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  Copyrights, Trademarks, & Patents

Remember, usage of *any* licensed fabric/embroidery file/image for finished products is a DEFENSE, not a right. The intellectual property owner is within their rights to protect their registered property and their brand reputation.


What about fan art and "Inspired by" works?:

Inspired by/fan art etc: Fan art is supposed to be for personal use. The second you try to sell it, it can become a violation.


What about the % of change deal?

I admittedly don't know much about that, but I say this: "If it looks like a duck..." You are essentially making money off of someone else's creative property.

Here is a Legal Zoom article regarding transformative work (*note that not ALL of LegalZoom is perfect for your business, this just happens to have a decent explanation.):

info.legalzoom.com/legal-use-disney-characters-21231.html


But I purchased the licensed material from the store...

On the selvaged edge, however, it will typically state "For Personal Use Only" or "For Non-Commercial Use Only". This may mean that you can purchase the fabric to make stuff for yourself, but not to sell.


But what about "First Sale Doctrine"?

In short, the First Sale Doctrine basically states that you are free to resell unaltered items. Once you alter the item, it becomes something new and could become a violation of the IP owner's rights. To find out if it is, you must go to court for a judge-given ruling. Each lawyer and each judge will interpret it differently. Be vigilant in getting an interpretation from someone that is working for you in your specific situation.


But I can't afford a lawyer:

You don't have to afford a lawyer. There are colleges around who educate and train people to become lawyers, utilize the instructors and possibly the senior students. SBA.gov has many different volunteers available in various places around the country, utilize their services by visiting their offices or calling them. Google is also a good resource to find attorneys who may meet with you or speak with you over the phone about what they can and cannot do for you free of charge. Many attorneys offer low cost consultations for various topics.


Dana Bucy Miller of DM Law, LLCis a wonderful resource for intellectual property questions. She offers some quick phone calls as well as more in-depth consultations so you get a full sense of potential solutions for your questions.


Keep in mind: If you spent endless hours on an image just to have someone else "recreate" it and sell it, how would you feel?


Note: Embroidery files are another beast of its own. If you purchase an embroidery file that is not legally licensed, the IP owner may subpoena the vendor's records of who purchased. The same may hold true for fabric and other items, but I have not seen such a reaction yet.

 

Copyright: The Basics

Copyright gives owner of a creative work the right to keep others from unauthorized use of the work

Must meet ALL of these criteria to be protected:

must be original

must be fixed in a tangible medium of expression, recorded on paper, audio/visual, computer disk, clay, or canvas.

must have at least some creativity (alphabetical lists, for example are not creative)

Does NOT protect facts or ideas, ONLY the way in which they are creatively arranged

How is a Copyright created?

  • A creative work is protected by copyright the moment the work assumes a tangible form.
  • Providing “©” notice or registering is not necessary to obtain protection, HOWEVER, both will enhance the protection.
  • To enhance protection:
  • - Use of the copyright bug: ©(year of publication)(author/owner)
  • - Register with the US Copyright Office (USPTO) within 3 months of publication date.
  • -----> Creates legal presumption & allows the owner to recover up to $150,000 (& sometimes attorney fees) w/o proving any monetary harm.
  • -----> Registration & Application
  • Paper $65
  • Paper/Online $50
  • Online $35

Who owns the ©?

  • Creator/author of the work EXCEPT:
  • - If work is created by an employee in the course of employment (“work-for-hire”), copyright owned by company.
  • - Commissioned work & parties sign a written work-for-hire agreement, copyright owned by commissioning party
  • - Author sells the copyright to someone else, copyright owned by buyer.

Copyright encompasses several exclusive rights:

  • Reproduce work
  • Display/perform work
  • Distribute work
  • Prepare adaptations of the work

Any of these rights may be granted exclusively or in combination, with totality or limitation to another person.

  • When all items are transferred, it is called an “assignment”
  • When limited items are transferred, it is a “license”
  • The license can (and should be) recorded at the USPTO

How long does a copyright last?

