UPDATE 05/07/18: Reports that Amazon is advising publishers of takedown notices are circulating online. Please note that there are TWO KINDS of takedown notice Amazon can get, and then advise sellers of. The first is a copyright takedown, often referred to as a DMCA Notice (though there are other kinds.) The second is a trademark takedown, often referred to as a Brand Registry takedown (though there are other kinds.) THEY ARE NOT THE SAME. Sending a DMCA counter-notice in response to a trademark takedown will be ineffective. Brand Registry notices can be very difficult to deal with. I recommend anyone who wants to fight one retain an experienced trademark attorney.
FLASH UPDATE: Retired IP litigator and author Kevin Kneupper has filed a Petition for Cancellation of the “COCKY” standard character mark. Link to his filing here: https://twitter.com/kneupperwriter/status/993359859071381505. The petition will now be considered in due course by the Trademark Office. We should not expect to hear anything for a few weeks, and the matter could take months to resolve. But in the meantime the registration stands and the risks remain.
Please Note: As I type, this appears to be a developing situation. The trademark in question was registered literally only three days ago. I have not seen any of the C&D letters people are alleging are going out. Nothing in this post should be taken as legal advice or even as verified fact. This is for general education only.
Also please note that the Romance Writers of America, an industry group, is allegedly also looking into this matter. They will probably provide a centralized response. Author Liliana Hart reports that the RWA requests that people who are contacted by Ms. Hopkins or her attorneys contact Carol Ritter of the RWA at this email: firstname.lastname@example.org
If you get a cease and desist letter or any other form of legal communication, you may find my “HELP, I JUST GOT A LEGAL THING!” post useful. Click here to read it.
UPDATE: I did not see that the publisher had two trademark registrations, one for the standard character mark, and one for the stylized mark. Post edited accordingly.
Now on with the post.
This evening I started seeing tweets like this one:
There's a romance author, Faleena Hopkins, who is sending takedown notices to other romance authors because she thinks she has a trademark on the word "Cocky." Which she doesn't have, but is hoping her threats make people change their titles.
— Christopher Sebela (@xtop) May 5, 2018
So on March 28, 2018, the Ninth Circuit Court of Appeals issued this opinion:
It has been all over the Interwebs, but there’s a lot of misunderstanding going on. I happen to have not only some experience in gaming law, but experience in dealing with the particular statute in question, Wash. Rev. Code § 9.46.0237, the “unlawful gambling” law in the state of Washington. From experience, I can tell you that it is one of the broadest gambling laws in the country. The Ninth Circuit takes special note of this, especially when it finds citations to decisions on the law of other states unpersuasive.
So, in no particular order, some observations and clarifications:
- This case was originally brought in a Federal District Court. While there are Federal gambling laws, most cases of actual interpersonal acts that might be gambling are subject to state laws. There’s not really a Federal law that governs acts of gambling in a general manner. The case was brought in Federal court because it is a class action against Churchill Downs, which is a corporation resident in Kentucky, and the class, with the representative plaintiff being Ms. Cheryl Kater, a resident of Washington. This is allowed because of what is called “diversity” jurisdiction: people who live in different states can bring suit in Federal courts because it’s viewed as fairer for both parties to have diverse lawsuits brought in a Federal court under a single Federal civil procedure and with a hopefully less biased court.
- But, as I said, there are no Federal gambling laws that apply: the plaintiff is suing under a state gambling law. Federal courts hear cases under state law all the time. The reason Washington’s law applies is that the alleged gambling took place, at least in part, in Washington (where Ms. Kater’s device was) and by offering the service to her in that state, Churchill Downs may have made itself subject to the laws of her state. (That’s a whole separate discussion which I will not get into.)
- Now that we know how she got there, here’s what Ms. Kater is claiming:a) Washington’s state gambling law says that people who take money to provide illegal gambling services aren’t allowed to keep it: the person who gave it to them can sue in civil court to get it back.
b) Under Washington law, the game Churchill Downs, under the name of software publisher Big Fish Casino, was illegal gambling.
c) Ms. Kater gave Big Fish Casino a lot of money (at least a thousand dollars) to play in Big Fish Casino. Other people in the class likewise paid money to play at the casino and it was gambling too.
d) Therefore, she and all other similarly situated members of the class (people in Washington who played in the casino and paid money to do so) should get their money back.
