Provided by courtesy of:The Law Office of Sunisha S. Choksi

4601 Washington Ave., Suite 200Houston, Texas 77007Phone: (832) 319-6724

Fax: (832) 319-6714sunisha@choksilaw.com

WHAT IS A COPYRIGHT?An original, creative expression (work of authorship) affixed to a tangible medium.A type of intellectual property protection established by the U.S. Constitution....

Article I, Section 8, Clause 8 Empowers the United States Congress

“ To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

A COPYRIGHT PROTECTS ORIGINAL & CREATIVE...

Literary worksMusical works, including any accompanying wordsDramatic works, including any accompanying musicPantomimes and choreographic worksPictorial, graphic, and sculptural worksMotion pictures and other audiovisual worksSound recordingsArchitectural worksComputer programsMaps

Author has to have exercised some independent, intellectual effort to claim a copyright in a given work.

A COPYRIGHT DOES NOT PROTECT...Works not fixed in a tangible formFactsIdeasConceptsSystemsMethods of operationShort phrases, slogans, titles and namesMere listing of ingredientsFamiliar symbols & designsTypographical ornamentation, lettering or coloringInformation that is common property- ex. lists or tables taken from public documents from Fed. Govt.

WHEN COPYRIGHT PROTECTION VESTS

At the moment creation+

original work of authorship fixed in a tangible form that it is perceptible either directly or

with the aid of a machine or device.Ex. Print copy, digital file

The copyright immediately becomes the property of the author(s) who created the work. Registration of work of authorship with the Copyright Office not required to establish a copyright protection.

"BUNDLE OF RIGHTS" AFFORDED TO COPYRIGHT OWNERS

The exclusive right to...

Reproduce the work (make copies),

Prepare derivative works,

Distribute copies of the work,

Publicly perform the work &

Publicly display the work.

WHAT IS A DERIVATIVE WORK?

Defined in 17 U.S.C. § 101: A work based upon one or more pre-existing works, such as-

translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.

A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”.

HOW LONG DOES A COPYRIGHT LAST?

It Depends...

All works published in the U.S. before 1923- In the Public Domain

Generally, works published after 1922, but before 1978:95 years from the date of publication

For an Individual- All works published after 1977:Life of the author + 70 years

For Corporate Authorship under “Work for Hire” or specifically commissioned, after 1977:95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first

For works published anonymously or under a pseudonym, after 1977:95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first

CORPORATE AUTHORSHIP-WORKS MADE FOR HIRE

Section 101 of the copyright law defines a “work made for hire” as

A work prepared by an employee within the scope of his or her employment or

A work specially ordered or commissioned for use as a Contribution to a collective work, Part of a motion picture or other audiovisual work, Translation, Supplementary work, Compilation, Instructional text, Test, Answer material for a test, or Atlas,

And if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

COPYRIGHT NOTICE

Consists of the symbol or word “copyright (or copr.),” the name of the copyright owner, and the year of first publication:

© 2011 Company, Inc.

Once required as a condition of copyright protection; now optional though highly recommended to give actual notice of copyright claim.

DO NOT require registration with, the Copyright Office to use copyright notice.

THE BENEFITS OF REGISTERING COPYRIGHTS

Registration not required, but a # of advantages...

1. Establishes a public record of the copyright claim.2. Before an infringement suit may be filed in court, registration

necessary for works of U.S. origin.3. If made before or within five years of publication, registration will

establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.

4. If registration is made within 3 months after publication 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.

5. Can record registration with U.S. Customs Service for protection against the importation of infringing copies.

GIVES COPYRIGHT OWNER BETTER ENFORCEMENT MEANS TO PROTECT COPYRIGHTED WORKS

COPYRIGHTS AS BUSINESS ASSETS-ASSIGNMENTS AND LICENSES

Any or all of the copyright owner’s exclusive rights may be transferred. The transfer of exclusive rights (exclusive license or assignment) is not valid unless that transfer is in writing and signed by the owner of the rights conveyed or the owner’s authorized agent.

Copyrights may also be conveyed by operation of law and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

Types of transfers:Licenses – Owner retains copyright but allows 3rd parties the right to use copyrighted content under certain terms and conditions.

Assignment- Owner transfers all rights, title & interest to a 3rd

party.

COPYRIGHT INFRINGEMENT

Violation of the “bundle of rights” afforded to the copyright owner.

Alleged Infringer- Anyone who, without the permission or consent of the copyright owner...

Reproduces the work (make copies),Prepares derivative works, Distributes copies of the work, Publicly performs the work &/or Publicly displays the work.

Prove infringement by showing: 1) infringer had access to the copyrighted work & 2) infringer’s work is substantially similar to the copyrighted work.

