FAQ: Questions and Answers

[back to notice text] Question: What is the Digital Millennium Copyright Act? Answer: The DMCA, as it is known, has a number of different parts. One part is the anticircumvention provisions, which make it illegal to "circumvent" a technological measure protecting access to or copying of a copyrighted work (see Anticircumvention (DMCA)). Another part gives web hosts and Internet service providers a "safe harbor" from copyright infringement claims if they implement certain notice and takedown procedures (see DMCA Safe Harbor). [back to notice text] Question: What are the notice and takedown procedures for web sites? Answer: In order to have an allegedly infringing web site removed from a service provider's network, or to have access to an allegedly infringing website disabled, the copyright owner must provide notice to the service provider with the following information: The name, address, and electronic signature of the complaining party [512(c)(3)(A)(i)] The infringing materials and their Internet location [512(c)(3)(A)(ii-iii)], or if the service provider is an "information location tool" such as a search engine, the reference or link to the infringing materials [512(d)(3)]. Sufficient information to identify the copyrighted works [512(c)(3)(A)(iv)]. A statement by the owner that it has a good faith belief that there is no legal basis for the use of the materials complained of [512(c)(3)(A)(v)]. A statement of the accuracy of the notice and, under penalty of perjury, that the complaining party is authorized to act on the behalf of the owner [512(c)(3)(A)(vi)]. Once notice is given to the service provider, or in circumstances where the service provider discovers the infringing material itself, it is required to expeditiously remove, or disable access to, the material. The safe harbor provisions do not require the service provider to notify the individual responsible for the allegedly infringing material before it has been removed, but they do require notification after the material is removed. [back to notice text] Question: What can be protected as a trademark? Answer: You can protect names (such as company names, product names) domain names if they label a product or service images symbols logos slogans or phrases colors product design product packaging (known as trade dress) [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 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. [back to notice text] Question: What is the difference between copyright and trademark? Answer: Copyright protects original expression in literary and artistic works such as plays, books, films, songs, software, performances, etc.). To qualify for copyright protection, a work must be an original creation of the author and not copied from any other source. In the U.S., copyright does not protect facts. Individual words cannot be copyrighted, and there is a gray area of protection for short phrases. Copyright owners have strong rights to prevent copying of their material, subject to the doctrine of "fair use." Copyrights arise when the work is fixed in a permanent form. Infringement consists of copying, publicly distributing, making changes to, or publicly distributing or performing the work without the author's permission. Trademark only protects names and logo images that are used to label goods or services. Trademark does not require originality; its purpose is to identify the source of goods. In the U.S., trademark rights arise only when there is actual use in commerce. Infringement consists of selling goods or services under the same or a confusingly similar name. Trademark has its own types of "fair uses" including use for product comparison and criticism, news reporting, and parody. [back to notice text] Question: What defines a service provider under Section 512 of the Digital Millennium Copyright Act (DMCA)? Answer: A service provider is defined as "an entity offering transmission, routing, or providing connections for digital online communications, between or among points specified by a user, of material of the user's choosing, without modification to the content of the material as sent or received" or "a provider of online services or network access, or the operator of facilities thereof." [512(k)(1)(A-B)] This broad definition includes network services companies such as Internet service providers (ISPs), search engines, bulletin board system operators, and even auction web sites. In A&M Records, Inc. v. Napster Inc., the court refused to extend the safe harbor provisions to the Napster software program and service, leaving open the question of whether peer-to-peer networks also qualify for safe harbor protection under Section 512. There are four major categories of network systems offered by service providers that qualify for protection under the safe harbor provisions: Conduit Communications include the transmission and routing of information, such as an email or Internet service provider, which store the material only temporarily on their networks. [Sec. 512(a)] System Caching refers to the temporary copies of data that are made by service providers in providing the various services that require such copying in order to transfer data. [Sec. 512(b)] Storage Systems refers to services which allow users to store information on their networks, such as a web hosting service or a chat room. [Sec. 512(c)] Information Location Tools refer to services such as search engines, directories, or pages of recommended web sites which provide links to the allegedly infringing material. [Sec. 512(d)] [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: What defenses are there to copyright infringement? Answer: The primary defense to copyright infringement is "fair use." 17 U.S.C. [back to notice text] Question: What defenses are there to trademark infringement or dilution? Answer: Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody. Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary (trademark), meaning, and no consumer confusion is likely to result. So, for example, a cereal manufacturer may be able to describe its cereal as consisting of "all bran," without infringing upon Kelloggs' rights in the mark "All Bran." Such a use is purely descriptive, and does not invoke the secondary meaning of the mark. Similarly, in one case, a court held that the defendant's use of "fish fry" to describe a batter coating for fish was fair use and did not infringe upon the plaintiff's mark "Fish-Fri." Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are privileged because they use the terms only in their purely descriptive sense. Some courts have recognized a somewhat different, but closely-related, fair-use defense, called nominative use. Nominative use occurs when use of a term is necessary for purposes of identifying another producer's product, not the user's own product. For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA Today for trademark infringement. The court held that the use of the trademark "New Kids on the Block" was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party's products and services. When the above conditions are met, such a use will be privileged. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). Finally, certain parodies of or using trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that artistic and editorial parodies of trademarks serve a valuable critical function, and that this critical function is entitled to some degree of First Amendment protection. The courts have adopted different ways of incorporating such First Amendment interests into the analysis. For example, some courts have applied the general "likelihood of confusion" analysis, using the First Amendment as a factor in the analysis. Other courts have expressly balanced First Amendment considerations against the degree of likely confusion. Still other courts have held that the First Amendment effectively trumps trademark law, under certain circumstances. In general, however, the courts appear to be more sympathetic to the extent that parodies are less commercial, and less sympathetic to the extent that parodies involve commercial use of the mark. So, for example, a risqu? parody of an L.L. Bean magazine advertisement (L.L. Beam's "Back to School Sex Catalog") was found not to constitute infringement. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987). Similarly, the use of a pig-like character named "Spa'am" in a Muppet movie was found not to violate Hormel's rights in the trademark "Spam." Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996). On the other hand, "Gucchie Goo" diaper bags were found not to be protected under the parody defense, Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977). Similarly, posters bearing the logo "Enjoy Cocaine" were found to violate the rights of Coca-Cola in the slogan "Enjoy Coca-Cola", Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). In short -- although the courts recognize a parody defense, the precise contours of that defense are difficult to outline with any precision. [back to notice text] Question: Can an operator of a visual search engine use the copyrighted images of another owner as "thumbnails" in its search engine? Answer: Yes, the creation and use of "thumbnails" -- smaller, lower resolution depictions of the original image -- as part of such a search engine may be a fair use. The Ninth Circuit Court of Appeals recently held in Kelly v. Arriba Soft that displaying the copyrighed images of another as thumbnails on a search engine was a fair use because the thumbnails served a completely different purpose than the original images. Working through the four factor fair use analysis, the court emphasized that it was essential to determine if defendant's use was transformative in nature. It is more likely that a court will find fair use if the defendant's use of the image advances a purpose different than the copyright holder's, rather than merely superseding the object of the originals. For example, the Ninth Circuit found there to be a fair use since the displayed images were not for illustrative artistic purposes, but were rather used as part of an image search engine as a means to access other images and web sites. Even if defendant's website is operated for a commercial purpose, it may still be a fair use if the use of the image was "more incidental and less exploitative." The court in Kelly found that defendant's search engine did not directly profit from the use of plaintiff's images, and therefore that their use was not highly exploitative. In Kelly, the court also found that the use of the images would not hurt the plaintiff's market for the images. Kelly v. Arriba Soft Corporation. [back to notice text] Question: How do I register a trademark? Answer: There are three ways to register: file a use application, which lets someone who is already using the mark register it, file an intent to use application, which states that you honestly intend to use the mark in commerce. The mark must be associated with commerce, instead of simply being a mark that you want to reserve. Merely using the mark in advertising or promotion does not qualify under this category -- the use must be associated with an actual commercial purpose, or (non-US applicants only) file based on an existing foreign registration. All applications require a fee. Remember that it is not necessary to register a trademark to gain protection in the United States. Four months after registration, the trademark application is examined by an attorney at the PTO. The attorney determines whether the mark is registerable. If not, the applicant receives a letter stating the grounds for refusal and information on needed corrections (if applicable). If the attorney requests additional information, the applicant has