I'm back. I spent a few months trying to merge my law practice with a regional firm, that turned out not to be a good fit. In the process some of the people at the firm asked me to edit or take down some of my web content, both blogs and photos. I complied in the interest of accomodation, but the efforts were fruitless. Oh well, live and learn. I can go back to expressing myself freely. Yay! :-)
More to come...
Wednesday, May 27, 2009
Monday, July 7, 2008
Photography and Image Rights
So you went on vacation and took some great photographs with your new digital camera. Some are of famous buildings, some have people in them, some don’t. You post them on your website and get comments from your friends about how great the photos are and that you should sell them to a magazine.
Or, you get back from a vacation in a beautiful place and your friends start calling you because they saw a picture of you in that beautiful vacation spot on the Travel Channel or in a magazine. You don’t remember anybody asking for your permission to be in any photo. Should someone have asked for your permission? Should you get compensated? Is that legal? What can you do?
Photographs that you take.
From a legal standpoint a photograph is a picture captured in a camera whether it is captured the old fashioned way using a chemical process, or captured in your new digital camera using digital processing.
The moment you snap the shutter of your camera and that image is exposed to your film or recorded by your memory card, by law you are granted a copyright in that photograph provided that you did not take the photograph as a “work made for hire”.
A “work made for hire” is a work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned by a third party, if you and the third party expressly agree in an instrument signed by you and the third party that the work shall be considered a “work made for hire”.
A copyright in a photograph is a bundle of rights to control the copying, reproduction, distribution, and derivative use of the photograph, as well as rights to publicly display the photograph, and sue should another infringe your copyright in the photograph. No formal registration of this copyright is required to exercise these rights, other than the right to sue for infringement. In general, an individual and his or her estate owns this copyright for the lifetime of the creator, plus 70 years from his or her death.
Although no formal registration with the Copyright Office of the Library of Congress is required, as a practical matter any photograph or collection of photographs that you publish or intend to publish should be registered. The fees are inexpensive and the forms are relatively easy to complete.
The protection of copyright is fundamental under U.S. law.
The concept of copyright in the United States goes back to its formation. Article I, Section 8 of the U.S. Constitution provides for Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”; this is the foundation of copyright and patent law in the United States. The idea is to encourage creativity by allowing people a degree of protection in their creative works, while sharing their creative works with others, who may then be inspired to create new works building on prior works. Of course photography, which did not exist at the time of the drafting of the U.S. Constitution, was not originally a subject of copyright, although photography did become a subject of copyright when photography began to become popular in the late 19th Century.
You have to actually create the photograph to obtain the copyright. You cannot obtain a copyright in an idea or concept about a photograph, only in the tangible expression of that idea, or the photograph itself. Your friend who told you that the photograph you took would be “cool shot” beforehand has no claim to your copyright in the photograph, neither does the art director or the set designer on a commercial photo shoot absent a written “work made for hire” agreement.
Allowing others to use your photograph.
If you would like to allow another person or entity to use your photograph, they must obtain a license from you in order to legally use the photograph. A license is simply a permission to use the photograph, with or without payment, not a transfer of copyright ownership. A license can be exclusive or non-exclusive.
If you would like to sell a photograph outright, it is better for you to take the photograph for yourself and transfer the copyright, rather than take the photograph as a “work made for hire”, as you will initially own the copyright and thus be able to negotiate price after the photo is taken, and under current law you can get your copyright back after 35 years under a fairly new “recapture” provision added to copyright law.
Fair Use.
Copyright law allows a third party to copy, use and otherwise display your work without your permission in certain cases. This is the doctrine of “fair use”. This copying or use must be for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. What constitutes fair use and where the line constituting infringement lies is always subject to interpretation. Under copyright law, the factors to consider in determining fair use include the purpose and character of the use; the nature of your copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work.
Fair use is not copying an image off the Internet and using it on your website as a background, whether or not you give credit to the creator or source. Fair use is not copying images and printing them or emailing them to your friends in a slideshow. Fair use is not copying an image and putting it on a holiday card that you send to your friends. These are all examples of copyright infringement. We have all seen the FBI warnings at the beginning of DVDs that warn of civil and criminal penalties for copyright infringement. Take these warnings seriously!
The bottom line is if you did not take the photograph it is not yours and you cannot use it without obtaining permission to do so, unless the use is truly a “fair use” of the photograph as explained above.
Rights of Publicity, Model and Property Releases.
You’ve probably heard of photographers having their models sign “model releases”. Why, if the photographer owns the copyright, would he or she need a “release” from the model to use the photo? In addition to the rights an individual may have in protecting their reputation and their right of privacy, a number of states have law on what is commonly referred to as a Right of Publicity, and about 11 states, including Nevada, require some type of written consent from a person to use their image or likeness in a commercial manner. Rights of Publicity are an outgrowth of privacy rights when an image is used in a commercial forum. The concept is that a person’s image or likeness has some value and that a third party should not profit from that value without permission from and/or compensation paid to that person whose image or likeness is captured in a photograph.
In Nevada, for the purposes of photography there is a right of publicity in the image or likeness of every person. The right endures for a term consisting of the life of the person and 50 years after his or her death, regardless of whether the person commercially exploits the right during his lifetime. Any commercial use by another of the image or likeness of a person requires the written consent of that person or his or her estate. Some exceptions to this rule include celebrity impersonations and uses by the State to promote travel and tourism. Nevada law provides for legal and equitable remedies should someone use your image or likeness in a commercial manner without your permission (See Nevada Revised Statutes Sections 597.770 – 597.810.)
Property Releases.
The issues that arise with real and personal property are a little bit different. Although one can claim copyright in an architectural work, most issues that arise regarding getting permission to photograph one’s property involve association, conversion or trademark claims. The only area of case law you will find that gives some clarity to these issues have to do with trademark. Cases of association and conversion have not settled the issues that often arise. To be safe, get a release. And remember, property can be real property such as a house, or personal property such as a car, a pet or a work of art.
Association is a theory in which a person’s identity may be associated with the property. Issues that may arise related to association are likely to be those of privacy and defamation. Imagine if your house is photographed and shown in an article about escaped felons. How would you feel about that? How would you feel when you neighbor sees the article? Get a release.
Conversion is a theory in which property is used for personal gain without the owner’s permission. If someone rents out your property when you are out of town that person has converted your property to their use. The question is if a person takes a photograph of your property and rents out that photograph, is that conversion? This is unclear. Get a release.
Sometimes there are logos, signs or buildings that appear in your photograph that may be protected under trademark law (even in the background). The property can include or even be a trademark. Some examples of properties that have spawned lawsuits or that industry professionals warn against using in a commercial manner without obtaining a property release are the Hollywood Sign, the Rock & Roll hall of Fame, the Rolls Royce hood ornament, and the New York Stock Exchange. Also be careful when your photograph includes static or active billboards or marquees, there is likely copyrighted material on the billboard or marquee. Get a release.
To sum this all up, if you take a photograph of someone or something and plan to use the photograph in a commercial manner, you had better get permission beforehand. Take the photo yourself, own the copyright, negotiate its sale later, and by all means get model and property releases.
Or, you get back from a vacation in a beautiful place and your friends start calling you because they saw a picture of you in that beautiful vacation spot on the Travel Channel or in a magazine. You don’t remember anybody asking for your permission to be in any photo. Should someone have asked for your permission? Should you get compensated? Is that legal? What can you do?
Photographs that you take.
From a legal standpoint a photograph is a picture captured in a camera whether it is captured the old fashioned way using a chemical process, or captured in your new digital camera using digital processing.
The moment you snap the shutter of your camera and that image is exposed to your film or recorded by your memory card, by law you are granted a copyright in that photograph provided that you did not take the photograph as a “work made for hire”.
A “work made for hire” is a work prepared by an employee within the scope of his or her employment; or a work specially ordered or commissioned by a third party, if you and the third party expressly agree in an instrument signed by you and the third party that the work shall be considered a “work made for hire”.
