Artistic merit has nothing to do with whether a work is protectable by copyright; in fact, the most routine business letter and the most inexpertly executed child’s drawing are just as entitled to protection under our copyright statute as bestselling novels, hit songs, and blockbuster movies.

However, copyright does not protect every product of the imagination, no matter how many brain cells were expended in its creation. In fact, any discussion of copyright protection must be premised on an understanding of what copyright does not protect.

Idea Versus Expression

It is such an important principle of copyright law that it bears repeating: copyright protects only particular expressions of ideas, not the ideas them­selves. This means, of course, that if the guy sitting behind you on the bus looks over your shoulder and sees, comprehends, and remembers your sketches for a necklace formed of links cast in the shape of sunflowers, he is legally free to create his own sunflower necklace so long as it isn’t a copy of yours. It may be unethical for him to steal your idea, but it’s neither illegal nor actionable in court. Although this may seem unjust, if you think about it, it’s logical. The United States Constitution empowered Congress to pass a copyright statute granting the creators among us property rights in the products of their imaginations so that American society could gain the benefit of their creations. Because ideas are the building blocks for creations of any sort, and because one idea may lead to thousands of expressions of that idea, grant­ing control over an idea to any one person would have the effect of severely limiting creative expression; no one else would be able to use that idea as the basis for a new creation.

Therefore, copyright protects only your particular expression of an idea, not the idea itself. Similarly, copyright protection is denied to procedures, processes, systems, methods of operation, concepts, principles, or discoveries because these products of the imagination are really all particular varieties of ideas.

This means that your idea of printing grocery coupons right on the brown paper bags used in your supermarket can be copied by anyone, even a com­peting grocery store, although the particular expression of your idea—your copy and artwork for the bags and the advertisements publicizing the promo­tion—may not.

And your system of giving your customers double the face-value discount of any coupon if they use it to buy two product items at the same time is not protectable by your copyright in your coupon-promotion materials and can be employed at any time by anyone, without your permission.

Further, if you print recipes on your grocery bags in addition to discount coupons, you cannot, of course, stop anyone from using the method outlined in the Low-Fat Meatloaf recipe to create a low-fat meatloaf. Nor can you stop anyone, even a competitor, from employing your concept of using a low-fat meatloaf recipe to sell the food products used in the recipe or from employing the marketing principle behind your promotion—that food shoppers are likely to purchase particular brands of food products that are specified by name in an interesting recipe. And even if you were the first person in the universe to come up with a technique for diminishing the fat content of the finished dish, once you disclose your discovery to the public, you can’t stop anyone from recounting it to anyone else. You can’t even stop anyone from using the information outlined in your meatloaf recipe to create his or her own recipe for low-fat meatloaf.

Unprotectable Elements

There are a few categories of products of the imagination that are too close to being mere unembellished ideas for copyright protection to apply. In other words, these categories of “creations” lack sufficient expression to be granted copyright protection. There are several commonly occurring, unprotectable elements of various sorts of works from which the copyright statute or courts have withheld protection, including the following:

• Literary plots, situations, locales, or settings;
• Scènes à faire, which are stock literary themes that dictate the incidents used by an author to express them;
• Literary characters, to the extent that they are “types” rather than original expressions of an author;1
• Titles of books, stories, poems, songs, movies, etc., which have been uniformly held by courts not to be protected by copyright;
• Short phrases and slogans, to the extent that they lack ex­pressive content;
• The rhythm or structure of musical works;
• Themes expressed by song lyrics;
• Short musical phrases;
• Arrangements of musical compositions, unless an arrange­ment of a musical composition really amounts to an alter­nate version of the composition;
• Social dance steps and simple routines, which are not copy­rightable as choreographic works because they are the com­mon property of the culture that enjoys them;
• Uses of color, perspective, geometric shapes, and standard works of the visual arts;
• Jewelry designs and other creations that merely mimic the structures of nature (such as a jeweled pin that accurately replicates the form of a honeybee), since the natural forms on which such “creations” are based are in the public do­main, the property of all humankind;
• Names of products, services, or businesses;
• Pseudonyms or professional or stage names;
• Mere variations on familiar symbols, emblems, or designs, such as typefaces (this includes typefonts, letterforms, and the like), numerals or punctuation marks, and religious emblems or national symbols

