Monthly Archives: May 2015

Copyright Protection Doesn’t Monkey Around

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The U.S. Copyright Office released an updated 1,222-page “Compendium of U.S. Copyright Office Practices, Third Edition” in 2014 clarifying its position that it “will register an original work of authorship, provided that the work was created by a human being.”  The report goes on to state that “[t]he Office will not register works produced by nature, animals, or plants.  Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy(ies) state that the work was inspired by a divine spirit.”  The report provides examples of works that will not be protected by copyright, and the first example is “A photograph taken by a monkey.”

Macaca_nigra_self-portrait_(rotated_and_cropped)

The report was originally released weeks after wildlife and nature photographer David Slater claimed that Wikimedia was infringing his copyrights in the “selfies” taken by macaque monkeys in Indonesia by allowing the pictures to be posted in Wikimedia Commons, a library of public domain photos.  Wikimedia refused to remove the images because it believed the monkey was the photographer, and, therefore, the “author” of the photo…and, as non-humans can’t own copyrights, the photo was in the public domain.  Slater argued that he staged the shot and set up the selfie intentionally, so it’s irrelevant that the monkey pressed the shutter (likening the monkey to an assistant).

Although Slater is still claiming copyright ownership in the photos and could file a lawsuit against Wikimedia (as UK or European law may allow Slater to claim ownership if he employed “labour, skill and judgment” in connection with the photographs or they were part of his “intellectual creation”), he is currently offering free canvas prints of the monkey selfie and donating money to the Sulawesi Crested Black Macaques Conservation Programme for each print redeemed.

 

Social Media Terms of Use – Is Your Brand Following the Rules?

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Advertisements and promotions on social media channels are a daily occurrence.  In addition to complying with traditional advertising rules and regulations, brands need to comply with each social media channel’s Terms of Use and advertising-specific rules.

NBC recently ran afoul of Facebook’s rules when it posted a three-minute clip from the latest episode of Saturday Night Live that began with a five-second ad for Subway.  The rules state that “Third-party advertisements on Pages are prohibited, without our prior permission.”  In other words, video clips with ads not sold by Facebook are not allowed…unless a brand enters into an agreement similar to typographic-poster-design-i-have-read-and-accept-the-terms-and-conditions_GJfTZN_dFacebook’s deal with the NFL that allows brands to run ads after clips are shown and gives Facebook takes a piece of the ad revenue.  Earlier this year, Facebook launched Anthology, which connects brands and digital media publishers (like Funny or Die, The Onion and Oh My Disney) to create branded content to be targeted and optimized through Facebook.

The Terms of Use and related policies for each social media channel (Twitter, Instagram, Facebook, etc.) can differ greatly and tend to change frequently. The Terms of Use often contain guidelines or rules for advertising and hosting contests, sweepstakes and other promotions through the social media channel, ownership and (restrictions on) use of content, rules (and prohibitions) for using native functionality (e.g., “share on your Timeline to enter”), and other important information. Some social media channels, such as YouTube, require you to obtain written permission from them before you can post ads or product placements.

Before your brand posts content on a social media channel, be sure to check the rules on each channel to make sure you’re in compliance.

 

What’s in a (Brand) Name?

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writing brand concept

Choosing a name for your company, creative project, product or service is just as important as (and often more difficult than) naming a child or pet. Brands are so important that many big companies spend hundreds of thousands of dollars and months or even years on research, focus group testing and the like in attempts to find just the right name or logo for a new product or service.

Your brand distinguishes your products and services from your competitors’ products and services. But a brand is much more than just a name or logo.  Your brand also serves as a symbol of the quality, value, and reputation which customers and fans expect in products you sell and services you provide…not to mention the emotional connection customers and fans can develop with your brand.  For example, if we’re talking about driving a Beetle or listening to The Beatles, you probably don’t just think “car” or “band.”  Instead, you likely have thoughts and emotions related to your experiences with and perceptions of those brands — whether positive or negative.

With so much at stake, choosing a name that will resonate with your customers and fans and convey information about your product or service is important.  When brainstorming a name for your company, creative project, product or service, remember that not all brands are created equal … particularly when it comes to trademark protection.

