownership or authorship, it is the original author’s burden to prove that he is the rightful copyright owner.

Additionally, by creating a public record of copyright ownership, an author protects his works against a potential infringer. In the case of someone who is sophisticated enough to check copyright registrations, a public record demonstrating a claim of copyright may deter unlawful conduct.

Presumption of Ownership 

Courts have held that registration before, or within five years of, publication of a work establishes prima facie evidence of the validity of the copyright claim of an author and the facts stated in the registration certificate. In other words, copyright is presumed, and anyone challenging ownership will have the burden to demonstrate otherwise.

This presumption can be particularly valuable when an infringer is causing serious, irreparable harm and the copyright owner needs an immediate court order directing the alleged infringer to stop its unlawful behavior.

The Ability to Enforce YOUR RIGHTS by Filing a Lawsuit for Copyright Infringement

One of the most valuable benefits of copyright registration is the ability of the author to file a lawsuit for copyright infringement. A copyright owner cannot file a lawsuit to enforce or protect its copyrights until the U.S. Copyright Office has issued a registration.

It usually takes about seven months to issue a registration after an application is filed. However, it might sometimes take shorter if there is a basis to make a request to the Copyright Office. Although expedited consideration can be requested (at far more cost), that additional time can be extremely costly, especially when the infringer is causing serious harm.

Eligibility for Statutory Damages, Attorney Fees, and Costs of Suit

If an author acquires a copyright registration before infringement takes place (or within three months after publication of the work) the copyright owner may be eligible for an award of statutory damages. This means that, once copyright infringement is demonstrated, there might be no need to prove damages.

This benefit can be extremely valuable, especially considering that, damages in a case of copyright infringement can often be difficult to prove.

In sum…copyright registration

  • Creates a public record of the copyright.
  • The registration will be considered prima facie evidence if the registration occurs within 5 years of publication.
  • Creates the right to place a notice of copyright on publicly distributed copies of the work.
  • If notices of copyright are placed on those copies, the defendant will be unable to claim the defense of innocent infringement to mitigate damages during a copyright infringement lawsuit

How to Register Copyright?

The copyright owner or author of a work may register his copyright claim by meeting three requirements: payment of an application fee, filing of the application and deposit a copy of the work at the Copyright Office.

Remedies for Copyright Infringement

A copyright infringer may be subject to both civil and criminal sanctions. Additionally, after obtaining copyright registration, a copyright owner may seek monetary damages and loss profits, attorneys’ fees, and an injunction.

If an infringement is willful and “for purposes of commercial advantage or private financial gain,” or the infringement involves the willful reproduction or distribution of multiple copies with a value of more than $1,000 during a 180-day period, then the federal government may choose to bring a criminal copyright infringement case against the infringer.

How can photographers protect themselves?

  • Register the copyright of the work with the Copyright Office
  • After registration is complete, place a notice of copyright on publicly distributed copies
  • If publishing online:
    • Use watermarks for your work
    • Embed your copyright information into the image
    • Upload your work only to the image sharing websites with terms and conditions you agree with.
    • Consider posting at a lower-resolution, posting only part of the work.
    • Embedding multiple layers into your work that make it difficult to copy

You may also like…

IP and Compliance Guiding Materials

IP and Compliance Guiding Materials

Protect your IP. Basically, intellectual property is any product or work that resulted from original thought. IP assets are some of the most important assets of entrepreneurs, artists and businesses. IP exists in the form of manuscripts, designs, artwork, your website...

Business Guiding Materials

Business Guiding Materials

Forming a business with a solid foundation is challenging. That is why we have prepared these guides, to give you the tools you need to navigate the formation of a solid business. Once you are ready call us to start!What to Consider before Doing Business with...

Immigration Law Guiding Materials

Immigration Law Guiding Materials

It can be very confusing when it comes to obtaining legal status, naturalization, or immigration in the US. Ensuring accuracy and taking the right steps are critical to being approved. That is why we have prepared these guides to give you the tools you need to...

Temporary Protected Status for Ethiopia

Temporary Protected Status for Ethiopia

The Department of Homeland Security announced today the TPS Ethiopia’s designation. According to the notice issued by the Secretary of Homeland Security Alejandro N. Mayorkas the designation of Ethiopia for TPS is for a period of 18 months. Those who want to apply for...

The use of trademarks in social media

The use of trademarks in social media

Nowadays, everyone uses social media to promote services or sell products. The use of social media allows trademark owners (small businesses, artists, influencers) to reach a great number of potential clients. However, the use of trademarks in social media also...

English
CALL NOW GAM LAW OFFICE