Contributed to Branding Strategy Insider by: Lee Wilson, Attorney-At-Law. Excerpted from his new book The Copyright Guide, How You Can Protect And Profit From Copyrights, Allworth Press.

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Two of the things that copy­right is not are trademarks and patents. These three forms of intellectual property are more like cousins than triplets, but lots of people, even lawyers and judges, confuse them.

Copyrights Compared To Trademarks And Patents

Although all three protect products of the human imagination, copyrights, trademarks, and patents are distinct but complementary sorts of intellectual property. Each is governed by a different federal law. The US patent statute originates in the same provision of the Constitution that gives rise to our copyright statute. Our federal trademark statute originates in the “commerce clause” of the Constitution, which gives Congress the power to regulate in­terstate commerce. Only our federal government regulates copyrights; copy­right registrations are granted by the Copyright Office, which is a department of the Library of Congress. Similarly, only the federal government can grant a patent. However, although the federal government grants trademark regis­trations, so do all the fifty states.

Copyrights

Since January 1, 1978, in the United States, a copyright is created whenever a creator “fixes” in tangible form a work for which copyright protection is available. Under most circumstance, a copyright will endure until seventy years after the death of the creator of the copyrighted work; after copyright protection expires a work is said to have fallen into the “public domain” and anyone is free to use it. Registration of a copyright enhances the rights that a creator automatically gains by the act of creation, but it is not necessary for copyright protection. The chief limitation on the rights of copyright owners is that copyright protects only particular expressions of ideas rather than the ideas themselves. This means that several people can create copyrightable works based on the same idea; in fact, there is no infringement no matter how similar one work is to another unless one creator copied another’s work.

Trademarks

Trademarks are words or symbols that identify products or services to consum­ers. Unlike a copyright, in which the creator has protectable rights from the in­ception of the copyrighted work, rights in a trademark accrue only by use of the trademark in commerce and then belong to the company that applies the mark to its products rather than to the person who came up with the name or designed the logo that becomes the trademark. Roughly speaking, a company gains rights in a trademark in direct proportion to the duration and the geographic scope of its use of the mark; ordinarily, the company that first uses a mark gains rights in that mark superior to any other company that later uses it for the same product or services. Unauthorized use of a trademark is “trademark infringement.”

As is the case with copyrights, registration enhances rights in trademarks but does not create them. It is generally easy to register a mark within a state, but federal trademark registration, which confers much greater benefits, is more difficult to obtain. Trademark rights last indefinitely; as long as a mark is used in commerce, its owners have protectable rights in it. (For more in­formation about trademarks, see The Trademark Guide, by Lee Wilson, pub­lished by Allworth Press.)

Patents

A patent is a monopoly granted by the US Patent and Trademark Office (USPTO) for a limited time to the creator of a new invention. According to the Patent Office,
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new utility or plant patent is twenty years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier re­lated application was filed, subject to the payment of maintenance fees. Design patents are granted for ornamental designs used for nonfunctional aspects of manufactured items; design patents last fourteen to fifteen years from the date the design patent is granted, depending on when it was filed. US patent grants are effective only within the United States, US territories, and US possessions. Under certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, of­fering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell, or import, but the right to exclude others from making, using, offering for sale, selling, or importing the invention. Once a patent is issued, the patentee must enforce the patent without aid of the USPTO.

There are three types of patents:

1. Utility Patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

2. Design Patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

3. Plant Patents may be granted to anyone who invents or dis­covers and asexually reproduces any distinct and new variety of plant.

