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Question: What civil and criminal liabilities may be imposed for trademark infringement?
Answer: Under federal law (Lanham Act Section 32), an infringer shall be liable in a civil action by the registrant for certain remedies provided in the Act. One such remedy is an injunction, where a court orders a person who was found to violate the Act to stop its infringing activities. A trademark owner/registrant may also be able to obtain lost profits or damages against a defendant in a civil action only if the acts were committed with knowledge that such imitation was intended to be used to cause confusion, mistake, or to deceive. The trademark owner can recover (1) the domain holder's profits from use of the mark, (2) the trademark owner's damages resulting from harm to the value of mark, and (3) court costs as "actual damages." In determining the award to be paid, the court can choose to award up to three times the amount of actual damages. Instead of having to prove the amount of "actual" damages suffered as above, the mark owner can instead request payment of "statutory damages" from $1000 and $100,000 per domain name. Attorney fees may be awarded in exceptional circumstances, such as when there was a willful and malicious violation. The court can order the cancellation or transfer of a domain registration. In the case of a willful violation of Lanham Act section 43, a court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of a defendant bearing the registered trademark shall be delivered up and destroyed.
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Question: What is copyright protection?
Answer:
A copyright protects a literary, musical, dramatic, choreographic, pictoral
or graphic, audiovisual, or architectural work, or a sound recording, from
being reproduced without the permision of the copyright owner. 17
U.S.C. ?102. The copyright in a work vests originally in the author(s)
of the work. The author(s) may transfer the copyright to any other party
if she(they) choose(s) to do so. 17
U.S.C. ?201. Subject to certain limitations, the owner of a copyright
has the sole right to authorize reproduction of the work, creation of a
work derived from the work, distribution of copies of the work, or public
performance or display of the work. 17
U.S.C. ?106. This right lasts for the life of the author plus seventy
years; or in the case of a copyright authored by an entity (a work-for-hire), for ninety-five years. 17
U.S.C. ?302.
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Question: What is a trademark and why does it get special protection?
Answer: A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. Consumers reap the benefit when trademarks are protected. By preventing anyone but the actual mark owner from labeling goods with the mark, it helps prevent consumers getting cheated by shoddy knock-off imitators. It encourages mark owners to maintain quality goods so that customers will reward them by looking for their label as an indication of excellence. Consumers as well as mark owners benefit from trademark laws.
Trademark owners spend a lot of time, money, and effort to protect the distinctiveness of their trademark. Once trademarks have become diluted to the point where the general public no longer recognizes them as distinctly applying to a particular manufacturer, they lose their value to the trademark owner because they no longer attract customers to his particular goods. For example, ?aspirin? used to be the trademark of one particular manufacturer of synthesized acetylsalicylic acid, but is now used to generically describe that product regardless of who produces it. Trademarks owners must be vigilant to make sure that their trademarks rights are not being infringed and that their trademarks are not becoming diluted or generic.
The birth of the Internet and the use of character strings (domain names) to represent Internet addresses has presented trademark owners with a whole new set of problems. It is often too expensive to register every variation of a trademark in every top level domain. Therefore, trademark owners must make sure that the people who register domain names that are either the same as or confusingly similar to a trademark are not using the domain name in a way that infringes on the trademark. One way to ensure that the trademark owner will not lose its rights in the mark is to file a UDRP complaint so that the Panel can decide whether the domain was registered in order to take unfair advantage of the mark owner. The Panel may decide that the trademark owner was wrong and had nothing to worry about, but unless the trademark owner is vigilant and files the complaint, it may never know for sure whether its rights were being abused.
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Question: Can I cut photographs out of a book, frame them, and sell them separately as ?prints??
Answer: Probably not. In essence, what you would be doing is creating
a new work based on preexisting copyrighted material?the book of photographs.
In one famous case, a person cut pages out of a collection of prints of
the work of Patrick Nagel, mounted those pages on tiles and sold them separately.
See Mirage Editions, Inc. v. Albuquerque ART Co., 856 F.2d 1341,
1343 (9th Cir. 1988). The page-cutter argued that he had bought the
book and therefore had a right to dispose of that copy of the book any
way he wished, under the ?first sale? doctrine. The Ninth Circuit
held that the tiles were derivative works and infringed on Nagel?s copyright.
In other words, the book buyer has the right to re-sell the particular
book he has bought, but not to sell reframed pieces of the book.
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Question: How do lawyers "buy time" when a cease and desist letter is received by a client?
Answer: What a lawyer will often do to maintain the status quo is to send a response to the demand letter, within the stated time, saying something like this: We are in receipt of your letter of (date) "Please be advised that we are investigating the matter and will be in contact with you shortly." This letter ordinarily gives additional time to research the allegations, and should give you some additional time to contact a lawyer if you need to.
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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?
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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?
Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.
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Question: Who may hold a copyright?
Answer:
A copyright ordinarily vests in the creator or creators of a work (known
as the author(s)), and is inherited as ordinary property. Copyrights are
freely transferrable as property, at the discretion of the owner. 17
U.S.C. ?201(a), (d). In some cases, however, the actual creator
is not considered the author of the work for copyright purposes: if a work
is created by an employee in the regular course of her employment, it is
considered a "work for hire" and the employer, not the employee,
is considered the "author" of the work for copyright purposes.
For example, in the absence of an agreement to the contrary, a staff writer
for a newspaper does not hold the copyrights in her product, the newspaper
does. This only applies to works created in the ordinary course of employment:
if the same reporter writes a novel in her spare time, she herself owns
that copyright.
Certain commissioned works may also be considered works for hire. 17
U.S.C. ?201(b); Community
for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). The term "work
for hire" is defined in 17 U.S.C. ?101.
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Question: Why are copyright holders concerned about piracy?
Answer: Free speech is protected by the U.S. Constitution but so are property rights. Copyright law provides incentives for creating. One of the incentives for creating software, music, literature and other works is being able to reap the financial benefits as the creator. Illegitimate distribution of copies may prevent the copyright holder from benefiting from the sale of legitimate copies of the product. The theory is that significantly fewer people would buy copies from the copyright holder if other copies were available cheaper or for free.
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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.
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