Copyright FAQ

These sets of Copyright and Trademark FAQ are provided as a service for our clients and friends.  While the information provided in this publication is believed to be accurate, it is general in nature and should not be construed as legal advice.  Please consult with a competent professional before relying on any written commentary.  The material herein is not written to solicit any engagements where to do so might offend or violate the professional standards of any other state, country or bar.

1.  When does a copyright come into existence?

Under current law, a copyright comes into existence when it's fixed in a tangible medium of expression, such as in a book, recording, video or other tangible medium.  The copyright exists whether or not the work is registered and whether or not the work contains a copyright notice.  Nevertheless, copyright registrations and notices are recommended.


2.  To protect a copyrighted work from infringers, is a notice on the work required?

In the United States, copyright notices are no longer required to acquire and maintain copyright protection.  Nevertheless, a copyright notice on the protected work will help deter an infringer's claim he was unaware of the work's copyright protection.   


3.  If a copyrighted work is exhibited on the Internet, does this remove copyright protection?

Copyright protection covers copyrighted works appearing on the Internet and lawsuits for infringing on the Internet may likely increase in the future.


4.  Does an assignment of copyright have to be in writing?   

To be enforceable, an assignment of copyright must be in writing and signed by the party assigning the copyright.  If the copyright owner is licensing rights to a third party, a writing is not required for the licensing rights to be enforceable.  However, oral agreements are very difficult to enforce.


5.  What is the advantage of registering an assignment of copyright in the Copyright Office?

Once registered in the Copyright Office, the recorded copyright assignment provides constructive notice of the assignment, if it's recorded within one month of execution in the United States, and if executed outside the United States, then within two months of execution.


6. What can be the basis for a valid claim of copyright infringement?

If the copyright owner of the work who is claiming infringement can show that there is substantial similarity of protectable material in the alleged infringing work, there may be a basis for a valid claim of infringement.


7.  Can the creator/owner of a work ever terminate his assignment of copyright, if the assignment was valid when executed?

Under certain circumstances, the copyright owner ("assignor") can terminate his original assignment. Generally, pre-1978 grants may be effected at any time during a period of five years beginning at the end of fifty-six years from the date copyright was originally secured.  A grant executed by an author on or after January 1, 1978, is terminable at any time during a period of five years, beginning at the end of 35 years from the date of execution of the grant.  If the grant covers the right of publication of the work, the period begins at the end of 35 years from the date of publication of the work under the grant, or at the end of 40 years from the date of execution of the grant, whichever term ends earlier. The congressional intent of the amended 1976 Copyright Act was to protect authors (and their successors) against unremunerative transfers early in their careers. Only U.S. rights are affected by the terminations. 


8.  Are there any copyright transfers exempt from this termination right?

Certain categories of transfers are exempt from termination.  They include:

(a)  A copyright grant in a will, if the testator owns the work being devised at the time she executes the will;

(b)  The grant of a valid work made for hire; and

(c)  The rights to derivative works prepared under authority of a grant prior to its termination (this does not apply to other derivative works prepared after the termination that are based upon the copyrighted work covered by the terminated grant).

      Trademark FAQ

1.  What is the legal definition of a trademark?

A trademark is a designation of source or origin of a product or service.


2.  How are trademark rights acquired in the United States?

In the United States, the use of a trademark provides trademark rights.  Registration of the trademark with the U.S. Patent and Trademark Office ("USPTO") enhances those rights.


3.  Can a mark be registered with the USPTO if it has been created, but not yet used in the owner's business?

A federal trademark application may be filed based on actual use or on a bona fide intent to use the mark in commerce.  If the application is based on a bona fide intention to use the mark, the registration will not be completed until the mark is actually used in commerce.  Upon registration, constructive use and priority of the mark will date back to the filing date of the federal trademark application.


4. In the area right near the trademark on a product or in an advertisement, some trademarks show the symbol of the letter R in a circle and others show the "TM" or "SM" designation.  What's the difference between them?

The letter R in a circle may not appear near the mark, unless the mark being used on or in connection with goods or services is registered with the USPTO.  The designation "TM" or "SM" (for trademarks or servicemarks) may be used in connection with the mark without being registered with the USPTO or having an application on file.


5.  How long does the federal trademark registration remain valid?

A federal trademark registration is valid for 10 years, but to remain valid, in the sixth year following registration, the trademark owner must file a written affidavit or declaration, indicating that the mark is still in use.


6.  Can a trademark owner assign the rights in his trademark to a third party?

A trademark can be sold or assigned, but if the trademark owner assigns his trademark to another, the assignment must be accompanied by the goodwill represented by the mark.


7.  What types of marks offer the best protection against trademark infringement?

A distinctive mark has a better opportunity for legal protection.  There are degrees of distinctiveness which can be classified in a descending order of protection.  The order is:

(a)  arbitrary or fanciful;
(b)  suggestive;
(c)  descriptive; or
(d)  generic.

Arbitrary or fanciful marks are broad in scope and often have no particular meaning.  Several examples include: KODAK for film; APPLE for computers; and EXXON for gasoline.

Suggestive marks may be limited in scope, and will simply suggest, but not describe the quality or nature of the specific goods or services.

A descriptive mark is usually not protectable or registrable until and if the mark acquires "secondary meaning" with the public.  That is, the public recognizes the descriptive words as a mark, rather than the primary description of the goods or services.

Generic marks such as "SWEET" for sugar afford essentially no protection. 

Rule of Thumb:  Marks should be used as an adjective, not as a noun.  Then, the mark is followed by the common descriptive term for the goods or services for which the mark is used. 

Example:   Apple Computers

Trademark: APPLE (Adjective)   Goods: Computers (Noun)


8.  What are the implications of licensing trademark rights to a third party?

The licensing of one's trademark rights to a third party requires the licensor to exercise quality control over the use of the mark.  If the licensor doesn't monitor the licensee's quality control of the mark, the licensor may lose her rights in the mark.

Copyright 2009 The Fjordbak Law Firm