An inventor must meet very strict standards before the Patent Office will grant a patent for his or her invention; then, the inventor can stop everyone else from manufacturing the invention without permission or even importing an infringing invention into the United States, even if the infringer of the patent independently came up with the same invention.

No product name is protectable by patent law; a product name is a trade­mark and trademark protection is earned in the marketplace rather than being awarded like a patent. And no song, story, painting, or play can be pat­ented; copyright gives writers and artists the right to keep others from copy­ing their works, but not a complete monopoly on the creation or importation of similar works.

(For a more detailed discussion of patent law, see The Patent Guide, by Carl Battle, from Allworth Press, and consult the US Patent and Trademark Office website.

Requirements For Copyright Protection

Under the US copyright statute a work must satisfy three conditions to qual­ify for copyright protection. All three of these requirements must be met in order for the work to come under the copyright umbrella.

The three statutory prerequisites for protection are (1) the work must be “original” in the sense that it cannot have been copied from another work; (2) the work must embody some “expression” of the author, rather than consist­ing only of an idea or ideas; and (3) the work must be “fixed” in some tangible medium of expression.

Originality

The originality condition for protection leads to the apparent anomaly that two works identical to each other may be equally eligible for copyright pro­tection. So long as neither of the two works was copied from the other, each is considered “original.” In the sense that it is used in the copyright statute, “originality” means simply that a work was not copied from another work rather than that the work is unique or unusual. Judge Learned Hand, a jurist who decided many copyright cases, summarized the originality requirement with a famous hypothetical example: “If by some magic a man who had never known it were to compose a new Keats’s Ode on a Grecian Urn, he would be an ‘author,’ and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats’s.” For copyright purposes, the similarities between two works are immaterial so long as they do not result from copying.

This is reflected in Copyright Office practices and publications: “The Copyright Office does not compare deposit copies or check registration re­cords to determine whether works submitted for registration are similar to any material for which a copyright has already been registered. The records of the Copyright Office may contain any number of registrations for works describing or illustrating the same idea, method, or system.”

Anyone who feels her copyright has been infringed by a similar work cre­ated by someone else must look to the courts for a remedy, in the form of a suit for copyright infringement, rather than to the Copyright Office, which makes no judgment as to originality of any work for which registration is sought.

Expression

The current copyright statute restates the accepted rule, often enunciated in copyright decisions, that copyright subsists only in the expression embodied in a work and not in the underlying ideas upon which the work is based. The statute says: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of opera­tion, concept, principle, or discovery, regardless of the form in which it is de­scribed, explained, illustrated, or embodied in such work.” This rule plays an important role in copyright infringement cases, because a judge often must determine whether the defendant has taken protected expression from the plaintiff or merely “borrowed” an unprotectable idea (or “procedure, process, system,” etc.).

Fixation

The US copyright statute protects works eligible for protection only when they are “fixed in any tangible medium of expression . . . from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” The statute deems a work fixed in a tangible medium of expression “when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”

This third requirement for copyright protection sometimes surprises peo­ple, who may not realize, for instance, that a new song performed at an open mike “writers’ night” or a dance routine presented in a talent show, although it is both original and contains a high proportion of protectable expression, is not protected by copyright until it is “fixed” within the definition of the copyright statute and that it can be legally (although not ethically) copied, word for word or move for move, by anyone who witnesses its performance. A song can be “fixed” by recording any intelligible version of its music and lyrics in any form or by reducing its melody to written musical notation that also includes its lyrics. Any piece of choreography can be “fixed” by videotap­ing it in sufficient detail to record the movements of the dancers or by use of a written system of choreographic notation.

Contributed to Branding Strategy Insider by: Lee Wilson, Attorney-At-Law. Excerpted from his new book The Copyright Guide, How You Can Protect And Profit From Copyrights, Allworth Press.

