[originally published September 10, 2015 at www.law-dlc.com]
The term “intellectual property” is commonly used to describe creative works such as inventions, music, movies, art, technical know-how and other intangible products. Unfortunately, the various types of intellectual property can often be confusing or difficult to categorize. For example, it is not uncommon to see a reference to a word or slogan being “copyrighted” when in fact, the correct term of art is “trademark.” Likewise, I am often asked in my practice to help clients “patent” their business or trade name.
There are four major types of intellectual property (IP) rights: patents, trademarks, copyrights and trade secrets. Each category has unique characteristics that distinguish it from the other types of IP rights.
Accordingly, as a short-hand guide, here are some key differences between trademarks and copyrights under United States law.
1. You cannot copyright a word or phrase
United States copyright law precludes copyright protection for names, titles, short phrases or expressions.1 Words and phrases are the domain of trademark law. A trademark is typically “a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”2 The term “service mark” is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.3
Accordingly, repeat after me: you cannot copyright a word or phrase.
2. “You do not have a registered trademark — you cannot sue me”
It is true that you can own rights in both copyrights and trademarks without taking steps to register those marks with the U.S. Copyright Office, the United States Patent and Trademark Office (USPTO), and/or the Secretary of State of a particular state. Copyrights exist the moment a work is “fixed in any tangible medium of expression”4 while trademark rights can exist when a trademark owner uses that mark in commerce.5 While the rights exist upon creation or use, the ability to enforce rights in copyrights differs from trademarks.
Under the Lanham Act, 15 U.S.C. § 1051 et seq., any person that uses in commerce a “word, term, name, symbol, or device, or any combination thereof…” that is likely to cause confusion with another person or entity’s mark, name or brand may be liable in civil court for damages to the owner of that trademark.6 You therefore do not need to register a trademark to be able to sue someone who infringes that trademark.
Contrast this with copyright law, which generally requires that the owner of a copyright register that copyrighted work with the U.S. Copyright Office before it can bring suit against a potential infringer.7 More importantly, the infringing party may also be able to escape liability for statutory damages that accrued prior to the registration of the copyrighted work at issue.8 If you own a copyrighted work that you fear may be subject to infringement, be proactive and contact an attorney to register this work on your behalf with the Copyright Office.
3. “If you don’t use [enforce] your copyright, you lose it.”
U.S. trademark law requires that the trademark owner continuously “use” that trademark in commerce. This applies to both registered marks and unregistered (common law) marks.9 The law further requires that a trademark owner actively “police” the use of the trademark by others. While this does not require a trademark owner to “constantly monitor every nook and cranny of the entire nation”10 to protect against infringement, the law does expect a trademark owner to make reasonable efforts to protect the consuming public from possible confusion between marks. This requires sending of cease-and-desist letters and, if necessary, taking potential infringers to court through litigation. The penalty for failure to police a trademark may be the loss of rights in that mark, thereby potentially making it unenforceable.
Compare this with U.S. copyright law, which does not require a copyright owner to actively “use” a copyright in commerce or to make the copyrighted work publicly available. Likewise, if there is a potential infringement of the copyright, a copyright owner is not required to sue the infringing party to maintain rights in the copyrighted work. Copyright does not expire if infringement continues unfettered. These rights are not absolute, however. If you own a copyright and you are aware of a continuing infringement of that copyright, the statute of limitations can preclude the recovery of any damages after the expiration of three (3) years after a claim for infringement accrues.11 Your rights in the copyright remain until you assign the copyright or it expires, but your ability to recover damages from a particular infringer is always subject to the statute of limitations.
These are a few of the differences between trademarks and copyrights. If you have any further questions about intellectual property rights or the topics addressed herein, consult with qualified legal counsel on the matter.
2 See http://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf.
4 17 U.S.C. § 102.
5 See generally http://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf.
6 15 U.S.C. § 1125(a)(1).
7 17 U.S.C. § 411.
8 17 U.S.C. § 412.
9 See generally http://www.inta.org/TrademarkBasics/FactSheets/Pages/LossofTrademarkRightsFactSheet.aspx.
10 Engineered Mech. Servs., Inc. v. Applied Mech. Tech., Inc., 584 F. Supp. 1149 (M.D. La. 1984).
11 17 U.S.C. § 507(b); see also Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (U.S. 2014).