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Discussion on Copyright and Trademark Law

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In this episode, Charles Mudd discusses general principles on copyrights and trademarks.  He begins by providing a broad description of these two forms of intellectual property.  He then discusses how to secure enforceable intellectual property rights in them.  Specifically, he speaks about filing copyrights with the United States Copyright Office and federal trademarks with the United States Patent and Trademark Office.  He provides some guidance on completing due diligence.


0:33 Charles Mudd

Good afternoon! This is Charles Mudd and you are listening to Startup Radio. It's Monday, July 2nd, 2012 and with the holiday coming up we are absent a guest today, but I am taking the opportunity to talk to you about some intellectual property issues. So again today will be myself talking about copyright and trademark intellectual property issues and then of course coming up next week we will have individuals from Toodalu at 3:00 p.m. on July 9th, that's July 9th, 3:00 p.m. Central, Ravi Singh, Todd O'Hara and Chris Lubinski of Toodalu, stay tuned for that program. Going back to today's program to discuss copyrights and trademarks, I wanna start off by talking generally about what are different types of intellectual property? There are typically four general areas when we discuss intellectual property: Copyrights, trademarks, patents and then trade secrets. Today, I am going to focus on more of the copyrights and trademarks. In a prior episode, we did discuss issues relating to non-disclosure agreements and trade secrets, but as I say today what I wanting to do is focus rather on the issue of what a copyright is, what a trademark is and when you should be considering protecting those aspects of your business to startup to your endeavors.

2:41 Charles Mudd

So when we looked at copyright, federal law controls copyright law, so there is really no state copyright law. It's merely the federal government, the federal copyright act that governs this and there are a lot of new onsets with the copyright law and we're just focusing today on when you should seek protection and how to go about doing that generally speaking. For copyright, it basically anything that manifest in a written form whether that be on paper, electronically or otherwise an artwork three-dimensional, two-dimensional what have you -- anything a work can obtain a copyright immediately upon creation and the classic example that I give is the old Saturday Night Live to get with Jon Lovitz pretending to be Picasso or being Picasso and just scribbling on a napkin and talking about that as I am Picasso and handing off the napkin was just a scribble. Now, there is a copyright in the scribbled on the napkin as soon as it is created. The individual has a copyright in that, or if it's a work for hire the entity or the business retaining the individual creating the work obtains the copyright as soon as it manifests itself.

4:29 Charles Mudd

Arguably, if I start typing an email and send it off to somebody I immediately have a copyright in that email as soon as it's created and sent. If I am typing in a document on my computer I have created a copyright in that work or I have a copyright in that work without doing anything more than creating the work itself. So what's does the copyright office do? What can I do with the copyright in terms of enforcing it? Well, unless you register the copyright with the United States Copyright Office, you really can't do much to enforce it. So it's imperative that one register a copyright for a work that they are wanting to protect with intellectual property right. For example, an email it's unlikely that we are going to want to register a copyright for an email because that particular content most likely does not need protection, it's something transient of a limited amount of time and not something substantively that's needing to be protected; however, that would change if I happen to be drafting an email and it was a story or it was a letter that then became part of a pleasure even at itself that it has content that is worth protecting such that no one else can exploit that work or use that work to make money themselves then it's time to think about protecting that particular work via a copyright.

6:46 Charles Mudd

So, once the work has created I have a copyright, but what do I do to protect it and to make sure that I will be able to later enforce that copyright, I register the copyright with the United States Copyright Office and the fee, the filing fee with the copyright office is typically about $35 per work. There are exceptions and if we get in to a series or a collection there are variations and so forth as to what one include in that regard, but typically it's $35 to register a work with the United States Copyright Office. Now, some people talk about the how might one say the -- let's say you don't wanna use an attorney, let's say that you don't wanna register with the United States Copyright Office. Some people talk about putting your work in an envelop, addressing it to yourself and mailing it with the stamp on it from the United States Post Office, what does that do? Well really the only thing that that does is create evidence of when the work happened to be created and it's really -- at least as of whatever that day happens to be that work was created. So, if I draft or write a script and I want to preserve rights or show document when the script was completed, I can send a copy of it to myself in a sealed envelop and obtain the stamp date from the post office and arguably that is evidence that as of at least that date the work inside the envelop was created.