The Blake Project Can Help: The Brand Licensing Audit

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The single most important element of brand building is most often (erroneously) assumed to be in order: Whether you actually own your brand?

Without legal ownership, brand equity is zero and will remain zero forever.

At the core of every brand is a legal right called a trademark. Trademark law is a complex body of laws to sort out who owns what with respect to brands. It is possible to boil down trademark law into two simple rules. If you follow those you will have the foundation you need for a viable trademark:

1. If the brand is not capable of being owned, then it can never become valuable.
2. If the brand is capable of being owned, but you aren’t the owner, then you are brand building for someone else’s benefit.

On the surface, these are pretty easy concepts, but experience shows that most companies fail at one or both.

Rule 1: Own Your Brand

Brand ownership is very counter-intuitive. Strong brands are completely abstract. They tell you nothing about the product/service to which they pertain. The more the brand tends to describe the product or even a feature of the product, the weaker they are. If they are weak they can be copied, until they become so diluted by other brand imitators, that they are eventually worthless. Many branding experts believe one can block the competition by “owning a descriptive brand”. Nothing in branding could be more misguided. Think about it. Can one own the word Soap for soap products and thereby block others from using the name? No, but that hasn’t stopped uninformed companies from trying. In the sandcastle comparison, it amounts to sand on sand.

The brand spectrum (above) shows the world’s most valuable and ownable brands on the left/strong side, and weaker or non-brands on the right side. It is no accident that the most valuable brands are stronger. Weak brands, or the worst of all, descriptive and generic terms, are words not capable of being brands, so they can be legally used by anyone. Notice that The Weather Channel® is a weaker brand. Although not generic, the brand is difficult (and expensive) to defend against competitors. Weather Nation is vying for the same space on cable and satellite networks, but The Weather Channel brand is unable to prevent such similar usage. This is the ultimate problem. A weak brand becomes diluted by the crowding of similar brands, until the public can’t remember one from the next. Strong brands can be defended against dilution. This weak brand strategy is a classic mistake which violates Rule 1. I am sure that it seemed like a really great idea at the time to use a descriptive name and own the category, but it is and always will be a legally impossible strategy. Google, on the other hand is an entirely made up word, so its strength is supreme. What would have happened if Google had made the wrong choice and called their company SEARCHCO?

Violating the second rule of trademark law is just a bad as violating the first.

Rule 2: Verify That You Actually Own Your Brand

Companies routinely assume they own their brand because they have registered it with the Secretary of State and/or they own their web domain. Again, nothing could be more legally false. Even owning a Federal trademark registration is not absolute proof of clear title.

For example, even if you are the owner of the domain, the true trademark owner, with superior title can take your domain from you.

In an informal survey of privately held businesses, I found that about 65% of them did not have clear legal title to their company or brand names. Many of them had no hope of ever getting clear title. Virtually none of them knew of their predicament.

Why does it matter whether you own your brand name or not?

First, if you aren’t the true brand owner, i.e., you don’t have clear legal title to your trademark, your trademark (brand) and domain can be taken away at any time by a claimant with better title. If you have spent years building brand equity, in a brand you don’t own, imagine how devastating that could be. If your company is one of the 65%, or you don’t know whether you are in that group, you will find out when you when you try to sell your business or bring in investment money. I am regularly authorized to conduct due diligence on companies for sale. More than half the time, my buyers are able to buy such companies at steep discounts, because the brand ownership is not solid. The seller receives much less money for the business than they would have made with clear brand ownership.

The bottom line is that if you want to build a valuable company or product/service brand, it has to be your first priority to make sure you can and do own the brand. The traditional model of engaging trademark counsel at the end of your brand creation process is way too late. A great trademark/brand lawyer will know both branding and trademark law and can provide immeasurable value in avoiding an ownership disaster. The time for intervention by a trademark/branding lawyer, is before you even start the brand ideation process. At the very least, bring the brand spectrum chart to your ideation session and plug your brand ideas into the chart. If they don’t fall on the ownable/left side of the scale, toss and regenerate.

