They can’t do that! That’s my design!
The topic and its speakers brought out a number of tableware company presidents, major retail executives, licensing principals and designers at the Forty One Madison – sponsored seminar during the Spring 2005 New York Tabletop Show®. Focusing on copyright and trademark infringements was a trio of attorneys from Cowan DeBaets, Abrahams & Sheppard, a renowned copyright law firm located on the 34th floor in the tableware building. Speakers Ralph J. Sutton, Toby M.J. Butterfield and Ken N. Swezey with program host and sponsor Carole Dixon, Sr. VP and Director of The New York Merchandise Mart. Below is some of the helpful information covered at the session. For further information see the firm’s website: www.cdas.com
Toby Butterfield answers common questions about copyright and trademarks:
“A copyright is a right in an original creative work. Copyrights were created under the Constitution to encourage creativity and by giving a reward to a designer who came up with an original work of authorship. Most industrialized and non-industrialized countries are now members of the Berne Convention (implemented in the United States in 1989), so you don’t have to register a copyright. It gives you the right to control the work and the use of it whether copies are made and how it is distributed. Examples would include a sculpture, a book and a play.”
What is a trademark?
“It is a name or a device by which consumers identify goods or services. It doesn’t have to be original or different; it just has to serve as an identifier for the consumer. Trademarks do not have to be registered, although there are many benefits in doing so. For example, McDonald’s applies to a service – the provision of food services. For Perrier, the actual shape of the product also serves as a trademark. You don’t have to actually see the Perrier logo; the distinctive shaped green bottle has become indicative of the brand.”
What are other ways one can protect their products?
“You can pursue people who are infringing your rights in ways that are totally separate from copyright and trademarks. Confidentiality is one. If you have been dealing with someone who has promised you confidentiality and not honored it, you’ve got a claim and you can take action on that ground. Trade secrets – for example, the formula for Coke – are highly secret and protectable. If somebody was to take it outside the company, woe betide them! Breach of contract is another, which is fairly obvious.”
What should I expect if I go to court?
“First of all, registration of a copyright is a requirement to bring an action for its infringement. Registration of trademarks is not required. If you are going to bring a case against somebody you need to be prepared to educate the judge about the originality in your design. You need to demonstrate how the people who have chosen to infringe on your design are taking the essence, the originality of it. A judge will not be as familiar with your product as you and may not know about the trend research, analysis and testing that goes into working out the exact design and colors of a great design. The infringers should not be permitted to argue they are just trying to compete. What you really want is usually a litigator who can deal a swift kill right at the beginning of the case!”
Ken Swezey zeros in on registering copyrights and trademarks:
“There is great information about copyright registration at the U.S. Copyright Office, a website at www.copyright.gov. You can do certain kinds of limited searches; get all the forms and brochures. It is a relatively simple process but keep in mind they are not a gatekeeper. Copyright law in our court system requires a certificate of copyright registration before you can commence any kind of copyright action. Even though you may have a copyright in your work from the moment of creation, if you don’t have the certificate at the time the infringement occurs, you’re not going to get access to the courts immediately.
Copyright registration, which leads to enhanced copyright protection and ultimately copyright infringement actions, is based on when the original first was published. That’s the focus of U.S. law. European law goes to creation; U.S. law goes to first publication. Make sure you identify all the elements in your copyrighted work. Actual publication is reproduction and distribution – when it is in the public stream of commerce.
If you are a company and all your work is done by your employees, that’s called work-for-hire. The company is the author; the company is the claimant. If you hire a freelance person to do the work for you, and they sign an agreement that allows that, then they are on a work-for-hire basis. Again the company is the author and claimant.
The trademark process is different from the copyright registration in that it is much more of a legal process and the government people at the Trademark Office do act as gatekeepers. You can search for trademark names and registrations on line at www.uspto.gov. One of the benefits of trademark registration is the right to use the ‘r in a circle’ symbol. Without a registration you may not use the ‘r in a circle’ symbol, although you can put the two letters TM or the letters SM to show you intend to have a trademark. But in order to put the, ‘r in a circle,’ you have to have the certificate from the government saying that you’re a registered trademark. The registration process takes from a year to 18 months to get a registered trademark. But once you have it, you have what’s called a prima facie case that the mark is protectible and that you have the exclusive right to use it in connection with your goods or services. After the Berne Convention, there is no requirement for a copyright notice in order to have copyright protection in the U.S. But by doing so, it informs the world you are making your claim to copyright and tells subsequent users there’s a copyright owner out there!”
Ralph Sutton offers steps to take on counterfeiting:
“You need to think long and hard about going to court to protect your rights. Litigation is a tool, not an end in itself. It is a tool to achieve a business goal. If counterfeiting is severe – seriously eroding the goodwill and company’s trademarks or copyrights, or threatens the company’s core business, its licensees or poses a safety threat – for any of these reasons you have to think hard about ignoring it.
There are five basic goals of an anti-counterfeiting program. You may want to stop the bulk of the infringement or make sure the goodwill in your copyrights and trademarks is secure. Deterrence is a separate goal. You want to recover the costs of the program by settling or getting judgments that are enforceable.
You will need to know how big or serious the counterfeiting problem is. Who is stealing from you? What is an acceptable result for you and what are you prepared to do? Who is stealing from you is a key question. We do Dunn & Bradstreet reports to ascertain what type of infringer you are dealing with. We can also hire investigators, do asset searches and find out if they have deep pockets or if they are ‘fly-by-nights’ you have to squash like bugs!
Oftentimes a very clear case of infringement can be stopped at the outset with a temporary restraining order – a preliminary injunction and the case will either go away or you can get a quick settlement. There are a number of options including civil action, cease and desist letters, settlement packages, and a possible asset freeze. If you know the defendant has considerable assets traceable to infringing conduct, you can get an asset freeze that will lock up their bank accounts, assets and real property. It’s an incredibly effective tool for inducing infringers to settle the case in your favor.
If you are being knocked off from a company located in a foreign country, there is a program at the Customs Department in the U.S. where you can record your registered copyrights at the Customs Office and they will cooperate with anti-importation activities. Enforcement actions are very doable by working with local law firms who know the procedure.
Cybersquatting is an increasingly serious problem. You can have a registered mark or a mark that is unregistered but is yours, and nevertheless find that somebody has used that mark in a domain name to divert traffic on the Internet to his or her site and away from yours. The Anti-Cybersquatting Protection Act, a federal statute, allows you to capture their domain name in court or in private arbitration.”