Brands — also known as Trademarks (used on products) and Service Marks (used in connection with services) — include any word, name, symbol, or device, or any combination of these, used, or intended to be used, in commerce to identify and distinguish the goods or services of one entity from those sold or provided by others, and to indicate the source of the goods or services. Trademarks can include entity names, product names, logos, domain names, 800 numbers, slogans, phrases and tag lines, character names, band names, jingles, and trade dress, such as product configurations, color, packaging and store designs.  

The best marks are memorable, appealing and elicit desired responses.  The ultimate goal should be to find a mark that is uniquely yours — a mark that is not confusingly similar to an existing mark used for similar products or services (i.e., someone else beat you to the punch), one that suggests some connection with another organization or famous person, or one that consists of a person’s last name.  And it can take a village of marketing, artistic, business and legal types to find that perfect mark.

While searching for that perfect mark, you should keep in mind that some marks are stronger than others…

  • Generic terms are common names for products or services, such as SALT when used in connection with sodium chloride or THE CHOCOLATIER for a store providing chocolate candy.  These terms can never be protected as trademarks.
  • Descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the product or service, such as SALTY used in connection with crackers or DALLAS.COM for a website providing tourism information about Dallas.  These marks are not initially protectable unless the owner can show that the mark has gained “secondary meaning” or “acquired distinctiveness” (proof that the mark has become distinctive of the mark owner’s goods or services) in the marketplace over time through extensive and substantially exclusive use.
  • Suggestive marks suggest some characteristic or nature of the product or service and require imagination, thought or perception to reach a conclusion as to the nature of those products or services, such as COPPERTONE for suntan lotion or BLOCKBUSTER for a video rental store. Although there can be a fine line between descriptive and suggestive marks, suggestive marks are automatically protected as trademarks because they are “inherently distinctive.”
  • Arbitrary marks are very strong marks because they have no relation to the product or service, such as APPLE for computers.   However, because these are real words, other companies may have also adopted the words as marks, such as APPLE VACATIONS.
  • Fanciful/coined marks are the strongest marks because they are made up words, such as XEROX for copiers or EXXON for gasoline, and consumers only associate the mark owner with selling that service or product.  

From a trademark protection perspective, fanciful/coined, arbitrary or suggestive marks are preferable to descriptive (protectable with acquired distinctiveness) or generic (never protectable) marks.  Many company, product and service names tend to be descriptive or suggestive because business owners attempt to quickly choose names that help consumers easily identify their products or services.  However, the more creativity you use in the naming process, the stronger the mark and the more likely you are to prevent third parties from being able to use the same or similar mark on similar (or even unrelated) products and services.

Before using or registering a name for your services or products, you should, at the very least, perform a quick “knockout” availability search to see if a third party may already be using the same or similar mark in connection with the same or similar products or services.  You should:

  • Check for entity names and state trademark registrations with Secretary of State Offices where business will be done.
  • Search the U.S. trademark database.
  • Perform a Google search to determine whether third parties have common law rights to the name.
  • Perform a WHOIS search to determine whether domain names are available (as brands typically want a corresponding web presence).

A mark is one of the most important words, phrases or designs you will use to represent your products or services to the world.  Although selecting a name may seem simple, trademark law is very nuanced and is often much more complex than it appears. Therefore, I believe it is a wise investment of resources to engage a trademark attorney to perform more sophisticated searches to determine whether your mark is available and inform you as to the potential risks associated with use and/or registration of your proposed mark.  (Note:  You can save yourself some time and money by performing knockout searches for your potential marks before asking an attorney to search a particular mark more thoroughly.)

Choosing a mark that’s already being used by a third party can result in cease and desist letters and trademark infringement lawsuits…potentially requiring you to abandon use of the mark, destroy all products and materials that depict the mark, and potentially even paying the third party mark owner profits gained from infringing uses of a mark as well as damages the mark owner may have incurred from such infringing use.  The last thing you want to do after spending a bunch of money to print business cards, stationery, packaging, advertising and goodness knows what else emblazoned with your mark is having to scrap everything and start from scratch with another mark.

Hiring a lawyer to guide you during the mark selection process can save you (potentially hundreds of) thousands of dollars and several headaches down the road.