UNITED STATES COPYRIGHT, TRADEMARK, and UNFAIR COMPETITION LAW

Capp and Associates provide the following intellectual property services to their clients. 

• Copyright registration
• Trademark registration
• Copyright infringement litigation
• Trademark infringement litigation
• All matters of unfair competition
• Domain name disputes

Why register a Trademark or Copyright in the United States?

Although not strictly required by law, formally registering a Trademark and/or a copyright provides valuable benefits to the Trademark or copyright owner. 

In particular, registration provides powerful advantages to Plaintiffs in copyright and Trademark infringement actions, and at least for copyright holders, is a prerequisite to filing an infringement lawsuit in Federal Court.

Registered copyright owners also benefit from  extremely favorable advantages when bringing an infringement action in federal court, including mandatory statutory damages and attorney fee awards.

COPYRIGHTS

What is a copyright?

Copyright is a form of protection provided by the laws of the United States to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This includes paintings, photographs, poems, books, screenplays, and anything else that could be considered original art. The copyright protects the form of expression rather than the subject matter of the writing.

So how do I get my work of art copyrighted?

Copyright Secured Automatically upon Creation

The way in which copyright protection is secured is frequently misunderstood. It is NOT  required that the work of art be formally registered with the Copyright Office in Washington D.C.. 

Copyright is secured automatically when the work is created, and a work is "created" when it is fixed in a copy or phonorecord for the first time. "Copies" are material objects from which a work can be read or visually perceived either directly or with the aid of a machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm. "Phonorecords" are material objects embodying fixations of sounds (excluding, by statutory definition, motion picture soundtracks), such as cassette tapes, CDs, or LPs. Thus, for example, a song (the "work") can be fixed in sheet music (" copies") or in phonograph disks (" phonorecords"), or both.

If a work is prepared over a period of time, the part of the work that is fixed on a particular date constitutes the created work as of that date.

So why register my copyright with the Copyright Office?

Even though registration is not a requirement for protection, the copyright law provides several important advantages to those who register their work with the U.S. Copyright Office.  These advantages include the following:

• Formal registration with the U.S. Copyright Office is required in order to bring an infringement suit in US Federal Court

• If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.

• Statutory damages require that the infringer pay the copyright holder a minimum of $750 per infringement and a maximum of $30,000 per infringement as the court considers just

• In a case where the copyright owner proves to the satisfaction of  the court that the infringement was committed willfully, the court  may increase the award of statutory damages to a maximum of $150,000. Also, if the infringer proves that they acted 'innocently' the court may reduce the damages to a sum of not less than $200.

UNFAIR COMPETITION

Trademark and/or copyright infringement normally also constitutes 'passing off' or the act of 'unfair competition' either under Federal or state law. In essence, by using a third party's intellectual property rights the infringing party can often be said to have unfairly competed with the aggrieved party.

Thus, we cannot stress enough the importance of seeking qualified legal advise so as not to unwittingly waive or abandon your rights.

TRADEMARKS

What is a Trademark?

A trademark is any word, name, symbol or device, or any combination thereof, that serves to identify and distinguish the source of one party's goods or services from those of another party. A service mark is the same as a trademark, except that it identifies and distinguishes the source of services rather than goods. In this report, the terms "trademark" and "mark" are intended to refer to both types of marks. Examples of trademarks are Ford, Colgate or Coca Cola

Is registration of my mark required?

• The exclusive right to use the trademark throughout the entire United States;
• the ability to bring an action concerning the mark in federal court;
• the use of the US registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods

NOTE: In order to gain federal registration the mark must have been used, or intend to be used, in either international or 'interstate' commerce. A trademark that is only used or to be used in one state an not be federally registered. Unlike for copyrights, state trademark registration may be available in such a case.

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the United States Patent & Trademark Office (USPTO) However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

How do I stop a third party infringing my Trademark?

A trademark infringement action may be brought in either state or federal court. In federal court a federally registered trademark is protected form infringement under the Lanham Act. The owner of a trademark is entitled to the exclusive right to use the mark. This entitlement includes the ability to prevent the use, by unauthorized third parties, of a confusingly similar mark. Marks used by unrelated parties are confusingly similar if, by their use on the same, similar, or related goods or services, the relevant consumer population would think the goods or services come from the same source.

"Confusingly similar" is determined by looking at all the circumstances of the alleged infringement. Crucial to this determination is the nature of the goods or services which the infringer is supplying and the actual marks used.

The information contained in this site is provided free of charge. It is intended for informational purposes only and should not be construed as legal advice or a substitution for obtaining legal advice from an attorney licensed in your state. The transmission of information on this website is not intended to create, and its receipt does not constitute, an attorney-client relationship. For personal legal advice, please consult your California business lawyer.