Whew! Let’s unpack that a little bit.
As far as “people can get their money back if they lost it gambling illegally,” that is actually a pretty common rule. You may like it, you may not think it makes any sense. But it is what it is and I’m not going to discuss that other than to say that that’s the rule here and in many other places.
As far as “she gave them a lot of money to play,” you can have whatever opinion you want as to what that says about her intelligence, impulse control, etc. I will say that these games are designed by psychologists to be pure dopamine generators. I doubt many people reading this aren’t familiar with being sucked into a game: imagine that feeling, only with actual SCIENCE! applied to trying to generate it. I think regulated gaming should be legal for informed adults, but I am not blind to this kind of thing.
But now we get to the heart of the matter: was this game unlawful gambling? You may know, especially if you read my blog, that the crime of gambling usually consists of three elements: consideration (which is your stake, your wager, the thing you put at risk to play,) chance (the outcome of the play has to be outside your control in some way, usually by way of a random event,) and prize (you have to be able to win something of value.) We definitely have consideration: while you can initially get play points by various unpaid means, you eventually have to buy them, and you can’t play if you don’t have play points. We likewise have chance: the games she played are literally video slot games which use a random number generator to determine whether the player wins any particular game played.
But do we have a prize? Is there a thing of value?
NOW PAY ATTENTION BECAUSE I’VE BEEN TRYING TO WARN YOU PEOPLE AND NOBODY WANTS TO LISTEN.
Here is the definition of “thing of value” under Washington law:
[A]ny money or property, any token, object or article exchangeable for money or property, or any form of credit or promise, directly or indirectly, contemplating transfer of money or property or of any interest therein, or involving extension of a service, entertainment or a privilege of playing at a game or scheme without charge. Wash. Rev. Code § 9.46.0285
It doesn’t limit “things of value” to money or things that can be exchanged for money. While allegedly there was a black market for play points that involved using external payments for play points to then be exchanged in-game (with a cut for Big Fish, which does NOT look good) the lower court specifically said that that was a violation of the TOS and it wasn’t relevant anyway. Because play points are the embodiment of a privilege of playing at a game or scheme without charge.
This, by the way, is a historical artifact related to pinball machines and “clear” or “reset” switches. Back in the olden days, if you won free credits on a pinball machine, the bartender could hit the reset switch and clear the credits, and pay you what they were worth. This was considered gambling under the anti-pinball moral panic of the day, so it was made illegal in many jurisdictions. Whether or not a game has a reset switch is often crucial to determining whether it is an unlawful gambling device or a lawful entertainment device.
But I digress.
The point is, prizes, or things of value, are what the law says they are, not what you think they are. This varies by jurisdiction and it is incredibly complicated. If you want to make a game that arguably has the three elements of gambling *cough*lootboxes*cough* but defend yourself from possible charges of gambling by claiming your “prizes” are not “things of value,” you are walking on very thin ice. When I was advising an international gaming company, I had a binder several inches thick that contained gambling statutes and expert legal analysis of what those statutes meant. It had to be updated constantly. And there were some jurisdictions where certain features were available and other jurisdictions where they were not. Keeping track of that is part of the process, and cost, of doing business for an international gaming company.
If you are not willing and/or able to adopt that process, or assume that cost, you have no business operating in this field. Especially since the more casual/entertainment gaming sphere’s use of some of these principles *cough*lootboxes*cough* is starting to show up on the radar of legislators and gaming commissions. I expect significant change in the regulatory environment in the near to medium term: the only way you, as a developer, have any chance of staying out of trouble is to get good legal counsel. Or, alternatively, don’t offer products that include these kind of features.
As always, questions are welcome in the comments or on my Twitter @legalinspire. Thanks for reading!