A copyright in a photograph is a bundle of rights to control the copying, reproduction, distribution, and derivative use of the photograph, as well as rights to publicly display the photograph, and sue should another infringe your copyright in the photograph. No formal registration of this copyright is required to exercise these rights, other than the right to sue for infringement. In general, an individual and his or her estate owns this copyright for the lifetime of the creator, plus 70 years from his or her death.
Although no formal registration with the Copyright Office of the Library of Congress is required, as a practical matter any photograph or collection of photographs that you publish or intend to publish should be registered. The fees are inexpensive and the forms are relatively easy to complete.
The protection of copyright is fundamental under U.S. law.
The concept of copyright in the United States goes back to its formation. Article I, Section 8 of the U.S. Constitution provides for Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”; this is the foundation of copyright and patent law in the United States. The idea is to encourage creativity by allowing people a degree of protection in their creative works, while sharing their creative works with others, who may then be inspired to create new works building on prior works. Of course photography, which did not exist at the time of the drafting of the U.S. Constitution, was not originally a subject of copyright, although photography did become a subject of copyright when photography began to become popular in the late 19th Century.
You have to actually create the photograph to obtain the copyright. You cannot obtain a copyright in an idea or concept about a photograph, only in the tangible expression of that idea, or the photograph itself. Your friend who told you that the photograph you took would be “cool shot” beforehand has no claim to your copyright in the photograph, neither does the art director or the set designer on a commercial photo shoot absent a written “work made for hire” agreement.
Allowing others to use your photograph.
If you would like to allow another person or entity to use your photograph, they must obtain a license from you in order to legally use the photograph. A license is simply a permission to use the photograph, with or without payment, not a transfer of copyright ownership. A license can be exclusive or non-exclusive.
If you would like to sell a photograph outright, it is better for you to take the photograph for yourself and transfer the copyright, rather than take the photograph as a “work made for hire”, as you will initially own the copyright and thus be able to negotiate price after the photo is taken, and under current law you can get your copyright back after 35 years under a fairly new “recapture” provision added to copyright law.
Fair Use.
Copyright law allows a third party to copy, use and otherwise display your work without your permission in certain cases. This is the doctrine of “fair use”. This copying or use must be for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. What constitutes fair use and where the line constituting infringement lies is always subject to interpretation. Under copyright law, the factors to consider in determining fair use include the purpose and character of the use; the nature of your copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work.
Fair use is not copying an image off the Internet and using it on your website as a background, whether or not you give credit to the creator or source. Fair use is not copying images and printing them or emailing them to your friends in a slideshow. Fair use is not copying an image and putting it on a holiday card that you send to your friends. These are all examples of copyright infringement. We have all seen the FBI warnings at the beginning of DVDs that warn of civil and criminal penalties for copyright infringement. Take these warnings seriously!
The bottom line is if you did not take the photograph it is not yours and you cannot use it without obtaining permission to do so, unless the use is truly a “fair use” of the photograph as explained above.
Rights of Publicity, Model and Property Releases.
You’ve probably heard of photographers having their models sign “model releases”. Why, if the photographer owns the copyright, would he or she need a “release” from the model to use the photo? In addition to the rights an individual may have in protecting their reputation and their right of privacy, a number of states have law on what is commonly referred to as a Right of Publicity, and about 11 states, including Nevada, require some type of written consent from a person to use their image or likeness in a commercial manner. Rights of Publicity are an outgrowth of privacy rights when an image is used in a commercial forum. The concept is that a person’s image or likeness has some value and that a third party should not profit from that value without permission from and/or compensation paid to that person whose image or likeness is captured in a photograph.
In Nevada, for the purposes of photography there is a right of publicity in the image or likeness of every person. The right endures for a term consisting of the life of the person and 50 years after his or her death, regardless of whether the person commercially exploits the right during his lifetime. Any commercial use by another of the image or likeness of a person requires the written consent of that person or his or her estate. Some exceptions to this rule include celebrity impersonations and uses by the State to promote travel and tourism. Nevada law provides for legal and equitable remedies should someone use your image or likeness in a commercial manner without your permission (See Nevada Revised Statutes Sections 597.770 – 597.810.)
Property Releases.
The issues that arise with real and personal property are a little bit different. Although one can claim copyright in an architectural work, most issues that arise regarding getting permission to photograph one’s property involve association, conversion or trademark claims. The only area of case law you will find that gives some clarity to these issues have to do with trademark. Cases of association and conversion have not settled the issues that often arise. To be safe, get a release. And remember, property can be real property such as a house, or personal property such as a car, a pet or a work of art.
Association is a theory in which a person’s identity may be associated with the property. Issues that may arise related to association are likely to be those of privacy and defamation. Imagine if your house is photographed and shown in an article about escaped felons. How would you feel about that? How would you feel when you neighbor sees the article? Get a release.
Conversion is a theory in which property is used for personal gain without the owner’s permission. If someone rents out your property when you are out of town that person has converted your property to their use. The question is if a person takes a photograph of your property and rents out that photograph, is that conversion? This is unclear. Get a release.
Sometimes there are logos, signs or buildings that appear in your photograph that may be protected under trademark law (even in the background). The property can include or even be a trademark. Some examples of properties that have spawned lawsuits or that industry professionals warn against using in a commercial manner without obtaining a property release are the Hollywood Sign, the Rock & Roll hall of Fame, the Rolls Royce hood ornament, and the New York Stock Exchange. Also be careful when your photograph includes static or active billboards or marquees, there is likely copyrighted material on the billboard or marquee. Get a release.
To sum this all up, if you take a photograph of someone or something and plan to use the photograph in a commercial manner, you had better get permission beforehand. Take the photo yourself, own the copyright, negotiate its sale later, and by all means get model and property releases.
The "Scoop" on Copyright Preregistration
What is Copyright Preregistration?
Copyright preregistration is a service intended for works that have had a history of prerelease infringement. Copyright preregistration focuses on the infringement of movies, recorded music, and other copyrighted materials before copyright owners have had the opportunity to fully complete or market their products.
Copyright preregistration is not copyright registration.
For the vast majority of works, preregistration is not useful. Preregistration is not a substitute for registration. If you do preregister your work, you are required to register it when it is published.
The nonrefundable filing fee for preregistration is $100. You may register an unpublished work for $45, without preregistering it.
You may benefit by preregistering your work if:
you think it’s likely someone may infringe your work before it is released; and
you have started your work but have not finished it.
You may also search Preregistration Records approved by the Copyright Office from October 2005 to date. http://preregcatalog.loc.gov
Pursuant to the provisions of the Artists' Rights and Theft Prevention Act of 2005, the Copyright Office is accepting preregistration of unpublished works that are being prepared for commercial distribution for types of works that the Register of Copyrights determined have had a history of pre-release infringement.
Preregistration is not a substitute for registration. Its purpose is to allow an infringement action to be brought before the authorized commercial distribution of a work and full registration thereof, and to make it possible, upon full registration, for the copyright owner to receive statutory damages and attorneys' fees in an infringement action.
In order to preserve the legal benefits of preregistration, a person who has preregistered a work is required to register such work within one month after the copyright owner becomes aware of any infringement and no later than three months after first publication. If full registration is not made within the prescribed time period, a court must dismiss an action for copyright infringement that occurred before or within the first two months after first publication. See U.S.C. 17 408(f), 411 and 412, as amended; also 37 C.F.R. 202.16, as added.
What are the Conditions for Preregistration?
You may submit a work for preregistration only if it meets these three conditions:
the work must be unpublished;
the work must be in the process of being prepared for commercial distribution in either physical or digital format, (e.g., film copies, CDs, or computer programs to be sold online); and
the work must be one of the following types of works:
motion pictures
sound recordings
musical compositions
literary works being prepared for publication in book form
computer programs(including videogames)
advertising or marketing photographs
To preregister a work, you will be required to submit an online application, which includes a certification of a reasonable expectation that the work will be commercially distributed, that the information given in the application is correct, and a nonrefundable $100 filing fee.
Persons wishing to preregister a copyright must apply online.
No paper application form is available.
Only an application and fee are required; a copy of the work itself, or any finished part thereof, should not be submitted. Instead, the applicant must give as full a description of the work as possible in the online application.