Contributed to Branding Strategy Insider by: Michael Lasky, an intellectual property attorney at Altera Law Group and Schwegman Lundberg law firm. He is the author of the new book The Good Brand – How companies create valuable brands.

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Trademarks, like brands, build in strength over time. The test for trademark infringement is “confusing similarity.” Put another way, if the average consumer believes both products to have come from the same source, there is infringement.

Obviously, the more a consumer is familiar with a particular brand, the more defendable its mark. That’s why it behooves a company to do the following:

• Choose a distinctive mark, including a “coined” name. As I mentioned in the chapter on brand identity, brand names range from generic and descriptive to suggestive and arbitrary or fanciful (“coined”). Obviously it takes longer to build meaning for coined names, but they are also more distinctive and easiest to protect legally. Kodak, Xerox, and Exxon fall in that category. Suggestive marks are the next most protectable. Examples include Coppertone, Duracell, and Lestoil. Even common words can be used as trademarks as long as they are not used descriptively. These common words/phrases are also suggestive marks: Amazon (big), Twitter (brief and chatty), and Apple (different, offbeat). Descriptive marks are not protectable unless the brand creates a secondary meaning for the word, such as Weight Watchers, Rollerblade, or Wite-out. Generic marks, such as Shredded Wheat and Super Glue, are not protectable at all.
• Avoid geographic names as a part of your mark—they can be the basis of trademark refusal.
• Register the mark.
• Be consistent in the use of the mark.
• Create strong trade dress (as discussed later in this chapter).
• Widely advertise and distribute its trademarked products.
• Do all of this over a long period of time.

Because the strength of a mark is dependent upon consumers’ familiarity with it, it is much easier for a competitor to neutralize your mark soon after it has been introduced than after it has been in use for a long period of time. Courts use the following tests to determine infringement:

• Strength of the trademark claiming infringement.
• Similarity of the two marks.
• Evidence of consumer confusion.
• Care a consumer takes in comparing products.
• Intent of the organization in using the potentially infringing mark. (Some drugstores and grocery stores use generic brands that emulate a leading brand’s package shape, colors, typestyle, formulation, etc., and display the product side-by-side with the leading brand to imply that there are no differences between the two, encouraging consumers to purchase the lower-priced generic item. In this situation, there is clearly intent to emulate the leading brand and reduce the perceived differentiation and value advantage of that brand, but it is not clear that there is intent to deliberately cause confusion as to source.)
• Relatedness of the two businesses.
• Overlap between communication and distribution channels.

By using the mark in association with your products and services over time, you gain trademark protection. Registering your mark (marks can be registered at the state and federal levels) provides additional protection. Although common law and federal trademark statute protect an unregistered mark, registering your mark transfers the burden of proof to the second comer in challenging a mark’s registration. With federal registration, you can sue infringers in federal court. Also, after five years of registration, the mark becomes incontestable. Federal trademark registrations last ten years and can be renewed every ten years ad infinitum.

You can acquire trademark rights in one of two ways. To acquire trademark rights based on use in commerce, you must be the first person or organization that uses the mark in conjunction with the products or services for which trademark protection is sought. To acquire the mark base on intent to use, you must apply to register the mark through the United States Patent and Trademark Office.

Before choosing a trademark, first conduct a simple search to weed out marks that are not available. After that, for the remaining candidates, conduct a full search through a law firm specializing in trademark law or through an experienced trademark search firm.

Strong brands run the danger of becoming category descriptors. Always use trademarks as adjectives, not verbs or nouns. If your brand is in danger of becoming a category descriptor, consider talking about your brand in the following way that differentiates the brand from the category. For example: “Jell-O® gelatin,” “Kleenex® facial tissue,” and “Xerox® photocopier.”