As ever and always: I am a lawyer, but I am (probably) not your lawyer, and this is not legal advice. This is a developing and complex area of the law. Do not, I repeat DO NOT, rely on anything in this post when making legal decisions. If you have a legal question, retain a lawyer licensed in your jurisdiction and familiar with the relevant law to help you.
If someone posts content online, and you want to incorporate it into your own online work, you have three options:
- You can link to it, like this: EFF Tweet on Goldman v. Breitbart or like this: https://twitter.com/EFF/status/964336727572779009 . The link can be active (the first one) or inactive (the second one, which you have to copy and paste or retype into your browser address bar.)
- You can copy/paste, retype, screencap, or some other way copy the content and repost it on your own server, such as a blog host server. Like this:
- You can embed the content in your own post, such that when people read your post (like this blog post) there is a line of code that tells their browser, “go to the original creator’s site and get this content, and display it as part of my post.” Like this:
Have you ever embedded someone else’s tweet on your website? A judge just said that you could be liable for copyright infringement. https://t.co/Lgw3rTI55O
— EFF (@EFF) February 16, 2018
Now obviously when you use someone else’s content, you open yourself to accusations of copyright infringement. And since the basic definitions of what constitutes copyright infringement in US law were set forth in a law passed in 1976, the law doesn’t always reflect modern technology or understanding of that technology. So people of good will can differ on these questions.
Look at the examples in #2 and #3 above. Ask yourself these questions:
- Do you see a significant difference? (Other than size.)
- More importantly, is there any significant difference in the visual experience they provide or the information you absorb when you look at one versus looking at the other?
- If you saw them in a news article or a blog post, would you be able to tell which sort of method was used to include the content without investigating further?
- Finally, do you see a significant difference between the examples in #1 and the examples in #2 and #3?
I think most people, answering honestly, would say that the answers are 1) no, 2) no, 3) no, and 4) yes. And therein lies the problem. We have extensive court precedent that says that #1 is not copyright infringement even though it provides information on where to access copyrighted content. This is true even if the person who is hosting the content may be infringing the copyright, and even if the person who posted the link knows the person who is hosting the content may be infringing the copyright. Because a link is not content. You could argue that it’s not fair that the link-poster benefits from the secondhand use of the content, but it’s entirely rational to say that the link is not the work and so there is a discontinuity that separates posting the link from posting the work.
(Edited to Add: Claiming that linking and embedding are the same thing, to paraphrase something I said on Twitter, is like claiming that a book with a picture of the Mona Lisa in it and a piece of paper with a list of written directions on how to go to the location in the library where it is shelved are the same thing. The map is not the territory. But a picture of the map is, for purposes of copyright, the map.)
The question of whether #2 and #3 are copyright infringement has been litigated, but we have only one significant, on-point court of appeals case on the question, in which the Ninth Circuit Court of Appeals found that #2 is, and created the (for once) desciptively-named “Server Test.” Specifically, if the content is hosted on your server, you may be infringing copyright. If it is not, you probably aren’t. This has the benefits of being simple, straightforward, and very easy to determine. (Though obviously as always there are edge cases.)
The Copyright Act gives copyright holders five fundamental rights:
- The Right of Reproduction – the right to make copies of the work.
- The Right of Adaptation – the right to adapt the work to other uses (i.e. to make “derivative works.”)
- The Right of Publication – the right to distribute copies of the work to the public.
- The Right of Performance – the right to perform the work in public, in a fashion which does not create or distribute copies.
- The Right of Display – the right to make a copy of the work available to the public without distributing it, copying, or performing it.
As the Ninth Circuit is very influential in technology jurisprudence (it’s the circuit that includes California/Silicon Valley) and copyright litigation is SUPER expensive, up until now many people had sort of gone along with the idea that the Server Test was cool because hey, if you didn’t put it on your server, you didn’t create a copy, and it says “copy” right there in the name of the right, right? (I am not as ashamed as I should be of that sentence.) And as displaying a web page causes the user’s web browser to download and create a local copy of the content of the page, obviously it wouldn’t make sense to claim that such a transient “copy” was offensive in the eyes of the law. And it was good. Or, at least, most people had better things to worry about.
