A. Copyright
Copyright protects any original work of authorship that is in tangible form, regardless of whether or not it has been registered or has a copyright symbol. However, there is a catch. Unless the work has been registered by the Copyright Office and has a copyright symbol there are dire consequences for infringement remedies. These are spelled out in the Copyright Act. Section 411(b) reads:
*** no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.
Section 401(d) reads:
If a notice of copyright in the form and position specified by this section appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant’s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages.
In other words, if the work does not have a copyright symbol the defendant’s “interposition of a defense based on innocent infringement” will carry weight in his favor.
Original works of authorship include literary and musical works, paintings, sculpture, audiovisual works, sound recordings, or architectural works. Tangible form may include anything written on paper, saved to disk(web pages, graphics on web, electronic mail messages or computer programs), or saved on any audio/video device. There are, however, several fundamental categories that are not eligible for copyright protection: ideas, facts, titles, names, procedures, and works not fixed in tangible form. Copyright only protects the form in which these ideas or facts are expressed, not the ideas or facts themselves.
The original expression becomes protected by copyright as soon as it is in tangible form. Once an original expression exists in a tangible form, that expression is protected by copyright.
The length of protection varies depending on when the copyrightable material was created. The Copyright Law changed in 1978. If the copyrightable material was created:
* Before 1978: It is protected for 75 years, beginning on the date of publication.
* After 1978: It is protected until 70 years after the death of the creator.
The creator owns the copyright unless he or she creates the work for someone else (possibly the institution they work for). In the case of creating for someone else (a principal), the principal owns the copyright. This situation is also known as “work made for hire.”
Copyright protection automatically attaches to your original work, so what are the advantages of registering a work? There are two reasons to register:
1. You must have a copyright registration before an infringement suit can be filed in federal court; and
2. You must register the copyright within three months after creation of the work in order to collect statutory damages and attorney’s fees in a lawsuit. Otherwise, the law will only allow the collection of actual damages, which will generally be less than statutory damages.
To register a work, you have to file a copy of it either electronically or by hard copy with the Register of Copyrights, Copyright Office, Library of Congress, Washington D.C., 20559.
* A completed application form which can be prepared and submitted online.
* A fee of $35 for each application filed electronically and $45. for a non-electronic registration.
B. Trademark
Is registration of a trademark required?
No. You can establish rights in a mark based on legitimate use of the mark over time. However, owning a federal trademark registration on the Principal Register provides several advantages:
1. Constructive notice to the public of the registrant’s claim of ownership of the mark;
2. A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
3. The ability to bring a trademark infringement action concerning the mark in federal court;
4. The use of the U.S registration as a basis to obtain registration in foreign countries; and
5. The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
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. “TM” can be used pending registration but it should not appear on the specimen submitted as proof that you are offering goods or services in commerce.
An application for trademark may be filed in anticipation that the goods or services will be offered in commerce. This is known as an “intent to use” application. To avoid abandonment, you must convert the intent to use application to “use in commerce” within 36 months from the Notice of Allowance.
Domain names can be registered as a trademark. However, the act of registering a domain name does not give rise to a trademark and as a general rule has no priority over a preexisting (registered or unregistered) trademarks. A domain name registrant is not protected from a claim that its choice of domain name infringes a trademark holder’s rights.
* A USPTO application form can be completed online.
* Registration costs $325 for each Class of trademark.