A work may be preregistered only if creation of the work and fixation in some tangible medium has already begun. 17 U.S.C. 102(b), states that ideas and concepts are not subject to copyright protection, therefore ideas and concepts cannot be preregistered or registered. The work to be preregistered must be one that falls within the subject matter enumerated in 17 U.S.C. 102(a).
Preregistration is a streamlined process available only online. Preregistration requires sufficient information to reasonably identify the work for which preregistration is sought, but no deposit materials are required, and the online application form will not be examined except to ascertain that all the necessary information has been provided by the applicant.
Preregistration is not a substitute for registration. It is simply a means of preserving the ability to satisfy the requirements of sections 411(a) and 412 of the Copyright Act by advising the Copyright Office prior to the publication of a work that the work is being prepared for commercial distribution, and then following through with a registration shortly after publication or infringement of the work.
The fact that a work has been preregistered does not mean that the Copyright Office necessarily will register the work when an application for registration is submitted. The Office will also not compare the information provided in the preregistration submission with that provided in the follow-up registration, (e.g., names of authors may be added and names of claimants may change between the time of preregistration and the time of a full, follow-up registration).
What Types of Works Eligible for Preregistration?
Motion Pictures.
Definition from copyright law, 17 U.S.C. 101: An audiovisual work consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any.
From Compendium of Copyright Office Practices, sec. 480.03: A motion picture may embody the contributions of many persons whose efforts are brought together to make a unified cinematographic work of authorship.
Eligibility: To be eligible for preregistration, it is required that creation and fixation of the work in a motion picture format must have already commenced, (i.e., filming must have begun); and the claimant in the work can verify that he or she has a reasonable expectation that the work will be commercially distributed.
Sound Recordings.
Definition from copyright law, 17 U.S.C. 101: A work resulting from the fixation of a series of musical or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.
From Compendium of Copyright Office Practices, sec. 495.01: Sound recording authorship may be contributed by the performer or by the record producer and many times is contributed by both.
Eligibility: All sound recordings, including those having musical compositions as well as other types of underlying works, (e.g., spoken poems, are eligible for preregistration).
In addition, it is required that: at least some of the sounds must already have been fixed in a sound recording medium; and the claimant in the work can verify that he or she has a reasonable expectation that the work will be commercially distributed.
Musical Compositions.
Definition From Compendium of Copyright Office Practices, sections 401 - 403.01:Musical compositions are original music, including any accompanying lyrics; also, original arrangements or other derivative versions of earlier musical compositions to which new copyrightable authorship has been added. Music is generally defined as a succession of pitches or rhythms, or both, usually in some definite pattern. Musical works are registrable without regard to aesthetic standards.
Eligibility: To be eligible for preregistration, it is required that creation of the musical work and fixation in some tangible medium, such as notated copies or audio recordings, must have commenced; and a performance of the completed musical work will be reproduced in a sound recording or in a sound track of a motion picture that is intended for distribution, either in hard-copy formats or online; and the claimant in the work can verify that he or she has a reasonable expectation the work will be commercially distributed.
Literary Works Being Prepared for Publication in Book Form.
Definition from copyright law, 17 U.S.C. 101: Literary works are works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia.
From Compendium of Copyright Office Practices, section 303: A literary work is one that explains, describes, or narrates a particular idea, theme, or subject.
Eligibility: To be eligible for preregistration, it is required that creation and fixation of the literary work must have already commenced; and the claimant in the work can verify that he or she has a reasonable expectation that the work will be commercially distributed in the form of a book.
Computer Programs (including videogames).
Definition from copyright law, 17 U.S.C. 101: A computer program is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.
From Compendium of Copyright Office Practices, section 321.03: The Copyright Office considers source and object code as two representations of the same computer program.
Eligibility: To be eligible for preregistration, it is required that creation and fixation of the computer program, i.e., the code, must have already commenced; and the claimant in the work can verify that he or she has a reasonable expectation that the work will be commercially distributed.
Advertising or Marketing Photographs.
Definition from copyright law, 17 U.S.C. 101: photographs are included in the definition of “pictorial, graphic and sculptural works.”
From Compendium of Copyright Office Practices, section 508.01: Original photographic composition capable of supporting registration may include such elements as time and light exposure, camera angle or perspective achieved, deployment of light and shadow from natural or artificial light sources, and the arrangement or disposition of persons, scenery, or other subjects depicted in the photograph.
Eligibility: To be eligible for preregistration, it is required that creation and fixation of the advertising or marketing photograph for a product or service must have already commenced, although further editing or modifications may not yet have occurred;
the claimant can verify that he or she has a reasonable expectation that the photograph will be commercially distributed.
A claimant may also preregister multiple photographs taken for use in a particular advertising or marketing project for a particular product or service, if at least some of the photographs have been created and fixed, and if the claimant can verify that he or she has a reasonable expectation that at least one of the photographs will be commercially distributed.
Type of Work.
Select at least one type of work. More than one type may be selected if all works are owned by the same claimant, both works will be published at the same time as a single unit, and you want to preregister both.
Examples:
The same person or company owns musical compositions and the sound recordings of them, and both will be published for the first time on a compact disc: Check the boxes labeled "Sound Recording" and "Musical Composition."
The same company owns a sound recording remixed from a previously published recording, and a new music video. The derivative sound recording and music video will be published for the first time as a set consisting of a DVD and a SACD (super audio compact disc): Check the boxes labeled "Sound Recording" and "Motion Picture."
The same company owns a new product consisting of a videogame that is being published for the first time in packaging that also contains the first publication of a large print of an advertising photograph associated with the videogame: Check the boxes labeled “Computer Program” and “Advertising and Marketing Photograph.”
Title.
Give the title by which the work is currently identified. This may be a working title, which will not necessarily be the title of the work when it is distributed to the public.
If the Type of Work is a sound recording or musical work and the work being preregistered is an album, give only the album title here. Enter individual track titles, if known, on the next screen.
Additional Titles (for sound recordings and musical works on albums only)
If the work being preregistered is an audio recording of an album and you know the titles or working titles of individual tracks, you are encouraged to give those titles to add to the completeness of the preregistration record.
Author.
Give the full name of the author or authors. For preregistration, the author is the person (or company) who it is anticipated will be identified on the basic application for the completed work as the author under the copyright law, when the follow-up registration is made. For a pseudonymous work, you may give either the pseudonym or the legal name of the author.
The author is either the individual who is the actual creator of the work, or an employer for whom the work is being prepared as a "work made for hire." The employer for a "work made for hire" is the author under the copyright law and should be named as such on the application.
Copyright Claimant.
Give the full, legal name of the claimant, that is, the person (or company) who is anticipated will be identified on the application as the owner of copyright in the completed work when the follow-up registration is made. The claimant is either the author or the person or organization that has obtained ownership of all rights under the copyright by means of a legal transfer from the author. It is not necessary that the author and claimant be identical if someone other than the author is, or will be, the copyright owner.
Key Dates.
(1) Date on which creation commenced.
This should be the date or the approximate date on which actual creation of the work and fixation in some tangible medium began:
For a motion picture: the date filming began.
For a sound recording: the date recording sessions began.
For a musical composition: the date the music and/or lyrics were initially written or recorded.
For a literary work in book form: the date the actual writing of the book began.
For a computer program, that may include a videogame: the date the writing of the program began; or, the date the images of the visual aspect of the videogame began to be fixed.
For an advertising or marketing photograph: the date the photograph, or the first photograph within a unit to be published, was taken.
Both the month and year must be given; the day date is optional. If you do not know the exact date, give your closest approximation and check the “Approximate” box.
(2) Date of anticipated completion.
This should be the date or approximate date on which you anticipate finishing the work in the form intended for commercial distribution. If the work has already been substantially completed except for final editing, give the anticipated date of final editing. Both the month and year must be given; the day date is optional. If you do not know the exact date, give your closest approximation and check the “Approximate” box.
(3) Date of anticipated commencement of commercial distribution.