Then this case came down: Goldman v. Breitbart.
The judge in this case, whose court is not in the Ninth Circuit and therefore is not bound to follow the Ninth Circuit Court of Appeals’ decisions as a matter of law, found the reasoning behind the Server Test unpersuasive when it came to embedding (the #3 example of reposting types from way up at the top there) because of the fifth right – the right to display.
Her logic – and you should read the case for yourself, it is in my opinion technically accurate and logically and legally sound – is that while we may have to let the local user create a temporary copy to view a web page, that doesn’t give the creators of web pages an automatic out. In other words, “because Twitter” is not a defense to a claim of copyright infringement recognized by the Copyright Act.
The Copyright Act – and I’m not going to go into detail on this because the opinion does a great job – in its plain language, history and purpose, was designed to anticipate that new technologies would become available and that ultimately, absent a Fair Use defense, the purpose of copyright is to protect the rights of the creators of content. If there is no practical difference, regarding the rights of the user and the ultimate effect of #2 versus #3, then there is no legal difference. If #2 is copyright infringement, the judge’s logic goes, so is #3.
So according to the judge in Goldman, the answer to our headline question is “No.” (Trick question: if a headline asks a question, the answer is usually no.) Does that mean you can’t embed tweets without fear of the Copyright Police knocking down your door in the dead of night and carrying you off to work in the Associated Press’s content mines forever? Also no. First of all, there are no Copyright Police. (Though that might be interesting.) Secondly, all this decision does is make clear, as I said, that “because Twitter” is not a legal defense to copyright infringement. All of the other defenses to copyright infringement, including Fair Use *shudder* and factors which make a use non-infringing in the first place, remain viable and in full force and effect.
Given that, what is the impact of this decision on media creators, up to and including your humble blogger? (Assuming that this travesty of a case isn’t immediately overturned on appeal as many in the industry righteously assure me it will be, that is?)
Simple. Don’t try to use “because Twitter” as a rationalization for reposting content you wouldn’t have reposted if it weren’t on Twitter. Or Instagram, or Tumblr, or whatever. If you want to cite a tweet or other analgous post, but are’t sure you should repost the associated media, copy/paste and attribute the text. If somebody posts a picture on Twitter, et cetera, and you want to repost it, ask for permission. Same for any other content you could embed in such a way that a reasonable person couldn’t tell if it were embedded or directly included in your own content. In other words, stop thinking the Internet is different. It isn’t.
Note: that doesn’t go for retweeting or quote-tweeting on Twitter itself, as Twitter’s terms of service require users to allow other users to retweet and quote-tweet original tweets. This is, by and large, true of other analogous services like Instagram and Tumblr, but your mileage may vary.
As always, thank you for reading. Questions are welcome in the comments or on my Twitter feed.
Most People Are Fuzzy On IP: An Intellectual Property Primer
Written as a guest post for Lawyers and Liquor, hosted by the inimitable Boozy Barrister. If you have comments, please consider posting them on the original post, here: http://www.lawyersandliquor.com/2018/01/guest-post-most-people-are-fuzzy-on-ip-an-intellectual-property-primer/
I’m Marc Whipple, an intellectual property attorney. I blog at Legal Inspiration and you can find me on Twitter as LegalInspire. I’m licensed to practice law in the state of Illinois and I am a registered patent attorney, which means I can appear before the United States Patent and Trademark Office on behalf of inventors wishing to file patent applications. I’ve been practicing law for over twenty years and I like to think I’m starting to get the hang of it. That said, I am a lawyer, but I am not your lawyer. Nothing in this post constitutes legal advice. Questions in the comments (or by other means) are welcome but like any lawyer I will not give specific legal advice to people who are not my clients. Okay? Okay.
The gracious host of Lawyers and Liquor asked me if I could walk his readers through the basics of “intellectual property” law, which is, in general, the law of patents, copyrights, and trademarks. These matters are relevant to, well, pretty much everything you do, especially if you’re part of this Internet thing. And most people are a little fuzzy on them. But fear not! I am an expert on fuzzy subjects. In fact, my first patent was for a fuzzy subject. (I am completely serious: https://patents.google.com/patent/US5735521A/en.) So let’s see if we can keep this from turning into a complete furball, shall we?