  • Published AFTER 1978
  • - Lasts the life of the author plus 70 years
  • -----> Lasts between 95 & 120 years
  • work belongs to author’s employer
  • work belongs to commissioner
  • author publishes work & registers the work anonymously or under a pseudonym
  • Published BEFORE 1978
  • - Published before 1923-PUBLIC DOMAIN
  • - Published between 1923 & 1963 & not renewed-PUBLIC DOMAIN
  • -----> Renewed copyright lasts 95 years from first publication
  • - Published between 1964 & 1977-Copyright lasts 95 years from date of publication

Copyright Infringement

  • Owner entitled to sue in federal court & ask the court to
  • - Issue orders (restraining & injunctions)
  • - Award monetary damages
  • - Award attorney fees
  • Legal defenses
  • - Too much time has elapsed between infringing act & lawsuit (statute of limitations)
  • - Allowed under the fair use defense
  • - Work was independently created (wasn’t copied)
  • - Copyright owner authorized a license

When can copyrighted work be used without permission?

  • Fair Use: work being used for a transformative purpose:
  • - Research, scholarship, criticism, journalism
  • Several factors taken into consideration:
  • - Purpose & character of use
  • - Amount & substantiality of portion borrowed
  • - Effect of use on the market for copyrighted material

*FAIR USE IS A DEFENSE, NOT AN AFFIRMATIVE RIGHT*


Berne Convention

  • All member countries
  • Protection for life of author plus 50 years
  • Protection automatic-no registration needed

Visual Artists Rights Act (VARA)

  • Protects unfinished artwork

Fictional Characters

  • Can be protected separately from their underlying works as derivative copyrights provided they are sufficiently unique and distinctive
  • - “the less developed the characters, the less they can be copyrighted” - Judge Learned Hand
  • Characters are commonly protected under copyright and trademark laws.

Clearing Houses

  • Quicken the obtainability of permission to use
  • - www.copyright.com (written material)
  • - www.BMI.com & www.ascap.com (musical performance)
  • - www.harryfox.com (reproduce songs)
  • - www.corbis.com & www.thepicturecollection.com (photographs)
  • - www.artres.com & www.vaga.co.uk (famous artwork)
  • - www.cartoonbank.com (licensed cartoons)

Compilations

  • Work formed by selecting, collecting, & assembling preexisting materials or data in a novel way
  • Compilation may be copyrighted

First-Sale Doctrine

  • Permits the purchaser of a legal copy of a copyrighted work to treat that copy in anyway desired, as long as the copyright’s owner’s exclusive copyrights are not infringed upon
  • - Destruction, sold, given away, rented

Importing

  • In the US
  • - Copyright owners records his work with the US Customs & Border Protection Service
  • - Any imported copies that are the same or highly similar are temporarily seized
  • - Copyright owner is informed and provided time in which to obtain a court order barring materials from being imported into the US
  • In practicality, remedy is seldom used due to the inability of the C&BPS to check imports carefully against recorded copyrights. HOWEVER, if alerted, customs will act if the copyright owner contacts them
  • File with the International Trade Commission to have infringing works excluded from US as would constitute an unfair method of competition

Indecent and Immoral works are not protected

  • Determination is made by the USPTO

Orphan Work

  • Owned by a hard to find copyright owner
  • - Example- child sends a picture to Elvis Presley, a biographer wants to use drawing in his book. He cannot because it is protected.


Stim, Richard. Patent, Copyright & Trademark: [an Intellectual Property Desk Reference]. 12th ed. Berkeley: Nolo, 2012. 197-347. Print. 

Trademark: THE BASICS

  • Legal rules by which businesses protects names, logos, and other commercial signifiers used to identify their products and services.
  • Also helps consumers from being confused or deceived in the marketplace.
  • Distinctive word, phrase, logo, graphic symbol or device that is used to identify the source of the product or service
  • - includes: shapes, letters, numbers, sounds, smells, or colors
  • -----> Think NBC chimes
  • - Titles, character names, or other distinctive features of movies, TV, & radio programs
  • -----> Think Optimus Prime, Doctor Who, “Autobots, roll out.”