This should be the date or the approximate date you believe that copies or phonorecords of the work, in its complete and finished form, will be distributed to the public. The year date must be given; the day date and month are optional. If you are not sure of the exact date, give your closest approximation and check the “Approximate” box.
Description of the Work.
Because preregistration is not a form of registration but is simply an indication of an intent to register a work once the work has been completed and/or published, there is no deposit requirement. However, to identify the particular work for which preregistration is sought, a description of the work is required. This description should be as detailed and specific as possible, so that a court in a copyright infringement action can be satisfied that the allegedly infringed work is in fact the work described in the application. The description cannot exceed 2,000 characters (approximately 330 words).
For a motion picture: Describe the work in terms of the subject matter it treats, and/or give a plot summary or outline. Include the director and major actors, as well as the principal location of filming, if known, and give any other details that would assist in identifying the particular motion picture.
For a sound recording: Describe the work in terms of the subject matter of the underlying work recorded and include the genre; for example, hip hop, hard rock, classical, etc. Identify the performers and the principal recording location, if known, as well as the record label, if known; give any other characteristics of the recording that may help in identifying the particular recording.
For musical composition(s) performed in a sound recording or in a movie soundtrack: Describe the subject matter of the lyrics, if any, and identify the genre of the work; for example, hip hop, hard rock, classical, etc. Identify the performers and principal recording location, if known, as well as the record label or motion picture, if known. Provide any other details or characteristics that would assist in identifying the particular musical composition(s).
For a literary work in book form: Identify the genre of the book, (e.g., biography, novel, history). Describe the work in terms of the subject matter that it treats, for example, the biography of a public figure and the general approach to the biographic subject; a novel in a series of novels having a continuation of theme, plot, and characters. Identify any salient characteristics of the book, (e.g., whether it is a later edition or revision of a previous work); and give any other detail which may assist in identifying the literary work in book form.
For a computer program, that may include a videogame: Describe the nature, purpose, and function of the computer program, including information such as its approximate length (if known), any particular organization or structure in which the program has been created; any information concerning the computer language in which it is written; the form in which it is expected to be published, (e.g., as an online-only product); the version, if known, which is expected to be the published version. If the work is a videogame, also describe the subject matter of the videogame and the overall object, goal or purpose of the game, its characters, if any, and the general setting and surrounding found in the game.
For an advertising or marketing photograph: Describe the subject matter depicted in the photograph(s). This would include information such as the particular product, event, public figure, or other item or occurrence that the photograph is meant to advertise or market. To the extent possible, give additional details that will assist in identifying the particular photographs, such as the party for whom such advertising photographs are taken; the approximate time periods during which the photographs are taken; the approximate number of photos that may be included in the grouping; the physical setting or surrounding depicted in the photographs. Also explain the general presentation, (e.g., lighting, background scenery, positioning of elements of the subject matter) as it is seen in the photograph(s). Provide any locations and events, if applicable, associated with the photographs.
Copyright preregistration is a service intended for works that have had a history of prerelease infringement. Copyright preregistration focuses on the infringement of movies, recorded music, and other copyrighted materials before copyright owners have had the opportunity to fully complete or market their products.
Copyright preregistration is not copyright registration.
For the vast majority of works, preregistration is not useful. Preregistration is not a substitute for registration. If you do preregister your work, you are required to register it when it is published.
The nonrefundable filing fee for preregistration is $100. You may register an unpublished work for $45, without preregistering it.
You may benefit by preregistering your work if:
you think it’s likely someone may infringe your work before it is released; and
you have started your work but have not finished it.
You may also search Preregistration Records approved by the Copyright Office from October 2005 to date. http://preregcatalog.loc.gov
Pursuant to the provisions of the Artists' Rights and Theft Prevention Act of 2005, the Copyright Office is accepting preregistration of unpublished works that are being prepared for commercial distribution for types of works that the Register of Copyrights determined have had a history of pre-release infringement.
Preregistration is not a substitute for registration. Its purpose is to allow an infringement action to be brought before the authorized commercial distribution of a work and full registration thereof, and to make it possible, upon full registration, for the copyright owner to receive statutory damages and attorneys' fees in an infringement action.
In order to preserve the legal benefits of preregistration, a person who has preregistered a work is required to register such work within one month after the copyright owner becomes aware of any infringement and no later than three months after first publication. If full registration is not made within the prescribed time period, a court must dismiss an action for copyright infringement that occurred before or within the first two months after first publication. See U.S.C. 17 408(f), 411 and 412, as amended; also 37 C.F.R. 202.16, as added.
What are the Conditions for Preregistration?
You may submit a work for preregistration only if it meets these three conditions:
the work must be unpublished;
the work must be in the process of being prepared for commercial distribution in either physical or digital format, (e.g., film copies, CDs, or computer programs to be sold online); and
the work must be one of the following types of works:
motion pictures
sound recordings
musical compositions
literary works being prepared for publication in book form
computer programs(including videogames)
advertising or marketing photographs
To preregister a work, you will be required to submit an online application, which includes a certification of a reasonable expectation that the work will be commercially distributed, that the information given in the application is correct, and a nonrefundable $100 filing fee.
Persons wishing to preregister a copyright must apply online.
No paper application form is available.
Only an application and fee are required; a copy of the work itself, or any finished part thereof, should not be submitted. Instead, the applicant must give as full a description of the work as possible in the online application.
A work may be preregistered only if creation of the work and fixation in some tangible medium has already begun. 17 U.S.C. 102(b), states that ideas and concepts are not subject to copyright protection, therefore ideas and concepts cannot be preregistered or registered. The work to be preregistered must be one that falls within the subject matter enumerated in 17 U.S.C. 102(a).
Preregistration is a streamlined process available only online. Preregistration requires sufficient information to reasonably identify the work for which preregistration is sought, but no deposit materials are required, and the online application form will not be examined except to ascertain that all the necessary information has been provided by the applicant.
Preregistration is not a substitute for registration. It is simply a means of preserving the ability to satisfy the requirements of sections 411(a) and 412 of the Copyright Act by advising the Copyright Office prior to the publication of a work that the work is being prepared for commercial distribution, and then following through with a registration shortly after publication or infringement of the work.
The fact that a work has been preregistered does not mean that the Copyright Office necessarily will register the work when an application for registration is submitted. The Office will also not compare the information provided in the preregistration submission with that provided in the follow-up registration, (e.g., names of authors may be added and names of claimants may change between the time of preregistration and the time of a full, follow-up registration).
What Types of Works Eligible for Preregistration?
Motion Pictures.
Definition from copyright law, 17 U.S.C. 101: An audiovisual work consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any.
From Compendium of Copyright Office Practices, sec. 480.03: A motion picture may embody the contributions of many persons whose efforts are brought together to make a unified cinematographic work of authorship.
Eligibility: To be eligible for preregistration, it is required that creation and fixation of the work in a motion picture format must have already commenced, (i.e., filming must have begun); and the claimant in the work can verify that he or she has a reasonable expectation that the work will be commercially distributed.
Sound Recordings.
Definition from copyright law, 17 U.S.C. 101: A work resulting from the fixation of a series of musical or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.
From Compendium of Copyright Office Practices, sec. 495.01: Sound recording authorship may be contributed by the performer or by the record producer and many times is contributed by both.
Eligibility: All sound recordings, including those having musical compositions as well as other types of underlying works, (e.g., spoken poems, are eligible for preregistration).
In addition, it is required that: at least some of the sounds must already have been fixed in a sound recording medium; and the claimant in the work can verify that he or she has a reasonable expectation that the work will be commercially distributed.
Musical Compositions.
Definition From Compendium of Copyright Office Practices, sections 401 - 403.01:Musical compositions are original music, including any accompanying lyrics; also, original arrangements or other derivative versions of earlier musical compositions to which new copyrightable authorship has been added. Music is generally defined as a succession of pitches or rhythms, or both, usually in some definite pattern. Musical works are registrable without regard to aesthetic standards.