First of all, if you want to see some fancy-schmancy PowerPoint presentations on the topic, you can look at this post on my blog. If you prefer your information imparted by helpful robots, you can look at this one. But for now let’s just hit the basics.
First: Intellectual property, unlike real property (i.e. land) or personal property (e.g. your computer) consists of a bundle of rights which are not tied to any physical object. They can control what you can and can’t do with physical objects, but they are independent of the objects. So if you have a drawing that you had somebody else make for you, what you have is a drawing. The copyright in that drawing does not necessarily belong to you, even if it’s the only copy, even if you paid the artist to draw it, even if you told them what to draw. The same is true of patentable inventions, etc. I know this is a strange idea, but please remember it. (If strange ideas bother you, I’m not sure how you ended up here in the first place, but that’s not important now.) Furthermore these rights are all negative. That is, all intellectual property rights do is give the holder the right to tell someone else they can’t do something. They do not give anybody the right, or the obligation, to do anything.
Second: For practical purposes, the three main types of intellectual property (patents, copyrights, trademarks) have nothing to do with each other. A trademark is not a copyright is not a patent. If a particular product is patented, contains copyrighted subject matter, and is sold in association with a trademark, the patent, the copyright, and the trademark could all be owned by different people or entities. Or there could be multiple patents, copyrights, and trademarks associated with any given product, all owned by different people. This gets complicated fast. So never assume that because you (think) you know something about a copyright associated with something, that you know anything about its trademark status, etc.
Third: For the most part, intellectual property does not cross national boundaries. A US patent cannot be enforced in China, a Canadian trademark cannot be enforced in Mexico. HOWEVER, he said in bold italic underlined all-caps, in many cases is not difficult to use intellectual property valid in one country to obtain similar rights in another country. And if you are infringing in such a way that people from a country where the the rights are valid are harmed, you may be reached by the holder of the rights even if you are not in such a country. Here there be monsters.
Okay, now that that’s clear (Ha!) let’s talk about three different kinds of intellectual property, or “IP” for short (insert Bart Simpson phone call joke here.)
A patent is the exclusive right to practice an invention. An invention is a novel and unobvious improvement upon the prior art in the field of the invention. In the US, any “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” is patentable, and can be protected by what is called a “utility patent.” (Most other countries have similar legal provisions.) The other kinds of patents are “design patents,” about which more later, and “plant patents,” regarding which deponent sayeth not. Unless otherwise specified, “patent” usually means “utility patent.”
The important thing about patents is that to get one, your invention must be novel and not obvious. Novel just means that no substantially similar machine, etc, can already be known to the public. You can’t patent something we already know about. The reason for this is that a patent is essentially a reward from society: the fundamental principle is, “Teach us how to do something we didn’t know how to do before, and we will give you a monopoly on it for a limited time.” There’s no benefit to society from telling us how to do something if we already know how to do it, so no patent for you.
“Obvious” is a word that just doesn’t mean the same thing to a patent lawyer that it does to a normal person. It does NOT mean that your invention isn’t clever, or that it wasn’t hard to come up with, or that it’s not a a huge improvement on the way things are usually done. The best way I know of to explain when something is “obvious” for patent purposes is to put it like this: If a person of ordinary skill in the relevant art knew every relevant public reference in the history of the world, would it be trivial for them to combine some of those references and arrive at your invention? If so, it’s obvious. If it’s obvious, we already know how to do it. No patent for you.
Once you obtain a patent, which is an expensive, complex and perilous journey, as I said you have the exclusive right to practice it. Which means that anybody else who does practice it is infringing your patent and you can sue them for damages and get an order from a court to make them stop. It doesn’t mean you have to practice it: you can stash it under your bed for the patent’s twenty-year term if you want.
