Disclaimer: the information here is educational. It does not create an attorney client privilege between the author/presenters or the reader.
The focus of our meetup today was Intellectual Property law. Notes taken from slides and presentation prepared by Nicole Sallie Franklin and Elizabeth K. Stanley (bios below).
The ecosystem of Intellectual Property law includes:
Patents
Trademarks
Copyright
Plus, specific IP considerations for indie authors:
Trademark: Branding and Titles
Copyright: Protection and Using Third Party Works
Licensing and Contract Issues
Defamation, Privacy, and Publicity Rights
An Overview of Intellectual Property Law
Patents
Patents give the patent owner the right to exclude others from making, using, selling, or importing the invention (a limited time monopoly) in exchange for disclosing the details of the invention to the public.
Three types of patents:
Utility patents (to protect inventions)
Design patents (to protect ornamental designs/how something looks)
Plant patents
To protect new varieties of plants
US Patent and Trademark Office
Note: author’s don’t need to worry much about patents.
Trademarks
A trademark is any word, name, symbol, slogan, configuration, design, etc. that identifies your product or service
Logos, pictures, symbols, labels, designs
Polo Ralph Lauren horse
Nike swoosh
Burberry plaid
Hershey bar wrapper
Trademark rights are territorial in nature
Most of the world uses a “first to file” system (Japan, China, France, Germany, Spain, and the United Kingdom.)
Some countries use a “first to use” system(United States, Canada, Australia)
In the United States:
To obtain rights, must use the mark as a source identifier in commerce on goods or in connection with services
Trademark registration is not required but is helpful
Trademark rights can last indefinitely if you continue to use the mark
Function of the trademark – identifier of the source of product/service
So, in the US, you don’t need to register your trademark for it to be valid. You just need to use it. However, the federal registration will give you solid proof in court that supports your claim. You can get either a state or federal registration.
Benefits of Federal Registration:
Exclusive right to use mark in connection with goods/services listed in registration
Presumption of mark’s validity
Presumption of nationwide ownership
Public notice of your claim of ownership
Registration term is 10 years (renewable), but rights can last indefinitely if continuously used.
The biggest reason for Trademark laws is to prevent consumer confusion. Trademark law covers anything that is “confusingly similar”—if something sounds too similar, looks too similar, or is spelled similarly, it would likely be considered in violation of the trademark.
Trademarks are suitcases full of info about different aspects of a brand: the quality, price point, location, etc. Trademark rights are also territorial,
US Patent and Trademark Office
To file in EU, go to one central location: the Community Trademark System, managed by OHIM
Copyright
Copyright law protects “original works of authorship” fixed in a tangible medium
For example:
Literary works, including computer software
Musical works, including accompanying lyrics
Dramatic works, including accompanying music
Pantomimes and choreographic works
Pictorial, graphical, and sculptural works
Motion pictures and other audiovisual works
Sound recordings
Architectural works (since 1990)
Copyright protects the expression of an idea, not the idea itself.
Copyright does NOT protect:
Functionality (clothing design, useful articles)
Short phrases or titles
Against independent creation
Copyright exists at the time of creation.
Duration:
Generally: 70 years after the author’s death
For anonymous works or a work made for hire: 95 years from publication, or 120 years from creation, whichever expires first.
As the owner, you get a bundle of rights.
Author has the right (or may license others) to:
Copy
Distribute
Display
Perform
Make derivative works
Copyright law protects against copying, distributing, displaying, performing, or creating derivative works of or based on an author’s first impression.
You CAN register your copyright, but you don’t have to have a registration certificate in order to hold a copyright. Registration for copyright is $35 per work, and you can do that at copyright.gov.
Specific IP Considerations for Indie Authors
Trademark: key considerations
Consider branding your publishing house name.
e.g. HarperCollins, Oxford University Press, etc.
Book titles may be protected by trademark law
Title of a single creative work cannot be registered.
Title of a series of books or other creative works can be registered
Must show that title is used on at least two different works
For a portion of a title, must show that the public perceives that portion as a mark for the series, i.e. The Magic Schoolbus inside the Earth.