Eligibility: To be eligible for preregistration, it is required that creation of the musical work and fixation in some tangible medium, such as notated copies or audio recordings, must have commenced; and a performance of the completed musical work will be reproduced in a sound recording or in a sound track of a motion picture that is intended for distribution, either in hard-copy formats or online; and the claimant in the work can verify that he or she has a reasonable expectation the work will be commercially distributed.
Literary Works Being Prepared for Publication in Book Form.
Definition from copyright law, 17 U.S.C. 101: Literary works are works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia.
From Compendium of Copyright Office Practices, section 303: A literary work is one that explains, describes, or narrates a particular idea, theme, or subject.
Eligibility: To be eligible for preregistration, it is required that creation and fixation of the literary work must have already commenced; and the claimant in the work can verify that he or she has a reasonable expectation that the work will be commercially distributed in the form of a book.
Computer Programs (including videogames).
Definition from copyright law, 17 U.S.C. 101: A computer program is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.
From Compendium of Copyright Office Practices, section 321.03: The Copyright Office considers source and object code as two representations of the same computer program.
Eligibility: To be eligible for preregistration, it is required that creation and fixation of the computer program, i.e., the code, must have already commenced; and the claimant in the work can verify that he or she has a reasonable expectation that the work will be commercially distributed.
Advertising or Marketing Photographs.
Definition from copyright law, 17 U.S.C. 101: photographs are included in the definition of “pictorial, graphic and sculptural works.”
From Compendium of Copyright Office Practices, section 508.01: Original photographic composition capable of supporting registration may include such elements as time and light exposure, camera angle or perspective achieved, deployment of light and shadow from natural or artificial light sources, and the arrangement or disposition of persons, scenery, or other subjects depicted in the photograph.
Eligibility: To be eligible for preregistration, it is required that creation and fixation of the advertising or marketing photograph for a product or service must have already commenced, although further editing or modifications may not yet have occurred;
the claimant can verify that he or she has a reasonable expectation that the photograph will be commercially distributed.
A claimant may also preregister multiple photographs taken for use in a particular advertising or marketing project for a particular product or service, if at least some of the photographs have been created and fixed, and if the claimant can verify that he or she has a reasonable expectation that at least one of the photographs will be commercially distributed.
Type of Work.
Select at least one type of work. More than one type may be selected if all works are owned by the same claimant, both works will be published at the same time as a single unit, and you want to preregister both.
Examples:
The same person or company owns musical compositions and the sound recordings of them, and both will be published for the first time on a compact disc: Check the boxes labeled "Sound Recording" and "Musical Composition."
The same company owns a sound recording remixed from a previously published recording, and a new music video. The derivative sound recording and music video will be published for the first time as a set consisting of a DVD and a SACD (super audio compact disc): Check the boxes labeled "Sound Recording" and "Motion Picture."
The same company owns a new product consisting of a videogame that is being published for the first time in packaging that also contains the first publication of a large print of an advertising photograph associated with the videogame: Check the boxes labeled “Computer Program” and “Advertising and Marketing Photograph.”
Title.
Give the title by which the work is currently identified. This may be a working title, which will not necessarily be the title of the work when it is distributed to the public.
If the Type of Work is a sound recording or musical work and the work being preregistered is an album, give only the album title here. Enter individual track titles, if known, on the next screen.
Additional Titles (for sound recordings and musical works on albums only)
If the work being preregistered is an audio recording of an album and you know the titles or working titles of individual tracks, you are encouraged to give those titles to add to the completeness of the preregistration record.
Author.
Give the full name of the author or authors. For preregistration, the author is the person (or company) who it is anticipated will be identified on the basic application for the completed work as the author under the copyright law, when the follow-up registration is made. For a pseudonymous work, you may give either the pseudonym or the legal name of the author.
The author is either the individual who is the actual creator of the work, or an employer for whom the work is being prepared as a "work made for hire." The employer for a "work made for hire" is the author under the copyright law and should be named as such on the application.
Copyright Claimant.
Give the full, legal name of the claimant, that is, the person (or company) who is anticipated will be identified on the application as the owner of copyright in the completed work when the follow-up registration is made. The claimant is either the author or the person or organization that has obtained ownership of all rights under the copyright by means of a legal transfer from the author. It is not necessary that the author and claimant be identical if someone other than the author is, or will be, the copyright owner.
Key Dates.
(1) Date on which creation commenced.
This should be the date or the approximate date on which actual creation of the work and fixation in some tangible medium began:
For a motion picture: the date filming began.
For a sound recording: the date recording sessions began.
For a musical composition: the date the music and/or lyrics were initially written or recorded.
For a literary work in book form: the date the actual writing of the book began.
For a computer program, that may include a videogame: the date the writing of the program began; or, the date the images of the visual aspect of the videogame began to be fixed.
For an advertising or marketing photograph: the date the photograph, or the first photograph within a unit to be published, was taken.
Both the month and year must be given; the day date is optional. If you do not know the exact date, give your closest approximation and check the “Approximate” box.
(2) Date of anticipated completion.
This should be the date or approximate date on which you anticipate finishing the work in the form intended for commercial distribution. If the work has already been substantially completed except for final editing, give the anticipated date of final editing. Both the month and year must be given; the day date is optional. If you do not know the exact date, give your closest approximation and check the “Approximate” box.
(3) Date of anticipated commencement of commercial distribution.
This should be the date or the approximate date you believe that copies or phonorecords of the work, in its complete and finished form, will be distributed to the public. The year date must be given; the day date and month are optional. If you are not sure of the exact date, give your closest approximation and check the “Approximate” box.
Description of the Work.
Because preregistration is not a form of registration but is simply an indication of an intent to register a work once the work has been completed and/or published, there is no deposit requirement. However, to identify the particular work for which preregistration is sought, a description of the work is required. This description should be as detailed and specific as possible, so that a court in a copyright infringement action can be satisfied that the allegedly infringed work is in fact the work described in the application. The description cannot exceed 2,000 characters (approximately 330 words).
For a motion picture: Describe the work in terms of the subject matter it treats, and/or give a plot summary or outline. Include the director and major actors, as well as the principal location of filming, if known, and give any other details that would assist in identifying the particular motion picture.
For a sound recording: Describe the work in terms of the subject matter of the underlying work recorded and include the genre; for example, hip hop, hard rock, classical, etc. Identify the performers and the principal recording location, if known, as well as the record label, if known; give any other characteristics of the recording that may help in identifying the particular recording.
For musical composition(s) performed in a sound recording or in a movie soundtrack: Describe the subject matter of the lyrics, if any, and identify the genre of the work; for example, hip hop, hard rock, classical, etc. Identify the performers and principal recording location, if known, as well as the record label or motion picture, if known. Provide any other details or characteristics that would assist in identifying the particular musical composition(s).
For a literary work in book form: Identify the genre of the book, (e.g., biography, novel, history). Describe the work in terms of the subject matter that it treats, for example, the biography of a public figure and the general approach to the biographic subject; a novel in a series of novels having a continuation of theme, plot, and characters. Identify any salient characteristics of the book, (e.g., whether it is a later edition or revision of a previous work); and give any other detail which may assist in identifying the literary work in book form.
For a computer program, that may include a videogame: Describe the nature, purpose, and function of the computer program, including information such as its approximate length (if known), any particular organization or structure in which the program has been created; any information concerning the computer language in which it is written; the form in which it is expected to be published, (e.g., as an online-only product); the version, if known, which is expected to be the published version. If the work is a videogame, also describe the subject matter of the videogame and the overall object, goal or purpose of the game, its characters, if any, and the general setting and surrounding found in the game.
For an advertising or marketing photograph: Describe the subject matter depicted in the photograph(s). This would include information such as the particular product, event, public figure, or other item or occurrence that the photograph is meant to advertise or market. To the extent possible, give additional details that will assist in identifying the particular photographs, such as the party for whom such advertising photographs are taken; the approximate time periods during which the photographs are taken; the approximate number of photos that may be included in the grouping; the physical setting or surrounding depicted in the photographs. Also explain the general presentation, (e.g., lighting, background scenery, positioning of elements of the subject matter) as it is seen in the photograph(s). Provide any locations and events, if applicable, associated with the photographs.