8:53 Charles Mudd

Those that provide me a registered copyright, it does not, it does not provide me any intellectual property protection, not really, no it does not, it merely serves as evidence as of at least what date that material happen to be created. Others will talk about submitting a work to the writer's goals of America east to west. What does that do? Does that create enforceable copyrights in the works that are submitted to those organizations? No, it does not. You are paying nearly the fee that you would pay to register a copyright for the work with the United States Copyright Office, but again what you are doing is creating evidence that as of at least that date that they receive it, the work happen to be created. What you needed to do to protect the work and have an enforceable copyright is to register with the United States Copyright Office, and it make sense to do so given the low threshold from a monitory perspective in filing fee perspective that is required to submit in item to the United States Copyright Office. So a copyright, what can you copyright? A copyright can be obtained for a work that has been created in any form that has been manifested and that the way to obtain that particular protection, a copyright, the only way is to register that work with the United States Copyright Office.

10:51 Charles Mudd

An attorney helping you register a work with the United States Copyright Office will likely charge a flat fee to do so that will encompass the registration fee imposed by they Copyright Office. Now, one thing to keep in mind with registering a copyright is it really comes down to first to file the register or first to file work and obtain a copyright. If I draft the script and wait three years before registering it or submitting it to the Copyright Office and two years before that somebody submitted the same work, the presumption is that it's a valid copyright and I would be in a weakened position and then I would need evidence trying to overcome the presumption of the copyright in showing that I had created the work and that arguably whom ever did register the work, the script did so -- maybe they had a copy of it from me or whatever the case might be. So, it's important to timely register work with the copyright office as of the time that it's created. And sometimes you may have multiple versions, sometimes an additional work or a later work rather will contain aspects of a work that's already been registered. Each step of the way arguably it's important to register the work with the United States Copyright Office.

12:42 Charles Mudd

When does that come into play in terms of a startup or small business entrepreneur? You can copyright a design. You can copyright content on a website. You can copyright code of a website. You can copyright artwork. You can copyright articles, but you cannot copyright a name. You cannot copyright typically a word mark or a title. So there are some things that can be or for which one can obtain a copyright, others cannot. Now, talking about a title or a name, that moves more into the trademark area. Unlike copyright which exclusive jurisdiction for copyrights is provided with federal government of the United States Copyright Office, trademarks can be obtained both at the federal level and at the state level. However, in many cases, unless somebody is only using a particular mark within a particular state and not between or among more than one state and multiple states, two or more states, it's really not pragmatic, I guess might be the appropriate work to file for a state mark where one can obtain a federal mark.

14:34 Charles Mudd

To obtain a federal registered trademark, you need to use the mark in two or more states. So it needs to be interstate commerce and then for which you can then file a federal trademark. Related to that, talking about having an online service, more than likely if you do have a website and you are marketing to more than one state or have orders coming from more than one state, then clearly you are engaged in interstate commerce and would therefore meet the criteria of obtaining the registered trademark or filing for registered trademark with the United States Patent and Trademark Office. If you are only within one state then you cannot and most all the circumstances apply for a federal trademark and you would be perhaps limited to the state trademark obtaining a state trademark through whatever agency or government entity that happen to be for your particular state, but most often it's going to be most advisable where there is interstate commerce to apply for a trademark through the federal government. Now, unlike filing a copyright, where there really is no review of the work or confirmation that somebody else has not previously written or authored that work in the application process, more or less you complete the application assuming that you meet the procedural requirements, it is registered. However, where you apply for a federal trademark with the United States Patent and Trademark Office that application will end up being reviewed by an examining attorney, by an attorney at the Patent Trademark Office.

16:45 Charles Mudd

There are any numbers of issues that may come up to preclude registration of that particular mark. Now, some of the distinctions that we should begin talking about are a distinction between a word or a stylized mark and whether you intend to use or had actually begun to use a mark. A word mark is just as it sounds. A word or multiple of words that form a particular mark, or instead another way a mark that is only consisting of without any stylistic elements, a word or combination of words. For example, one might try to have a mark in the phrase "we are a friendly hotel" or "Hilton Hotels." Hilton Hotels, arguably, is a mark. The phrase having trouble here coming up with the phrase for the moment, but let's say that you have Hollywood reporter or the best place to live. Any of this kind of phrases or marks that are including or that include just words by themselves will be cut to it or will be considered a word mark. Its stylized mark is more the example of the logo or the graphical element.

