FAQ: Questions and Answers

[back to notice text] Question: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this dispute? Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: it?s nasty. The first thing to do is take a deep breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writer?s perception that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl, you?re never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994). [back to notice text] Question: What are the benefits of federal trademark registration? Answer: Federal registration of a trademark has several advantages including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. Registration Provides the Following: 1. Constructive notice nationwide of the trademark owner's claim. 2. Evidence of ownership of the trademark. 3. Jurisdiction of federal courts may be invoked. 4. Registration can be used as a basis for obtaining registration in foreign countries. 5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods. [back to notice text] Question: What is a trademark? Answer: A trademark is a "mark" (word, phrase, symbol, design, mark, device, or combination thereof) used to identify the source of a product. Trademarks allow consumers to evaluate products before purchase. [back to notice text] Question: What is trademark infringement? Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers. [back to notice text] Question: What are the limits of trademark rights? Answer: There are many limits, including: Fair Use There are two situations where the doctrine of fair use prevents infringement: The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold. Nominative fair use This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant?s product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements: his/her product or service cannot be readily identified without pointing to the registrant?s mark he/she only uses as much of the mark as is necessary to identify the goods or services he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant Parody Use Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody. Non-commercial Use If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially. Product Comparison and News Reporting Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt. Geographic Limitations A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy?s Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy?s Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused. Non-competing or Non-confusing Use Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark. [back to notice text] Question: What implication does alleged confusion have on claims of trademark infringement? Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include: proof of actual confusion strength of the established mark proximity of the goods in the marketplace similarity of the marks? sound appearance and meaning how the goods are marketed type of product and how discerning the customer is intent behind selecting the mark likelihood of expansion in the market of the goods [back to notice text] Question: What are the DMCA's anti-circumvention provisions? Answer: The Digital Millennium Copyright Act (DMCA) is the latest amendment to copyright law, which introduced a new category of copyright violations that prohibit the "circumvention" of technical locks and controls on the use of digital content and products. These anti-circumvention provisions put the force of law behind any technological systems used by copyright owners to control access to and copying of their digital works. The DMCA contains four main provisions: a prohibition on circumventing access controls [1201(a)(1)(A)]; an access control circumvention device ban (sometimes called the "trafficking" ban) [1201(a)(2)]; a copyright protection circumvention device ban [1201(b)]; and, a prohibition on the removal of copyright management information (CMI) [1202(b)]. The first provision prohibits the act of circumventing technological protection systems, the second and third ban technological devices that facilitate the circumvention of access control or copy controls, and the fourth prohibits individuals from removing information about access and use devices and rules. The first three provisions are also distinguishable in that the first two provisions focus on technological protection systems that provide access control to the copyright owner, while the third provision prohibits circumvention of technological protections against unauthorized duplication and other potentially copyright infringing activities. [back to notice text] Question: What does circumvention mean? Answer: Circumvention, according to Section 1201(a)(3)(A), means "to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner." While the full scope of activities and practices that would fall under this definition has not yet been examined by the courts, any act of undoing a "lock" or "block" in a digital system may well be considered circumvention. [back to notice text] Question: What are technological protection measures? Answer: Technological protection systems are already in place in DVDs, eBooks, video game consoles, robotic toys, Internet streaming, and password-protected sections of web sites. The fact that a digital protection may be really weak and easy to circumvent has not prevented courts from applying this law to punish those who bypass them. The DMCA defines an access control mechanism as a measure which "in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work." [1201(a)(3)(B)] An access control is a technology, like a password or encryption that controls who or what is able to interact with the copyrighted work. It is a violation of the DMCA to circumvent access controls, but it is also a violation to provide tools to others that circumvent access controls (including selling, distributing free of charge, and possibly even linking to a site with such technology ? or even the source code). The DMCA defines a copy control mechanism as a measure which, "in the ordinary course of its operation, prevents, restricts, or otherwise limits the exercise of a right of a copyright owner." [1201(b)(2)(B)]. Technological systems designed to protect against copyright infringement control whether the work can be copied, how many copies can be made, how long you can have possession of the work, etc. It is a violation of the DMCA to provide tools to others that circumvent copy controls [1201(b)], but it is not a violation of the DMCA to engage in the act of circumventing copy controls. Rather, the provision serves to buttress prohibitions against infringing activities of traditional copyright law. [back to notice text] Question: Is there really a difference between access controls and copy controls? Answer: While there is a difference in the types of activities controlled by these technological protection measures, some copyright owners try to merge access and use controls in the implementation of these systems. For example, in trying to implement a "pay-per-use" business model, some copyright owners use a single persistent control system that charge separately for the different uses of a work even after paying to access a work. [back to notice