Internet Domain Names as Trademarks or Servicemarks
Registering and using a domain name is easy, just be the first person to register it, or purchase the registration rights from someone else. As long as you pay your registration fee each year you can use the domain name as you wish, provided you are not breaking the law or infringing on another’s rights. However, using a domain name in commerce to the point that it can receive federal trademark registration is not so easy, and in some cases not possible.
How are trademarks different from other types of intellectual property?
Trademark doctrine is also different than other types of intellectual property law such as copyright or patent, in that copyright or patent law is designed to protect you or your business, while trademark law is designed to protect the public.
Trademark law is also “use it or lose it” in nature. You must use the trademark in interstate commerce as an identifier of your goods or services to obtain and keep federal trademark registration. You may only use the federal registration symbol "®" when you have a current federal trademark registration. If you stop using the trademark in interstate commerce for an extended period you risk losing your rights in the mark.
What is the difference between a trademark and a service mark?
Although the terms are often referred to as ‘trademarks’ or simply ‘marks’; a ‘trademark’ includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A ‘service mark’ is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.
Some of the benefits of federal trademark registration are: constructive notice to others of your claim of rights in the mark; evidence of ownership of the mark; the ability to invoke the jurisdiction of federal courts in case of infringement; federal registration can be used as a basis for obtaining registration in foreign countries; and a notice of federal registration may be filed with U.S. Customs Service to help prevent importation of infringing foreign goods.
Does the addition of ‘.com’ make my name a trademark?
Internet domain names raise some unique trademark issues. A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services.
Portions of the uniform resource locator (URL) including the beginning, ("http://www.") and the top level Internet domain name (TLD) (e.g., ".com," ".org," ".edu,") function to indicate an address on the World Wide Web, and therefore generally serve no source-indicating function. Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. If a proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must initially refuse registration without a showing of secondary meaning in the mark. For example: the mark is ‘SOFT.COM’ for facial tissues. The examining attorney must refuse registration. The mark is ‘NATIONAL BOOK OUTLET.COM’ for retail book store services. The examining attorney must refuse registration.
Similarly, if a proposed mark is composed of generic term(s) for the applicant's goods or services and a TLD, the examining attorney generally must refuse registration on the ground that the mark is generic. For example: the mark is ‘TURKEY.COM’ for frozen turkeys. The examining attorney must refuse registration. The mark is ‘BANK.COM’ for banking services. The examining attorney must refuse registration.
However, when examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole, including the TLD indicator. The Court of Appeals for the Federal Circuit cautioned that, while "[t]he addition of a TLD such as '.com' or '.org' to an otherwise unregistrable mark will typically not add any source-identifying significance," this "is not a bright-line, per se rule. In exceptional circumstances, a TLD may render an otherwise descriptive term sufficiently distinctive for trademark registration." In Re Oppendahl & Larson LLP, 373 F.3d at 1177, 71 USPQ2d at 1374 (Fed. Cir. 2004). See also In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, sold via the Internet).
Source Identification.
A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark as depicted on the specimens submitted to the Untied States Patent and Trademark Office of the mark as used in interstate commerce, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).
In Eilberg, the Trademark Trial and Appeal Board held that a term that only serves to identify the applicant's domain name or the location on the Internet where the applicant's website appears, and does not separately identify applicant's services, does not function as a service mark. The applicant's proposed mark was ‘WWW.EILBERG.COM’. The specimen submitted was the business card of William H. Eilberg, Attorney at Law, 820 Homestead Road, P.O. Box 7, Jenkintown, Pennsylvania 19046, 215-885-4600, Fax 215-885-4603 email whe@eilberg.com, Patents, Trademarks and Copyrights, www.eilberg.com.
The Board affirmed the examining attorney's refusal of registration on the ground that the matter presented for registration did not function as a mark, stating that: “[T]he asserted mark, as displayed on applicant's letterhead, does not function as a service mark identifying and distinguishing applicant's legal services and, as presented, is not capable of doing so. As shown, the asserted mark identifies applicant's Internet domain name, by use of which one can access applicant's Web site. In other words, the asserted mark WWW.EILBERG.COM merely indicates the location on the Internet where applicant's Web site appears. It does not separately identify applicant's legal services as such”.
This is not to say that, if used appropriately, the asserted mark or portions thereof may not be trademarks or service marks. For example, if the applicant's law firm name were, say, EILBERG.COM and were presented prominently on applicant's letterheads and business cards as the name under which applicant was rendering its legal services, then that mark may well be registrable.
Trademark law is designed to protect the public. It is the perception of the ordinary customer that determines whether the asserted mark functions as a mark, not the applicant's intent, hope or expectation that it does so. The mark must function as an indicator of a source of goods or services. An Internet domain name by itself is nothing more than an Internet address. If a domain name is proposed as a trademark, but is used in a way that would be perceived by the public as nothing more than an Internet address where the applicant can be contacted, registration must be refused.
Much of the information in this article is contained in the United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (TMEP) - 4th Edition which can be found online at: http://www.uspto.gov/web/offices/tac/tmep
How are trademarks different from other types of intellectual property?
Trademark doctrine is also different than other types of intellectual property law such as copyright or patent, in that copyright or patent law is designed to protect you or your business, while trademark law is designed to protect the public.
Trademark law is also “use it or lose it” in nature. You must use the trademark in interstate commerce as an identifier of your goods or services to obtain and keep federal trademark registration. You may only use the federal registration symbol "®" when you have a current federal trademark registration. If you stop using the trademark in interstate commerce for an extended period you risk losing your rights in the mark.
What is the difference between a trademark and a service mark?
Although the terms are often referred to as ‘trademarks’ or simply ‘marks’; a ‘trademark’ includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A ‘service mark’ is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.
Some of the benefits of federal trademark registration are: constructive notice to others of your claim of rights in the mark; evidence of ownership of the mark; the ability to invoke the jurisdiction of federal courts in case of infringement; federal registration can be used as a basis for obtaining registration in foreign countries; and a notice of federal registration may be filed with U.S. Customs Service to help prevent importation of infringing foreign goods.
Does the addition of ‘.com’ make my name a trademark?
Internet domain names raise some unique trademark issues. A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services.
Portions of the uniform resource locator (URL) including the beginning, ("http://www.") and the top level Internet domain name (TLD) (e.g., ".com," ".org," ".edu,") function to indicate an address on the World Wide Web, and therefore generally serve no source-indicating function. Because TLDs generally serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. If a proposed mark is composed of merely descriptive term(s) combined with a TLD, the examining attorney must initially refuse registration without a showing of secondary meaning in the mark. For example: the mark is ‘SOFT.COM’ for facial tissues. The examining attorney must refuse registration. The mark is ‘NATIONAL BOOK OUTLET.COM’ for retail book store services. The examining attorney must refuse registration.
Similarly, if a proposed mark is composed of generic term(s) for the applicant's goods or services and a TLD, the examining attorney generally must refuse registration on the ground that the mark is generic. For example: the mark is ‘TURKEY.COM’ for frozen turkeys. The examining attorney must refuse registration. The mark is ‘BANK.COM’ for banking services. The examining attorney must refuse registration.
However, when examining domain name marks, it is important to evaluate the commercial impression of the mark as a whole, including the TLD indicator. The Court of Appeals for the Federal Circuit cautioned that, while "[t]he addition of a TLD such as '.com' or '.org' to an otherwise unregistrable mark will typically not add any source-identifying significance," this "is not a bright-line, per se rule. In exceptional circumstances, a TLD may render an otherwise descriptive term sufficiently distinctive for trademark registration." In Re Oppendahl & Larson LLP, 373 F.3d at 1177, 71 USPQ2d at 1374 (Fed. Cir. 2004). See also In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies and other wall coverings, sold via the Internet).
Source Identification.
A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark as depicted on the specimens submitted to the Untied States Patent and Trademark Office of the mark as used in interstate commerce, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).