Trademark

  • Most protection to distinctive names, logos, and other marketing devices
  • Becomes distinctive in 2 ways:
  • - Born distinctive-doesn’t describe goods or services for which they are used
  • -----> Arrow for shirts, Yahoo! for internet
  • -Achieve distinction through sales or advertising
  • -----> building your brand, branding
  • Inherently distinctive consists of:
  • - creatively unique logos or symbols
  • - words that are created specifically to be a trademark
  • -----> Exxon, Pepsi, Kodak
  • - common words used in a surprising or unexpected manner
  • -----> Amazon, Diesel clothing
  • - words that clearly connote qualities about the product or service without literally describing
  • -----> Slenderella, Netscape
  • If mark describes some aspect of product or service it can become distinctive through sales & advertising
  • - terms that attempt to literally describe the product or characteristics
  • -----> Vision Center, Computerland, Park ‘N Fly
  • - Surnames
  • -----> Sears, Gallo, Newman’s Own
  • - Geographic terms
  • -----> Bank of America, Washington Mutual


Service Mark:

  • For services:
  • -McDonalds, FedEx, MTV


Trade Dress:

  • Distinctive shapes:
  • - CocoCola Bottle, guitar shapes, car shapes
  • - Shape does NOT affect function in any way
  • Packaging, attendant displays, configuration of the product itself
  • Decor of environment in which service is provided
  • - Hard Rock Cafe
  • Must be inherently distinctive, unless it has acquired secondary meaning


Lanham Act

  • Establishes a registration system to provide judicial remedies for infringement
  • State registration may also be available
  • Usually the first to use in any geographical area will win a dispute
  • - if not registered with the federal government, ownership would only be local
  • False Advertising


Loss of Protection

  • Non-use
  • - abandonment- 3 years of non-use (Lanham Act)
  • Generics & Genericide
  • - “computer”, “eyeglass”, “ebook”
  • -----> Public associates these terms with a broad type of product, not a brand
  • - Term may be created & public eventually comes to believe it as a generic term
  • -----> Velcro®, Kleenex®, Zipper, Cellophane, Asprin, Yo-Yo, Escalator, Thermos®, Kerosene, Band-Aid®
  • Confusingly Similar
  • - Case of Polaroid Corp & Polarad Elect Corp
  • - Confusing factors:
  • -----> similarities of marks
  • -----> similarities of goods
  • -----> degree of care exercised by consumer when purchasing
  • -----> intent of person using similar marks
  • -----> any actual confusion occurred


Ownership

  • First to use in a commercial context
  • May be limited geographically if not registered with the federal government
  • Filing intent-to-use (ITU) assigns ownership with the USPTO
  • - 6 months & 3 years depending on the reasons for delay
  • - May be extended for a cost


Filing with the USPTO

  • Easier to protect nationally
  • $325/class using TEAS system
  • - Goods: chemicals, paints, cosmetics & cleaning products, lubricants & fuels, pharmaceuticals, metal goods, machinery, hand tools, etc
  • - Services: adverts & business, insurance & financial, building construction & repair, telecommunications, transport & storage, etc
  • Must be put into use “in commerce that Congress may regulate”
  • - Ship a product across state lines (CA -> IN)
  • - Ship a product between state and territory (CA -> PR) or territory and territory (PR -> VI)
  • - Ship a product between state/territory and another country (CA -> EU; PR -> EU)
  • - Conduct a service between state lines (truckers)
  • - Conduct a service in more than one state, or across territorial borders, or across international borders (Taco Bell, Subway, Burger King)
  • - Operate a business that caters to domestic or international travelers (hotel chains)
  • Acceptance of Application
  • - Published in the Official Gazette (OG, online USPTO)
  • - Objections may be filed during this time
  • - Included on Principal Register
  • -----> Principal Registered marks allow customers inspectors to seize any products bearing the infringing mark & contact mark’s owner
  • -----> Infringing importer can agree to remove offending mark or the marks owner may waive the right to object
  • -----> Occurs when Bureau of Customs & Border Protection (BCBP) is tipped off.