text] Question: What kinds of things are copyrightable? Answer: In order for material to be copyrightable, it must be original and must be in a fixed medium. Only material that originated with the author can support a copyright. Items from the public domain which appear in a work, as well as work borrowed from others, cannot be the subject of an infringement claim. Also, certain stock material might not be copyrightable, such as footage that indicates a location like the standard shots of San Francisco in Star Trek IV: The Voyage Home. Also exempted are stock characters like the noisy punk rocker who gets the Vulcan death grip in Star Trek IV. The requirement that works be in a fixed medium leaves out certain forms of expression, most notably choreography and oral performances such as speeches. For instance, if I perform a Klingon death wail in a local park, my performance is not copyrightable. However, if I film the performance, then the film is copyrightable. Single words and short phrases are generally not protected by copyright, even when the name has been "coined" or newly-created by the mark owner. Logos that include original design elements can be protected under copyright or under trademark. Otherwise, words, phrases and titles may be protected only by trademark, however. [back to notice text] Question: What rights are protected by copyright law? Answer: The purpose of copyright law is to encourage creative work by granting a temporary monopoly in an author's original creations. This monopoly takes the form of six rights in areas where the author retains exclusive control. These rights are: (1) the right of reproduction (i.e., copying), (2) the right to create derivative works, (3) the right to distribution, (4) the right to performance, (5) the right to display, and (6) the digital transmission performance right. The law of copyright protects the first two rights in both private and public contexts, whereas an author can only restrict the last four rights in the public sphere. Claims of infringement must show that the defendant exercised one of these rights. For example, if I create unauthorized videotape copies of Star Trek II: The Wrath of Khan and distribute them to strangers on the street, then I have infringed both the copyright holder's rights of reproduction and distribution. If I merely re-enact The Wrath of Khan for my family in my home, then I have not infringed on the copyright. Names, ideas and facts are not protected by copyright. Trademark law, in contrast, is designed to protect consumers from confusion as to the source of goods (as well as to protect the trademark owner's market). To this end, the law gives the owner of a registered trademark the right to use the mark in commerce without confusion. If someone introduces a trademark into the market that is likely to cause confusion, then the newer mark infringes on the older one. The laws of trademark infringement and dilution protect against this likelihood of confusion. Trademark protects names, images and short phrases. Infringement protects against confusion about the origin of goods. The plaintiff in an infringement suit must show that defendant's use of the mark is likely to cause such a confusion. For instance, if I were an unscrupulous manufacturer, I might attempt to capitalize on the fame of Star Trek by creating a line of 'Spock Activewear.' If consumers could reasonably believe that my activewear was produced or endorsed by the owners of the Spock trademark, then I would be liable for infringement. The law of trademark dilution protects against confusion concerning the character of a registered trademark. Suppose I created a semi-automatic assault rifle and marketed it as 'The Lt. Uhura 5000.' Even if consumers could not reasonably believe that the Star Trek trademark holders produced this firearm, the trademark holders could claim that my use of their mark harmed the family-oriented character of their mark. I would be liable for dilution. [back to notice text] Question: What are technological protection measures? Answer: Technological protection systems are already in place in DVDs, eBooks, video game consoles, robotic toys, Internet streaming, and password-protected sections of web sites. The fact that a digital protection may be really weak and easy to circumvent has not prevented courts from applying this law to punish those who bypass them. The DMCA defines an access control mechanism as a measure which "in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work." [1201(a)(3)(B)] An access control is a technology, like a password or encryption that controls who or what is able to interact with the copyrighted work. It is a violation of the DMCA to circumvent access controls, but it is also a violation to provide tools to others that circumvent access controls (including selling, distributing free of charge, and possibly even linking to a site with such technology ? or even the source code). The DMCA defines a copy control mechanism as a measure which, "in the ordinary course of its operation, prevents, restricts, or otherwise limits the exercise of a right of a copyright owner." [1201(b)(2)(B)]. Technological systems designed to protect against copyright infringement control whether the work can be copied, how many copies can be made, how long you can have possession of the work, etc. It is a violation of the DMCA to provide tools to others that circumvent copy controls [1201(b)], but it is not a violation of the DMCA to engage in the act of circumventing copy controls. Rather, the provision serves to buttress prohibitions against infringing activities of traditional copyright law. [back to notice text] Question: Is the reverse engineering of a technological protection measure illegal under the DMCA? Answer: The Digital Millennium Copyright Act (DMCA) made an effort to recognize the value of interoperability to competition and innovation and included an exemption expressly allowing reverse engineering in order to preserve a healthy market in the information technology industry. Section 1201(f) of the DMCA allows software developers to circumvent technological protection measures of a lawfully obtained computer program in order "the elements necessary to achieve interoperability of an independently created computer program with other programs." A person may reverse engineer the lawfully acquired computer program only where the elements necessary to achieve interoperability are not otherwise readily available and reverse engineering is otherwise permitted under the copyright law. The reverse engineer is required to ask permission first, however. The prohibition on the dissemination of circumvention devices also applies to reverse engineering. Under the "trafficking ban", a person may only develop and employ technological means to circumvent and make the circumvention information or tool available to others solely for the purpose of achieving interoperability. Reverse engineers are not exempt from the "trafficking ban" only if they permit the device to be made available to other persons for the purpose of gaining access to protected works for infringing purposes. [back to notice text] Question: What is