Copyright: Key Considerations
Protecting your work
Protecting yourself or avoiding IP claims
Protecting Your Work: Formalities
Copyright notice
Advisable but not required
Format
© (Year of First Publication) (Name of Copyright Owner)
© 2015 Baker Botts LLP [for example]
Copyright registration
Required to sue for infringement
Other Benefits
Required to sue for infringement
Other benefits:
Presumption of copyright ownership
Presumption of copyright validity
can recover statutory damages (3x!)
can recover attorney’s fees
Protecting Your Work: Restricting Access
Digital Rights Management
Access control technologies can help limit the ability to print, copy, or share content
Example: Apple’s FairPlay
Reader Licenses
An opportunity to educate readers about proper use of your content
Creative Commons copyright licenses may be helpful
Protecting Yourself: Avoiding IP Claims
Utilizing third party artwork
Best practice – engage third party + assignment
Purchase stock artwork, but pay attention to license terms
Obtain artwork from the public domain
What is the public domain?
Generally, the public domain includes works that have been dedicated to the public or that have an expired copyright (generally works published prior to 1923)
Even if a work is in the public domain in the US, it may still be protected by copyright in another country.
Tables, maps, charts?
Facts – not protectable, but presentation may be protectable.
Utilizing excerpts from other works
e.g. quotes, song lyrics, etc.
Best practice is to obtain permission to include excerpts.
Fair use
Allows for unlicensed use of copyright-protected works
Fair Use Factors
Purpose and character of the use – Is it transformative?
Nature of the copyrighted work
Amount and substantiality of the portion used in relation to the copyrighted work
Amount and substantiality of the portion used in relation to the copyrighted work as a whole
Effect of the use on the potential market for or value of the copyrighted work (included market for derivative works)
Fair use situations: criticism, education, using only a small small portion of a copyrighted work in context of your own work.
Protecting Yourself: Licensing/Contract Issues
Licenses between Author and Publisher
Explains who publisher will use author’s work
Authors can negotiate for what rights
film/television rights, electronic rights, etc.
Often asks the author to guarantee to the publisher that the author’s work does not infringe on third-party rights
Authors may be liable for copyright infringement
Distributor Licenses
Consider the terms of the license carefully
Other Legal Considerations: Defamation/Privacy
Defamation
False statements of fact about a living individual that subject the individual to ridicule
May also apply to deceased individuals or corporations
More freedom if individuals are considered public figures
Authors and publishers need to be able to show that statements are true or that the author reasonably believed the statements to be true.
Privacy
Individual privacy rights
Be careful when publishing sensitive or embarrassing personal information about an individual
Privacy rules are more strict outside the United States
Other Legal Considerations: Publicity
Cannot exploit the value of a person’s name or likeness
Be careful when publishing information about celebrities, famous athletes, etc.
Cannot use any person’s name or likeness in advertising without that person’s permission.
Questions & Answers
Say I use a quote in my book from a movie—the character is quoting a movie. Do I need to be worried about copyright violation?
This DOES NOT violate copyright. Words, names, and short phrases are not covered under copyright law. I.e. there’s no copyright for the words “I love you”.
What is your normal response to someone who says “I have a great idea but I’m afraid people will steal it“?
Get them to sign an NDA as a first step! That said, unless you actually write it/build it, you don’t have the copyright to it.
Bios of Presenters
Nicole Sallie Franklin
Nicole Sallie Franklin graduated from Texas Wesleyan Law School with a Certificate in Intellectual Property. Nicole has worked as an Intellectual Property Specialist at Facebook, Inc. in Austin and serves as Website Officer of the IP Section of the State Bar of Texas. She has also served as an IP mentor for Rampcorp and Avinde, both Austin-based start-up accelerators for women entrepreneurs.
Nicole co-authored “Protecting Your Ideas: An Overview of Intellectual Property Law,” an educational article for the State Bar of Texas, in collaboration with the Texas Young Lawyers Association. In 2013, Nicole was a featured presenter on copyright and trademark law for the Independent Fashion Bloggers Conference in New York and participated as a trademark mentor at the 2015 SXSW Interactive Festival. For over 5 years, Nicole has owned and authored Thread Conscious, a fashion and lifestyle blog.
Elizabeth K. Stanley
Elizabeth K. Stanley practices in all areas of intellectual property law, including the protection, enforcement and licensing of trademarks and copyrights and internet domain name disputes. Ms. Stanley also has experience representing clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, and in litigation proceedings in state and federal court. She is a Senior Associate Attorney at Baker Botts L.L.P.
Additional Resources
Copyright circulars
Patent, Copyright & Trademark: An Intellectual Property Desk Reference
The Copyright Handbook: What Every Writer Needs to Know
Copyright Law in a Nutshell
Understanding Copyright Law
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