Trademark Search


Notice:

  • ™ or SM
  • - May be used to notify ownership claim, no registration needed
  • ®
  • - Must be registered through USPTO
  • - After filing, failure to use Registered mark may limit judiciary consequence
  • Certification marks
  • - Certify regional, material, mode of manufacturer, quality, accuracy
  • -----> California Certified Organic Farmers (CCOF), GOTS certification
  • Collective Marks
  • - Symbol, word or phrase, label used by a group or organization
  • -----> RDIA, RDA, BBB, Boy Scouts, Girl Scouts, APA, Sororities/Fraternities


Top Level Domain (TLD)

.aero (air transport industry)

.asia (Asia-Pacific Region)

.biz (restricted to business)

.cat (users of Catalan language & culture)

.com (commercial enterprises)

.coop (restricted to business cooperatives)

.edu (educational industries)

.gov (restricted to government agencies)

.info (information providers

.int (restricted to organizations endorsed by treaties between nations)

.jobs (employment related sites)

.mil (restricted to military)

.mobi (devices using mobile internet)

.museum (restricted to museums & museum employees)

.name (restricted to individuals)

.net (network related entities)

.org (NPOs)

.pro (restricted to licensed professionals)

.tel (internet communication services

.travel (travel industry)

.xxx (pornography)



Stim, Richard. Patent, Copyright & Trademark: [an Intellectual Property Desk Reference]. 12th ed. Berkeley: Nolo, 2012. 379-502. Print.



Trade Secret

  • Customer lists, sensitive marketing info, unpatented inventions, software, formulas & recipes, techniques, processes, and other business info that provides a company with a business edge
  • Not known outside particular business entity
  • Known only by employees & others involved in the business
  • Subject to reasonable measures to guard the secrecy of info
  • Valuable, and
  • Difficult for others to properly acquire or independently duplicate


www.ndasforfree.com


  • Patterns & designs may qualify if they create a competitive advantage and are kept secret
  • - Zorb ™ & Zorb II ™ 
  • Reverse Engineering renders “trade secret” public domain in terms of secrecy. May still be protected under patent laws.


Stim, Richard. Patent, Copyright & Trademark: [an Intellectual Property Desk Reference]. 12th ed. Berkeley: Nolo, 2012. 523-568. Print. 

Patents: The Basics

"Utility patents are granted to the inventor of a new, nonobvious invention." (Stim, Richard. "Introduction." Patent, Copyright & Trademark: [an Intellectual Property Desk Reference]. 12th ed. Berkeley: Nolo, 2012. 5. Print.)

Novel:

a new development in at least one or more of its constituent elements

Nonobvious:

  • Would someone who was skilled in the particular field as the invention consider the invention to be an unexpected or surprising development?
  • Can be based upon "common sense" ("If at first you don't succeed...")
  • Anticipation (said to be anticipated if too similar to an earlier invention):
  • - Prior publication: All basic elements must be contained in a single publication or invention.
  • - Existence of prior invention
  • - Placing invention "on sale" (even an offer of sale, not necessarily an actual sale)
  • - Public use or display of invention

Prior Art:

  • Any published writing publicly available
  • Any US Patent
  • Any relevant invention or development existing prior
  • Any public knowledge or commercial use, sale, or knowledge of invention
  • ALL patents, expired or current, US or Foreign, may be considered Prior Art (before March 2013)
  • Any patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than a year prior to date of application (before March 2013)
  • Disclosures made 1 year prior or less before effective filing date shall NOT be prior art IF disclosure was made by the inventor (after March 2013)
  • Anything sold prior to filing is prior art (after March 2013)
  • Filing a Provisional Patent Application (PPA) (after March 2013)

Applying:

  • Must disclose all known instances of anticipation
  • Must disclose pertinent prior art that might bear on the question of nonobviousness
  • Must disclose any other information known to the applicant that bears on the patentability of invention & proper scope of claims

Patent Expiration:

  • Utility: 20 years after application date
  • Design: 14 years after issuance date
  • Failure to pay maintenance fees
  • Revocation: Application insufficient, fraud (lying about knowledge of prior art), illegal conduct when using patent (conspiring with licensee to exclude other companies from competing)
  • Anti-trust violations
  • Unethical business practices
  • Double Patenting: 2 patents on a single item-both patents will be invalidated UNLESS it results from a divisional application in which the USPTO misperceived the application as two inventions instead of one.

Enforcement:

  • Patent infringement action against anyone who makes, uses, or sells invention without permission
  • Injunction received preventing infringer from any further use or sale & award damages to patent owner
  • Licensing agreement may be an alternative
  • Means plus function clause: describes an element of invention in terms of function rather than specific structure (broadens the ability to enforce the patent)

Patent Infringement Outside of US Borders:

  • To import infringing device into the US
  • To create components in the US & have them assembled elsewhere

Design Around:

  • To design or build a device that is similar to but doesn't infringe on an invention patented.
  • Scope of protection determined by the wording of the patent:
  • - Any device containing same elements infringe
  • - Device containing FEWER or DIFFERENT elements does NOT infringe
  • - Courts can decide that the differences in the basic elements of the two inventions are immaterial (unimportant) to the overall invention, thus infringement occurs (two inventions work the same way to provide the same end result)

After March 2013, America Invents Act is in full effect (Also referred to as Patent Reform Act of 2011):

  • First to file
  • 15% surcharge of all patent fees
  • Tougher to obtain patent reexamination: Director to only authorize reexam if "there is reasonable likelihood that the petition would prevail with respect to at least 1 of the claims challenged in the petition"
  • Easier for prior users to defend: If sued for infringement, but you were using the patented technology more than one year before filing date, you have a defense (though this does NOT invalidate the patent)
  • Must be filed within 9 months after patent issuance: Challenges commonly based around novelty and nonobviousness
  • Selling prior to filing considered prior art
  • Willful blindness standard: "(sometimes called ignorance of law, willful ignorance or contrived ignorance or Nelsonian knowledge) is a term used inlaw to when an individual seeks to avoid civil or criminal liability for a wrongful act by intentionally putting himself in a position where he will be unaware of facts that would render him liable." (Mous, Anon Y. *"Willful Blindness." Wikipedia. Wikimedia Foundation, 31 Aug. 2013. Web. 25 Oct. 2013.) (This *IS* still an infringement)
  • Filing PPA establishes prior art
  • Nonobviousness determination can be based on common sense

Fee:

  • Patent issuance fee (If won)
  • 3 additional fees, for small businesses (under 5000 employees), together sum $5,000-$6,000
  • Maintenance fees

Petitioning a Patent:

  • Petition must be filed within 9 months after patent issuance.
  • Most common challenges are for novelty & non-obviousness
  • Must be:
  • 1. Accompanied by payment of fee to Director
  • 2. Identify all real parties in interest
  • 3. Petition identifies, in writing and with particularity, each claim challenged, the grounds each challenge is based, and evidence that supports the grounds for each challenge of each claim including:
  • - Copies of patents & printed publications
  • - Affidavits or declarations of supporting evidence
  • 4. Petition provides such other information the Director may require by regulation
  • 5. Petitioner provides copies of any documents required to the patent owner or representative of patent owner.

Patent Search:

Fee Based

www.delphion.com

(US 1971; EU; PCT; Derwent)

www.micropatent.com

(US & Japan 1976; PCT 1983; EU 1988)

www.lexis-nexis.com

(US 1971)

www.patentcafe.com

www.patbase.com

(1800s international)


Stim, Richard. Patent, Copyright & Trademark: [an Intellectual Property Desk Reference]. 12th ed. Berkeley: Nolo, 2012. 4-171. Print.