a circumvention tool? Answer: The prohibited tools under the DMCA are the programs which are primarily designed or produced for the purpose of circumvention of an access [1201(2)(a)] or copy control [1201(b)(1)(A)] mechanism. These programs can come in various forms including products, services, devices, or components. The DMCA includes in its definition of circumvention tools that these devices have limited commercially significant purposes other than circumvention or are marketed to be used for circumvention [1201(2)(B-C)], 1201(b)(1)(B-C)]. Congress intended the circumvention device bans to be analogous to laws that specifically prohibit the manufacture or distribution of descrambler boxes that allow access to cable television and satellite services without payment. However, the broad definition of circumvention tools in the DMCA creates numerous situations in which non-infringing uses of copyrighted works are prohibited as well merely because the technology necessary to engage in those legitimate uses is illegal under the circumvention device ban. [back to notice text] Question: Is there really a difference between access controls and copy controls? Answer: While there is a difference in the types of activities controlled by these technological protection measures, some copyright owners try to merge access and use controls in the implementation of these systems. For example, in trying to implement a "pay-per-use" business model, some copyright owners use a single persistent control system that charge separately for the different uses of a work even after paying to access a work. [back to notice text] Question: What are the penalties for violating the DMCA's anti-circumvention provisions? Answer: The DMCA allows for both civil remedies and criminal penalties for violations under the anti-circumvention provisions. If the violations are determined to be willful and for commercial purposes or private financial gain, the court can order significant fines and/or imprisonment. [back to notice text] Question: What is contributory infringement? Answer: The other form of indirect infringement, contributory infringement, requires (1) knowledge of the infringing activity and (2) a material contribution -- actual assistance or inducement -- to the alleged piracy. Posting access codes from authorized copies of software, serial numbers, or other tools to assist in accessing such software may subject you to liability. Providing a forum for uploading and downloading any copyrighted file or cracker utility may also be contributory infringement. Even though you may not actually make software directly available on your site, providing assistance (or supporting a forum in which others may provide assistance) in locating unauthorized copies of software, links to download sites, server space, or support for sites that do the above may contributorily infringe. To succeed on a contributory infringement claim, the copyright owner must show that the webmaster or service provider actually knew or should have known of the infringing activity. [back to notice text] Question: What is copyright infringement? Are there any defenses? Answer: Infringement occurs whenever someone who is not the copyright holder (or a licensee of the copyright holder) exercises one of the exclusive rights listed above. The most common defense to an infringement claim is "fair use," a doctrine that allows people to use copyrighted material without permission in certain situations, such as quotations in a book review. To evaluate fair use of copyrighted material, the courts consider four factors: the purpose and character of the use the nature of the copyrighted work the amount and substantiality of copying, and the market effect. (17 U.S.C. 107) The most significant factor in this analysis is the fourth, effect on the market. If a copier's use supplants demand for the original work, then it will be very difficult for him or her to claim fair use. On the other hand, if the use does not compete with the original, for example because it is a parody, criticism, or news report, it is more likely to be permitted as "fair use." Trademarks are generally subject to fair use in two situations: First, advertisers and other speakers are allowed to use a competitor's trademark when referring to that competitor's product ("nominative use"). Second, the law protects "fair comment," for instance, in parody. [back to notice text] Question: I didn?t know that what I was doing could be illegal. Am I off the hook? Answer: No. Copyright infringement actions do not require that you actually knew that the files were protected by copyright or that your use of the files violated federal law. Claims of ignorance cannot be used as a defense to direct copyright infringement, Lack of knowledge, is, however, a defense to contributory infringement. See What is contributory infringement? [back to notice text] Question: Is the reverse engineering of a technological protection measure illegal under the DMCA? Answer: The Digital Millennium Copyright Act (DMCA) made an effort to recognize the value of interoperability to competition and innovation and included an exemption expressly allowing reverse engineering in order to preserve a healthy market in the information technology industry. Section 1201(f) of the DMCA allows software developers to circumvent technological protection measures of a lawfully obtained computer program in order "the elements necessary to achieve interoperability of an independently created computer program with other programs." A person may reverse engineer the lawfully acquired computer program only where the elements necessary to achieve interoperability are not otherwise readily available and reverse engineering is otherwise permitted under the copyright law. The reverse engineer is required to ask permission first, however. The prohibition on the dissemination of circumvention devices also applies to reverse engineering. Under the "trafficking ban", a person may only develop and employ technological means to circumvent and make the circumvention information or tool available to others solely for the purpose of achieving interoperability. Reverse engineers are not exempt from the "trafficking ban" only if they permit the device to be made available to other persons for the purpose of gaining access to protected works for infringing purposes. [back to notice text] Question: What does it mean to distribute circumvention tools? Answer: Section 1201(a)(2) defines distribution as the "manufacture, import, offer to the public, provide, or otherwise traffic" of circumvention tools. This definition can be interpreted extremely broadly as evident in the court's analysis in the DVD encryption Universal v. Corley case. In its decision, the court considered not only making the source code of a program for free a type of distribution, but also found that merely linking to a web site containing illegal tools can constitute "trafficking." [back to notice text] Question: Where can I find the text of the U.S. Copyright Act? Answer: The federal Copyright Act may be found at http://www.loc.gov/copyright/title17/.

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