18:41 Charles Mudd

For example, Apple Computer by itself without any stylized elements would be a word mark. Apple Computer or just the logo with the Apple would be a stylized mark. The golden arches of McDonald's would be a stylized mark or as McDonald's the name would be without any font or stylistic elements, a word mark that intend to use that what you can do with the Patent and Trademark Office is to file for a trademark that you have not yet begun to use. So if you are starting a business or you have come up with a unique mark that you intend to use then you can file an application to register the mark that you intend to use. You later will end up having to file an affidavit that you have begun to use the mark. However, this allows you to secure ideally the registration of a mark before you go live with the business such that somebody does not then beat you to that mark. Because timing is important in filing trademarks just as in most everything. If somebody is using your mark or a mark that you have come up with prior to your registration, you will not be able to preclude them from using that mark in the geographic and limited scope in which they have been using it.

20:44 Charles Mudd

I'm talking general principles. There are always new answers that need to be address on a case-by-case basis, but generally speaking if a company in Washington State and a company in New York State are both using the mark, 'the best law office' not that somebody would be able to obtain the mark for that, but just using as an example, they were using the mark 'the best law office' and then a law firm in Indiana files an application with the US Patent and Trademark Office for the best law office, they -- let's say they obtained a registered mark after review. They would not be able to preclude the prior companies or law firms from using that mark within the geographic scope in which they operated prior to the filing date. However, the Indiana law firm would be able to preclude the two others from expanding the use of the mark subsequent to the registration date and most importantly, the Indiana law firm would be able to preclude others from using the mark subsequent to the registration date. So it is most ideal to register a mark before anybody has begun to use it, but sometimes there are parties that have begun to use a mark but have not registered it and if you happened to be the one to come up and register that mark then you will end up possibly assuming that your application is approved, end up having more rights than the others that may have been using that ahead of time so that's something to consider.

22:51 Charles Mudd

So, there is a difference between a word mark and a stylized mark, and there was a difference between filing an application where you have actual use or you've begun to use the mark already and an intent to use. The filing fee for a trademark varies. It is either going to be $275 or $325 that's just the application fee for or imposed by the Patent and Trademark Office, and the difference in the fee focuses on the difference in the description of the mark. Because again, unlike the copyright where if I create a script, I can submit the registration for the copyright and don't have to put any contours on how I will be using the script or where I'll be using it or what type of script it is apart from identifying these basic categories whether the work is visual work or a literary work and so forth.

24:07 Charles Mudd

But I don't have to say that it's necessarily non-fiction versus fiction or only science fiction versus romance. However, when you apply for a federal trademark, you do have to choose among one or more classes of goods and services. So using our law firm example, a law firm would typically choose services, legal services that would, I believe if I am, correct fall under class number 45 relating to professional services and the description could be as brought us legal services or perhaps it would be more specific. Now, the Patent and Trademark Offices pre-approved descriptions from which you can choose. So once you are within the class, you can choose pre-approved descriptions from within that class and if you choose the pre-approved descriptions, the fee charged by the Patent and Trademark Office will be $275 as of the date of this program. If you need to create a unique or new ones description, then you would be charged of $325 and that fee is per class. So you could be filing a mark for let's say Nike in several different goods and if they fall within several different classes then you would be charged to a fee for each class and your use has to be consistent across classes.

26:04 Charles Mudd

So that if you have not yet begun to use the mark in any of them it would be a complete intent to use application. If you had begun to use the mark in sum then arguably you would want to file a -- or it is easier to file an application where you have those classes that uses already began and then have a separate where classes are being filed within an intent to use it. Still, the fee per class per mark so you don't avoid a multiplication of the fee by failing one application for several classes it would be $275 per mark per class. So let's review, we have the copyright, the copyright is govern by the federal government exclusive jurisdiction through the United States Copyright Act and as operated by the copyright office, you know it's copyright office. There really is not a review by an examining attorney of applications for registration of copyrights. You fill out the basic form now available online and assuming that the procedural items are met and there are no anomalies after some time it's approved and moves forward to a registration process for which you would then get noticed that it has been register with the United States Copyright Office. And that's not to say that it's not reviewed by the staff to ensure that the procedural items are met, but again it's not a thorough review to see whether is somebody else has filed something.