Note: I am not a lawyer and this blog post is not legal advice, but rather is meant merely to help you consider the legal issues in brand management. When actually dealing with any specific issues in this area, please consult with lawyers who have an expertise in intellectual property law. You can learn more about trademark protection in Brand Aid, second edition.

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Obviously, the more a consumer is familiar with a particular brand, the more defendable its mark. That’s why it behooves a company to do the following:

• Choose a distinctive mark, including a “coined” name. Brand names range from generic and descriptive to suggestive and arbitrary or fanciful (“coined”). Obviously it takes longer to build meaning for coined names, but they are also more distinctive and easiest to protect legally. Kodak, Xerox, and Exxon fall in that category. Suggestive marks are the next most protectable. Examples include Coppertone, Duracell, and Lestoil. Even common words can be used as trademarks as long as they are not used descriptively. These common words/phrases are also suggestive marks: Amazon (big), Twitter (brief and chatty), and Apple (different, offbeat). Descriptive marks are not protectable unless the brand creates a secondary meaning for the word, such as Weight Watchers, Rollerblade, or Wite-out. Generic marks, such as Shredded Wheat and Super Glue, are not protectable at all.
• Avoid geographic names as a part of your mark—they can be the basis of trademark refusal.
• Register the mark.
• Be consistent in the use of the mark.
• Create strong trade dress (as discussed later in this chapter).
• Widely advertise and distribute its trademarked products.
• Do all of this over a long period of time.

Because the strength of a mark is dependent upon consumers’ familiarity with it, it is much easier for a competitor to neutralize your mark soon after it has been introduced than after it has been in use for a long period of time.

Courts use the following tests to determine infringement:

• Strength of the trademark claiming infringement.
• Similarity of the two marks.
• Evidence of consumer confusion.
• Care a consumer takes in comparing products.
• Intent of the organization in using the potentially infringing mark.
• (Some drugstores and grocery stores use generic brands that emulate a leading brand’s package shape, colors, typestyle, formulation, etc., and display the product side-by-side with the leading brand to imply that there are no differences between the two, encouraging consumers to purchase the lower-priced generic item. In this situation, there is clearly intent to emulate the leading brand and reduce the perceived differentiation and value advantage of that brand, but it is not clear that there is intent to deliberately cause confusion as to source.)
• Relatedness of the two businesses.
• Overlap between communication and distribution channels.

By using the mark in association with your products and services over time, you gain trademark protection. Registering your mark (marks can be registered at the state and federal levels) provides additional protection. Although common law and federal trademark statute protect an unregistered mark, registering your mark transfers the burden of proof to the second comer in challenging a mark’s registration. With federal registration, you can sue infringers in federal court. Also, after five years of registration, the mark becomes incontestable. Federal trademark registrations last ten years and can be renewed every ten years ad infinitum.

You can acquire trademark rights in one of two ways. To acquire trademark rights based on use in commerce, you must be the first person or organization that uses the mark in conjunction with the products or services for which trademark protection is sought. To acquire the mark base on intent to use, you must apply to register the mark through the United States Patent and Trademark Office.

Before choosing a trademark, first conduct a simple search to eliminate marks that are not available. This search can be done online for free. After that, for the remaining candidates, conduct a full search through a law firm specializing in trademark law or through an experienced trademark search firm.

Strong brands run the danger of becoming category descriptors. Always use trademarks as adjectives, not verbs or nouns. If your brand is in danger of becoming a category descriptor, consider talking about your brand in the following way that differentiates the brand from the category. For example: “Jell-O® gelatin,” “Kleenex® facial tissue,” and “Xerox® photocopier.”

Excerpted from Brand Aid, second edition, A Quick Reference Guide to Solving Your Branding Problems and Strengthening Your Market Position

The Blake Project Can Help: The Brand Licensing Audit

Branding Strategy Insider is a service of The Blake Project: A strategic brand consultancy specializing in Brand Research, Brand Strategy, Brand Licensing and Brand Education

FREE Publications And Resources For Marketers