Joshua Tropper

Wednesday, 30 June 2004 05:19

Copyrights and trademarks

Copyright is the right of an author to prevent anyone from making or selling unauthorized copies of the author's works. It protects forms of expression such as books, films, musical compositions, sculpture, architectural designs, paintings, photographs and even computer programs.

Copyright does not protect abstract ideas, just the particular fixed form of expression of an idea. Copyright also protects against the creation of unauthorized derivative works, such as translations and sequels.

Copyright automatically exists the moment a work is "fixed in a tangible medium of expression," which is when it is sufficiently permanent or stable to be perceived, reproduced or otherwise communicated. An employer is the "author" of a work created by employees in the course of their employment, but a specific written agreement is needed to protect works created by independent contractors.

Any contract for the creation of a work should specify who the owner will be and include appropriate provisions for assignment of the other parties' rights.

Copyrights are not enforceable in U.S. courts unless the work has been registered with the Copyright Office. Registration is $30, and allows the copyright holder to recover statutory damages and attorneys' fees if the work was registered before infringement began.

If the infringement began first, remedies are limited to the owner's actual damages and an injunction to stop the infringement. Because the cost of registration is so low, registration of all your works may be well worth it if even one work is ever infringed.



A trademark is anything that can be used to identify goods or services as coming from one source rather than another. "Coca-Cola" is a word that distinguishes one company's beverages from its competitors'.

Coke containers have a distinctive red-and-white swirl, recognizable worldwide as identifying authentic Coca-Cola products. As long as the words or the color patterns are distinctive, they can be trademarks.

"Aspirin" started out as Bayer's trademark, but has become the generic term for a type of pain reliever and is no longer capable of distinguishing Bayer's product from that of any other manufacturer. Xerox insists that the word "Xerox" is not a verb, and Kimberly-Clark always uses the word "brand" or "tissues" whenever it says "Kleenex" to distinguish its products from those of competitors to keep its trademarks from suffering the same fate.

Trademark rights, like copyright, come into existence automatically. Use a trademark to identify yourself as the source of your goods or services before anyone else has used a confusingly similar mark in the same market, and it is yours.

However, registration (which costs at least $335, depending on how many types of goods and services the mark is used with) can be valuable for many reasons:

Registration tells the world that you claim the mark as your own, and helps deter others from adopting confusingly similar marks. Without registration, a competitor could use exactly the same mark as you are using, in another part of the country -- even after you started using your mark in your home territory --and have priority over you in the areas it went into first.

Registration is as good as actually using the mark throughout the country and can provide a variety of advantages in any conflict over Internet domain names.

Most businesses have trademarks, and many have copyrights, that have never been registered. If you are lucky, you may never have problems.

Registration of your claims to copyrights and trademarks, however, could be the ounce of prevention that makes the difference between a profitable business and a disaster. Joshua Tropper is a partner with Gambrell & Stolz L.L.P. His practice areas include intellectual property, technology law and commercial litigation. Reach him at (404) 223-2210 or