28:04 Charles Mudd

Whether similar name or content, what have you? That kind of in-depth analysis does not take place. Copyright is for a work whether it would be an artistic work, sculpture, block, content online, electronic form, HTML code, Java script, whatever the case may be once it is created a work in a broad sense that work has a copyright it's merely the registration of the work that is accomplished through United States Copyright Office. Trademark, you can obtain a state ore federal and/federal trademark in most circumstances, however; if you are operating in two or more stage which is called interstate commerce. It makes sense to apply for a federal trademark to the United States Patent and Trademark Office and despite the fact that yes does seem might be higher that what a state trademark application would be. It does make sense to have the more powerful registration of a federal trademark if you are able to meet that initial threshold of using the mark in interstate commerce. If you are limited to one state then unfortunately you would be able limited to applying for a stay trademark which were are not going to discuss here. In applying for a federal trademark, you would pay a fee with the Patent and Trademark Office of either $275 or $325 per mark in per class for which the mark has applied and the classes made therefore between let's say Nike and make shoes.

30:05 Charles Mudd

And then also make skis, that would be two different classes. So the fee charged by the Patent and Trademark Offices per mark per class. Now, there are word marks that we have talked about. Let's say it just the word McDonald's or the combined word of Apple Computer without any elements stylistic without fonts, without color any reference to that. And then there are stylized or logos and so forth and the logo mark may or may not have word components with it. It is definitely important to consider filing the trademark as soon as one comes up with the idea and has done some due diligence because you are going to want to do the due diligence to see if somebody is already using the mark before adopting it, you can do that through Google, you can search to Patent and Trademark Office records, you can search internationally and any attorney that you consult should be doing that with you to ensure the due diligence that you not applying for something that A, somebody already has for which a conflict will arise or B, something that cannot be registered by itself. In that context, that leads to what we have said is an examining attorney reviews the applications filed with the Patent and Trademark Office and they definitely have to meet certain criteria to move forward 1, it was has to be a trademarkable, trademarkable or word mark or stylistic mark.

32:05 Charles Mudd

It has to be -- it can't be generic, if I make baseball bats, I can't get a mark in baseball bats for that matter. So it can't be generic, it can't be descriptive rather it needs to be arbitrary or fancy or if it is descriptive secondary meaning must have been obtained and essentially with that means is that though a mark may be descriptive at some point, the mark become so well known that one thinks of nothing, but the applicant when the mark is mentioned. Just the reverse can actually occurred too though if you think about Clean Acts that once was a very new ones mark, but now it's probably more descriptive of tissue paper generally. But in any case, it goes through the review process and coming back to strategy you need to the diligence before you apply for the mark so before you apply for the mark so that you know whether or not conflicts may arise and if conflicts do arise where mark within the same class is to similar or identical, it is going to be identified as a basis for refusing that particular application. And then in office action letter goes out identifying all of the basis for which there are issues to refuse the application and you have done six months to respond to that office action letter and all of the issues identified with _33:50_, so if I were to file a marked for Apple Computer no doubt that Apple computer would come up with the respect of the computers and other peripherals, iPhones, so forth.

34:06 Charles Mudd

And that would preclude my being able to get a marked using those terms within those particular classes. See you wanna do the due diligence search online through a search engine whether be a Google or Bing or where have you, you want to do it through the Patent and Trademark Office and anybody can do that without paying a fee or having to registered and create an account that is uspto.gov and then finally there are resources to do an international check and international review and that's wise to do as well. So that you have the full scope of what you are looking at before the application has filed and be careful when you are doing word marks to look for marks that may phonetically maybe similar, so play with the different means by which you could spell what sounds phonetically. When you are doing a stylized mark, there are new onsets ways to search for that as well. So this is what we are talking about today copyrights and trademarks. It is important in both of those aspects to register or seek registration or apply for registration of the marks enter the copyright as soon as you practically can do so with the copyright as soon as the work is created and with the trademark as soon as the idea for the mark is obtained, you do some due diligence and I direct him on speaking with counsel so that they can advice whether the mark is something for which a registration could be obtained through the Patent and Trademark Office. That is the basis summary today of copyright and trademark issues. There is obviously a lot more to discuss and will follow that up in the later time, but for now I would like to leave you with that on this Monday, July 2, looking forward for the July 4th weekend. I hope that our July 4 holiday I guess the weekend is either pass or it is upcoming depending in when you intend to celebrate, but July 4 it's being on Wednesday which everybody a happy 4 of July and we will be back next Monday, July 9 with individuals talking about Toodalu. I look forward to seeing you then. I wish you well and have a great afternoon.