In Eilberg, the Trademark Trial and Appeal Board held that a term that only serves to identify the applicant's domain name or the location on the Internet where the applicant's website appears, and does not separately identify applicant's services, does not function as a service mark. The applicant's proposed mark was ‘WWW.EILBERG.COM’. The specimen submitted was the business card of William H. Eilberg, Attorney at Law, 820 Homestead Road, P.O. Box 7, Jenkintown, Pennsylvania 19046, 215-885-4600, Fax 215-885-4603 email whe@eilberg.com, Patents, Trademarks and Copyrights, www.eilberg.com.
The Board affirmed the examining attorney's refusal of registration on the ground that the matter presented for registration did not function as a mark, stating that: “[T]he asserted mark, as displayed on applicant's letterhead, does not function as a service mark identifying and distinguishing applicant's legal services and, as presented, is not capable of doing so. As shown, the asserted mark identifies applicant's Internet domain name, by use of which one can access applicant's Web site. In other words, the asserted mark WWW.EILBERG.COM merely indicates the location on the Internet where applicant's Web site appears. It does not separately identify applicant's legal services as such”.
This is not to say that, if used appropriately, the asserted mark or portions thereof may not be trademarks or service marks. For example, if the applicant's law firm name were, say, EILBERG.COM and were presented prominently on applicant's letterheads and business cards as the name under which applicant was rendering its legal services, then that mark may well be registrable.
Trademark law is designed to protect the public. It is the perception of the ordinary customer that determines whether the asserted mark functions as a mark, not the applicant's intent, hope or expectation that it does so. The mark must function as an indicator of a source of goods or services. An Internet domain name by itself is nothing more than an Internet address. If a domain name is proposed as a trademark, but is used in a way that would be perceived by the public as nothing more than an Internet address where the applicant can be contacted, registration must be refused.
Much of the information in this article is contained in the United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (TMEP) - 4th Edition which can be found online at: http://www.uspto.gov/web/offices/tac/tmep
"Can I Do That?" Obscenity, and the Murky Waters Floating "edgy" Content in the Entertainment Industries.
With the ever shortening attention span of the public, entertainers and entertainment providers keep pushing the envelope, presenting content that is often more “edgy” and outrageous than ever. Content that was taboo just a decade ago is finding its way not only into satellite/cable broadcasting but also onto the public airwaves as part of popular primetime traditional network programs.
With the greater integration into the mainstream of this “edgy” content, the content once confined to stag parties and seedy backroom theatres has come out into the light and has become a multi-billion dollar industry appealing to both men and women. Attorneys that have clients involved in the entertainment industries are often asked “can I do that?” when the client decides to venture into an area of content that could potentially get them into trouble with the law, especially in the area of obscenity (often the question is presented after the fact as “can I get away with that?”). As we will explore below, the answer is often “maybe”.
“Heavens to Betsy! There ought to be a law!”
Since the days of Lenny Bruce and his “racy” comedy in the early 1960s, and the “stag” films of that era, the “obscenity” laws have not significantly changed, but content that would have certainly landed a person in jail back then, has become commonplace in network programming. This shift in the legality of certain content is based on the changing definition of obscenity, which is based in part on an ever changing contemporary community standard.
In 1957 the Supreme Court held that obscenity is not within the area of constitutionally protected speech or press. The Court stated that ideas having the slightest redeeming social importance are generally guaranteed constitutional protection, but “implicit in the history of the First Amendment is the rejection of obscenity as utterly without redeeming social importance”, rejecting constitutional protection for speech deemed obscene. Roth v. United States, 354 U.S. 476, 484-485 (1957).
Blacks Law Dictionary, seventh edition, Bryan A. Garner Ed., West Group (1999) defines obscenity as: “The quality or state of being morally abhorrent or socially taboo, especially as a result of referring to or depicting sexual or excretory functions; something (such as an expression or act) that has this quality.
The Court in Roth noted that sex and obscenity are not synonymous, but that obscenity is “material which deals with sex in a manner appealing to the prurient interest”. Roth at 487. Blacks Law Dictionary defines prurient as “Characterized by or arousing inordinate or unusual sexual desire.”
The Roth Court applied the traditional test for obscenity, that of speech appealing to the prurient interest as applied by contemporary community standards, but modified the historic view by looking at the dominant theme of the speech, where earlier courts had only considered isolated parts of the speech.
In 1964, when faced with a case involving Les Amants (“The Lovers”), a racy French film, the Court again considered the dominant theme of the speech and found that the film was not obscene, therefore providing it constitutional protection. Jacobellis v. Ohio, 378 U.S. 184 (1964) The problems defining obscenity using the Roth test were clearly illustrated in Justice Stewart’s concurring opinion where he stated that he believed the French film was not obscene, and further, that he believed obscenity under the Roth test was limited to hard core pornography. He couldn’t really define what hard core pornography was, other than his famous quote that “I know it when I see it”. Jacobellis at 197.
In 1973 a man was convicted in California for distributing obscene materials through the mail. On appeal, the Supreme Court chose to enhance the Roth test and formulated a new three part test for defining obscenity. Miller v. California, 413 U.S. 15 (1973): Whether the “average person applying contemporary community standards” would find that the work, taken as a whole, appeals to the prurient interest. Whether the work depicts or describes, in a patently offensive way, sexual conduct specifically defined by the applicable state law; and Whether the work, taken as a whole, lacks serious literary, artistic, political, or scientific value.
Ummmm….Can I be turned on…and grossed out …at the same time?!
Kathleen Sullivan, a former Dean of Stanford Law School, is one of many who have summed up the inherent problems with this test. “The first two parts of [the Miller test] are incoherent: to put it crudely, they require the audience to be turned on and grossed out at the same time.” Kathleen Sullivan, The New Republic (Sept 28, 1992).
And what is the contemporary community standard? Is the community a local community or a national community? If a local community, how local, and what defines it? The Miller Court defined the state of California as the relevant community, while other courts have defined the county, tri-county areas, as well as the state as the community. It has been suggested that the bar setting the local community standard in North Las Vegas is the existence of the Palomino, an old strip club in North Las Vegas, which was “grandfathered” to continue to allow nudity, alcohol sales and private rooms despite that some of these activities are prohibited by the current North Las Vegas Municipal Code.
What is serious value? The first two prongs of the Miller test, prurient interest and patent offensiveness, are issues for a jury to determine applying the “contemporary community standard”, but the third prong, serious value, was held to be defined by a national standard. Pope v. Illinois, 481 U.S. 497, 500 (1987).
The Miller Court rejected a national standard for all parts of the test, reasoning that a national standard would drop the bar on speech to the most restrictive level in the nation. In 1957 the Court had a similar conclusion where an over restrictive Michigan statute prohibiting the sale of certain reading materials was deemed unconstitutional. The Court held that a statute, which effectively reduced the reading level of all Michigan citizens to that of children, was unconstitutional. Justice Frankfurter compared the statute to “burn[ing] the house to roast the pig”. Butler v. Michigan, 352 U.S. 380, 383 (1957).
A test that is part local standard and part national standard creates a host of problems. The terms used for testing whether speech is obscene have no common meaning in today’s society. People do not commonly use the word “prurient” or speak of things as being “patently offensive”. There is no field test for law enforcement to determine if something is obscene. Because of these archaic terms and the vague community standard, speech cannot be deemed obscene in the field, or anytime before a jury verdict. In most criminal cases the defendant knows from the outset if he or she is guilty. In obscenity prosecutions the defendant cannot know if he or she is guilty and enter a plea until after conviction or acquittal, which leads to another problem. How many people are comfortable discussing their views on erotica in a public setting? Probably not too many. Imagine then how the contemporary community standard can get skewed when a group of uncomfortable male and female jurors that have never met before are asked to discuss their views of erotica in a jury deliberation room. The test does not work.
So what do I tell my client when they ask me “can I do that”?