INFRINGEMENT-FAIR USE (SECTION 107 OF THE COPYRIGHT

LAW)

Reproduction of a particular work may be considered fair when:CriticismCommentaryNews reportingTeachingScholarshipResearch

Parody (often found by courts to be “fair use”)

Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair:

The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes.The nature of the copyrighted work.The amount and substantiality of the portion used in relation to the copyrighted work as a whole.The effect of the use upon the potential market for, or value of, the copyrighted work.

DMCA TAKE DOWN NOTICE PROVISION

Created under the Digital Millennium Copyright Act as a “Safe Harbor” provision to shield Internet Service Providers (ISP) from contributory infringement.

ISP required to maintain and record information with the U.S. Copyright Office regarding their DMCA agent designated to address copyright infringement issues.

Copyright owners can demand removal of allegedly infringing content by sending a take-down notice to ISP’s designated DMCA agent.

If complete, ISP will either remove or disable website containing alleged infringing work.

BASICSON

TRADEMARKS

WHAT IS A TRADEMARK?

A Trademark can be…

a word, ex: “EXXON” for oil products

a phrase, ex: “JUST DO IT” for sports apparel

a symbol, ex: the NIKE “Swoosh” for sports apparel

a design, ex: The DISNEY “Cinderella Castle” for children’s toys

WHAT IS A TRADEMARK?

As well as…

sounds, ex: NBC chimes

3D objects, ex: the Coca-Cola bottle

or a combination of the above, that identifies and distinguishes the source of the goods of one party from those of others.

WHAT IS A SERVICE MARK?

Like a trademark, except that it identifies and distinguishes the source of a service rather than a product.

Throughout this presentation, the terms "trademark" and "mark" refer to both trademarks and service marks.

A trademark is never a word or logo by itself…it is used to identify specific goods and services.

Helps your customers to make purchasing decisions regarding your goods and services because of a prior experience with the products or from recognition of a marketing or advertising campaign.

There is an expectation by the customer regarding the quality associated with the branded products or services. (Good Will)

KEY POINTS TO REMEMBER ABOUT TRADEMARKS:

Function as a source identifier of the goods and/ or services that your business offers in the market place.

Create tangible business assets related to the goodwill and reputation generated by the use of mark.

Is a type of property right that can be sold, transferred, and/or licensed creating additional streams of revenue for your business.

An important business asset that you want to protect from competitors. Want to avoid a likelihood of confusion by consumers with competitors’ brands.

WHEN CAN I USE THE TRADEMARK SYMBOLS TM, SM AND ® IN THE UNITED STATES?

"TM" (trademark) or "SM" (service mark): Use any time you claim rights in a mark, in order to alert the public to your claim, regardless of whether you have filed an application with the USPTO. Be aware of conflicts with prior, senior users.

Federal Trademark Registration symbol "®":Use 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.

IS REGISTRATION OF MY MARK REQUIRED IN THE UNITED STATES?

No. You can establish rights in a mark based on legitimate, actual use of the mark in commerce.

This is based on common law rights you develop in a mark if you are the senior user of the mark in conjunction with specific goods and services in the commerce.

However, there a number of benefits to registering you trademarks.

REGISTERING YOUR BUSINESS’ TRADEMARKS- LOCATION MATTERS

You can also register your trademarks at the state level, federal level, as well as in foreign markets, depending on the type of commerce your business is engaged in.

If just selling goods and services in Texas to Texas customer…engaging in intrastate commerce…can file for a state trademark registration.

If selling goods over seas markets, such as UK or Mexico…may want to register for trademarks in those countries.

BENEFITS OF REGISTERING YOUR TRADEMARKS—

U.S. FEDERAL TRADEMARK REGISTRATIONOwning a federal trademark registration on the Principal Register

provides several advantages:

constructive notice to the public of the registrant's claim of ownership of the mark;

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;

the ability to bring an action concerning the mark in federal court;

the use of the U.S 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.

FIRST STEP IN THE TRADEMARK PROCESS-BRAND SELECTION…NOT ALL TRADEMARKS ARE CREATED EQUAL.

Marks that are made-up, fanciful, arbitrary, or suggestive marks are inherently distinctive, and are given greater weight in enforcement of trademark rights. Ex: KODAK for film products.

With some exceptions (secondary meaning & acquired distinctiveness), descriptive words or designs that convey an idea about the quality, characteristic or ingredient of the good or service the mark is used in conjunction with are weak trademarks and are afforded little protection. Ex: COMPUTER-FIX-IT for computer repair services.

Generic words or designs that are the common words or designs for the good or service offered or sold have NO TRADEMARK PROTECTION.

Ex. WINDOW CLEANERS offering window cleaning services will not be afforded any trademark protection because the word elements are essentially the generic or common words to describe the service offered.

HELPFUL WEBSITES

U.S. Copyright Office-www.copyright.gov

United States Patent & Trademark Office-www.uspto.gov

THANK YOU!