six months to respond; after six months, the application is deemed abandoned. The most common reason for being unable to register is that the mark is confusingly similar to an existing mark. If the attorney finds a conflicting mark and cannot grant the application, the PTO does not refund the application fee. If the mark can be registered and the application passes, the attorney approves the mark for publication in the PTO [back to notice text] Question: Can an online service provider (OSP) be held contributorily liable for acts of trademark infringement by one of its users? Answer: Under section 512(c) of the DMCA an OSP will not be held liable for instances of copyright infringement so long as the OSP satisfies certain statutory requirements. (See What are the DMCA Safe Harbor Provisions?.) However, there is no equivalent legislation pertaining to trademark infringement, and given the paucity of caselaw concerning liability of OSPs in such instances, it remains an open question as to whether or not an OSP could, or should, be held liable for acts of trademark infringement by its users. In trademark law contributory liability exists when a manufacturer or distributor intentionally induces another party to infringe a valid trademark, or when it continues to supply products to a party that it knows, or has reason to know, is using the products to engage in trademark infringement. Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982). (See What is contributory trademark infringement?.) Lower courts have since disagreed somewhat over what exactly satisfies the [back to notice text] Question: Do the safe harbor provisions of section 512(c) apply to instances of alleged trademark infringement? Answer: Section 512(c) does not pertain to instances of trademark infringement. Sub-section (1) states, ?a service provider shall not be liable for . . . infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider . . . .? (emphasis added). On its face, therefore, 512(c) is not applicable to a situation in which a trademark holder gives notice to an on-line service provider (OSP) (see What defines a service provider under Section 512...?) that a user is infringing his or her intellectual property rights. However, in the absence of any caselaw on the subject, should a trademark holder bring a claim for contributory infringement, an OSP might be able to mount a valid defense by analogy to section 512(c). See also Can an online service provider (OSP) be held contr...?. [back to notice text] Question: What does "under penalty of perjury" mean? Answer: Law.com offers a good definition of perjury: "Perjury is the the crime of intentionally lying after being duly sworn (to tell the truth) by a notary public, court clerk or other official. This false statement may be made in testimony in court, administrative hearings, depositions, answers to interrogatories, as well as by signing or acknowledging a written legal document (such as affidavit, declaration under penalty of perjury, deed, license application, tax return) known to contain false information. Although it is a crime, prosecutions for perjury are rare, because a defendant will argue he/she merely made a mistake or misunderstood." [back to notice text] Question: What are the DMCA Safe Harbor Provisions? Answer: In 1998, Congress passed the On-Line Copyright Infringement Liability Limitation Act (OCILLA) in an effort to protect service providers on the Internet from liability for the activities of its users. Codified as section 512 of the Digital Millennium Copyright Act (DMCA), this new law exempts on-line service providers that meet the criteria set forth in the safe harbor provisions from claims of copyright infringement made against them that result from the conduct of their customers. These safe harbor provisions are designed to shelter service providers from the infringing activities of their customers. If a service provider qualifies for the safe harbor exemption, only the individual infringing customer are liable for monetary damages; the service provider's network through which they engaged in the alleged activities is not liable. [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 the counter-notice and put-back procedures? Answer: In order to ensure that copyright owners do not wrongly insist on the removal of materials that actually do not infringe their copyrights, the safe harbor provisions require service providers to notify the subscribers if their materials have been removed and to provide them with an opportunity to send a written notice to the service provider stating that the material has been wrongly removed. [512(g)] If a subscriber provides a proper "counter-notice" claiming that the material does not infringe copyrights, the service provider must then promptly notify the claiming party of the individual's objection. [512(g)(2)] If the copyright owner does not bring a lawsuit in district court within 14 days, the service provider is then required to restore the material to its location on its network. [512(g)(2)(C)] A proper counter-notice must contain the following information: The subscriber's name, address, phone number and physical or electronic signature [512(g)(3)(A)] Identification of the material and its location before removal [512(g)(3)(B)] A statement under penalty of perjury that the material was removed by mistake or misidentification [512(g)(3)(C)] Subscriber consent to local federal court jurisdiction, or if overseas, to an appropriate judicial body. [512(g)(3)(D)] If it is determined that the copyright holder misrepresented its claim regarding the infringing material, the copyright holder then becomes liable to the person harmed for any damages that resulted from the improper removal of the material. [512(f)] See also How do I file a DMCA counter-notice?, and the counter-notification generator.

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