Consider this. Adult oriented content that might have been considered obscene in the past may have mainstream appeal today. Consider the recent popularity of the movie Boogie Nights, a major studio production, and a widely released film. This film is loosely based on 1970s porn star John Holmes, depicting his life and times as part of the adult film industry. Consider the placement of a Fredrick’s of Hollywood or Victoria’s Secret shop in most every mall in America. Consider that most major hotel chains now offer adult pay-per-view in-room movies to their guests. Consider the 1988 opinion of the Supreme Court of California which held that a producer paying actors to engage in legal and non-obscene sexual acts did not constitute pandering or prostitution. See People v. Freeman, 758 P.2d 1128 (Cal. 1988). The Freeman Court considered the payment to the actors, not as payment for the sex acts, but payment for the right to photograph the conduct. It is no wonder that the adult video industry thrives in the State of California.
Images of erotica have become a staple of modern culture, but at the same time discussion of erotica is still a private matter for most people. It is unclear whether conduct that is permitted in California would be legal in Nevada or elsewhere. The bulk of cases regarding obscenity often hinge on whether the conduct came to the community or the person exposed to the content was seeking the content. With the availability of Internet, satellite television and radio, and other widely disseminated forms of communication, the question of access becomes murky, which further clouds the tests for obscenity.
So just like the “final answer” to those fun law school exams, when your client asks “can I do that?”, especially in an “edgy” area that could be deemed obscene, the answer more often than not is “maybe”.
With the greater integration into the mainstream of this “edgy” content, the content once confined to stag parties and seedy backroom theatres has come out into the light and has become a multi-billion dollar industry appealing to both men and women. Attorneys that have clients involved in the entertainment industries are often asked “can I do that?” when the client decides to venture into an area of content that could potentially get them into trouble with the law, especially in the area of obscenity (often the question is presented after the fact as “can I get away with that?”). As we will explore below, the answer is often “maybe”.
“Heavens to Betsy! There ought to be a law!”
Since the days of Lenny Bruce and his “racy” comedy in the early 1960s, and the “stag” films of that era, the “obscenity” laws have not significantly changed, but content that would have certainly landed a person in jail back then, has become commonplace in network programming. This shift in the legality of certain content is based on the changing definition of obscenity, which is based in part on an ever changing contemporary community standard.
In 1957 the Supreme Court held that obscenity is not within the area of constitutionally protected speech or press. The Court stated that ideas having the slightest redeeming social importance are generally guaranteed constitutional protection, but “implicit in the history of the First Amendment is the rejection of obscenity as utterly without redeeming social importance”, rejecting constitutional protection for speech deemed obscene. Roth v. United States, 354 U.S. 476, 484-485 (1957).
Blacks Law Dictionary, seventh edition, Bryan A. Garner Ed., West Group (1999) defines obscenity as: “The quality or state of being morally abhorrent or socially taboo, especially as a result of referring to or depicting sexual or excretory functions; something (such as an expression or act) that has this quality.
The Court in Roth noted that sex and obscenity are not synonymous, but that obscenity is “material which deals with sex in a manner appealing to the prurient interest”. Roth at 487. Blacks Law Dictionary defines prurient as “Characterized by or arousing inordinate or unusual sexual desire.”
The Roth Court applied the traditional test for obscenity, that of speech appealing to the prurient interest as applied by contemporary community standards, but modified the historic view by looking at the dominant theme of the speech, where earlier courts had only considered isolated parts of the speech.
In 1964, when faced with a case involving Les Amants (“The Lovers”), a racy French film, the Court again considered the dominant theme of the speech and found that the film was not obscene, therefore providing it constitutional protection. Jacobellis v. Ohio, 378 U.S. 184 (1964) The problems defining obscenity using the Roth test were clearly illustrated in Justice Stewart’s concurring opinion where he stated that he believed the French film was not obscene, and further, that he believed obscenity under the Roth test was limited to hard core pornography. He couldn’t really define what hard core pornography was, other than his famous quote that “I know it when I see it”. Jacobellis at 197.
In 1973 a man was convicted in California for distributing obscene materials through the mail. On appeal, the Supreme Court chose to enhance the Roth test and formulated a new three part test for defining obscenity. Miller v. California, 413 U.S. 15 (1973): Whether the “average person applying contemporary community standards” would find that the work, taken as a whole, appeals to the prurient interest. Whether the work depicts or describes, in a patently offensive way, sexual conduct specifically defined by the applicable state law; and Whether the work, taken as a whole, lacks serious literary, artistic, political, or scientific value.
Ummmm….Can I be turned on…and grossed out …at the same time?!
Kathleen Sullivan, a former Dean of Stanford Law School, is one of many who have summed up the inherent problems with this test. “The first two parts of [the Miller test] are incoherent: to put it crudely, they require the audience to be turned on and grossed out at the same time.” Kathleen Sullivan, The New Republic (Sept 28, 1992).
And what is the contemporary community standard? Is the community a local community or a national community? If a local community, how local, and what defines it? The Miller Court defined the state of California as the relevant community, while other courts have defined the county, tri-county areas, as well as the state as the community. It has been suggested that the bar setting the local community standard in North Las Vegas is the existence of the Palomino, an old strip club in North Las Vegas, which was “grandfathered” to continue to allow nudity, alcohol sales and private rooms despite that some of these activities are prohibited by the current North Las Vegas Municipal Code.
What is serious value? The first two prongs of the Miller test, prurient interest and patent offensiveness, are issues for a jury to determine applying the “contemporary community standard”, but the third prong, serious value, was held to be defined by a national standard. Pope v. Illinois, 481 U.S. 497, 500 (1987).
The Miller Court rejected a national standard for all parts of the test, reasoning that a national standard would drop the bar on speech to the most restrictive level in the nation. In 1957 the Court had a similar conclusion where an over restrictive Michigan statute prohibiting the sale of certain reading materials was deemed unconstitutional. The Court held that a statute, which effectively reduced the reading level of all Michigan citizens to that of children, was unconstitutional. Justice Frankfurter compared the statute to “burn[ing] the house to roast the pig”. Butler v. Michigan, 352 U.S. 380, 383 (1957).
A test that is part local standard and part national standard creates a host of problems. The terms used for testing whether speech is obscene have no common meaning in today’s society. People do not commonly use the word “prurient” or speak of things as being “patently offensive”. There is no field test for law enforcement to determine if something is obscene. Because of these archaic terms and the vague community standard, speech cannot be deemed obscene in the field, or anytime before a jury verdict. In most criminal cases the defendant knows from the outset if he or she is guilty. In obscenity prosecutions the defendant cannot know if he or she is guilty and enter a plea until after conviction or acquittal, which leads to another problem. How many people are comfortable discussing their views on erotica in a public setting? Probably not too many. Imagine then how the contemporary community standard can get skewed when a group of uncomfortable male and female jurors that have never met before are asked to discuss their views of erotica in a jury deliberation room. The test does not work.
So what do I tell my client when they ask me “can I do that”?
Consider this. Adult oriented content that might have been considered obscene in the past may have mainstream appeal today. Consider the recent popularity of the movie Boogie Nights, a major studio production, and a widely released film. This film is loosely based on 1970s porn star John Holmes, depicting his life and times as part of the adult film industry. Consider the placement of a Fredrick’s of Hollywood or Victoria’s Secret shop in most every mall in America. Consider that most major hotel chains now offer adult pay-per-view in-room movies to their guests. Consider the 1988 opinion of the Supreme Court of California which held that a producer paying actors to engage in legal and non-obscene sexual acts did not constitute pandering or prostitution. See People v. Freeman, 758 P.2d 1128 (Cal. 1988). The Freeman Court considered the payment to the actors, not as payment for the sex acts, but payment for the right to photograph the conduct. It is no wonder that the adult video industry thrives in the State of California.
Images of erotica have become a staple of modern culture, but at the same time discussion of erotica is still a private matter for most people. It is unclear whether conduct that is permitted in California would be legal in Nevada or elsewhere. The bulk of cases regarding obscenity often hinge on whether the conduct came to the community or the person exposed to the content was seeking the content. With the availability of Internet, satellite television and radio, and other widely disseminated forms of communication, the question of access becomes murky, which further clouds the tests for obscenity.
So just like the “final answer” to those fun law school exams, when your client asks “can I do that?”, especially in an “edgy” area that could be deemed obscene, the answer more often than not is “maybe”.
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