It also doesn’t mean you have to stop others from practicing it. If you want you can release it into the public domain. You can simply ignore infringers. Whatevs. Many companies and organizations stockpile what are called “defensive patents,” which are patents they don’t intend to enforce, but obtained simply to keep others from doing so and/or so that they would have ammunition for a counter-suit if they themselves were sued for infringing similar patents.
Similarly, there are no Patent Police. (Nor Copyright Police, nor Trademark Police.) The only person who can do anything about patent infringement is the patent holder. This is an important IP general principle: if the holder of the IP doesn’t know about an infringement, or doesn’t care to do anything about it, that’s that. That might not be smart (especially for trademarks, see below) but it is absolutely and always the case. (Except for consumer protection matters, which are outside the scope of this post.)
I should also say two words about design patents, which are weird hybrids of copyright and patent. If you want more details, you can read this post. But in general, a design patent is a patent on the ornamental design of a useful object. For instance, one could obtain a design patent on the unique design of a costume, even if one couldn’t patent the costume itself because we all know about costumes already, buster. Anybody who wants to make a costume can still make a costume, but that can’t make THAT costume during the design patent’s fifteen year term because of course they have different terms from regular patents. They still have to be novel and non-obvious, kinda sorta, but it’s much easier and cheaper to get them.
A copyright is the exclusive right to distribute and use original creative works. Again, these are essentially rewards from society: “Publish your art so that we can benefit from it, and in exchange we will give you a monopoly on it for a limited time.” The bar for getting a copyright is much lower than the one for patents: the work must simply be original. In the US and most other countries, copyright attaches to a work as soon as it is reduced to “tangible form.” This includes bits on a hard drive, by the way. The US is somewhat unusual in that to actually enforce a copyright, the copyright has to be registered with the US Copyright Office, which is part of the Library of Congress, because of course it is. But the copyright itself exists the moment the work is created.
Unlike patents, it is entirely possible for multiple people to have copyrights in substantially similar works so long as they didn’t copy them. (This is called “parallel development” or “independent re-creation.”) So if I draw a picture of a badger, and you draw a picture of a badger, even if they’re nearly identical we both have good copyrights as long as I can’t prove you copied my picture.
Once you have a copyright, you have the exclusive right to use, publish, copy, and distribute the copyrighted work. This includes making derivative works (works based on or incorporating the copyrighted work) which are not transformative enough to qualify as new and independent works. Once you sell an authorized copy, under most circumstances a legal principle called the First Sale Doctrine means that you can’t control what the rightful owner does with the physical copy they lawfully possess. However, it doesn’t mean they can create new derivative works with it, unless that was part of the license when you sold the copy. (Spoiler: It probably wasn’t.)
Unlike patents (mostly) there are circumstances where other people are allowed to use your copyrighted works even without your permission. The most common and most often misunderstood of these is the Fair Use Defense. Before I even get into what makes a Fair Use Defense, I want you to notice that last word, defense. When you allege a Fair Use, what you are doing is saying, “Yes, I did infringe your copyright, but it’s a Fair Use so I’m allowed.” In other words, you are admitting that you infringed. This is fraught with peril. If your Fair Use Defense fails, you are screwed. This is not a good position to be in. So please consider this before using something just because you think you have a Fair Use Defense.
If you want the details of Fair Use, you can read this post. In summary, there are four factors, plus the Zeroth Factor, which determine whether a use is a Fair Use. They have to do with the relative harm the use does to the copyright holder’s rights and how strong they were in the first place. If you don’t want to read the linked post, please at least remember this: “I didn’t charge,” and “I gave them credit” do not constitute a Fair Use. Period.
Trademarks are things which function to indicate the source of a good or service in the marketplace. In a sense, trademarks are more about consumer protection than they are about the rights of the individual mark holders. Unlike patents and copyrights, trademark rights are related to the way other people see the property: if the market associates your mark with your goods and services, you can exclude others from using confusingly similar marks in association with similar goods and services. If it doesn’t, you can’t. Even the term is different: patents and copyrights have limited terms (on the order of 20 years for patents, and on the order of 100 years for copyrights.) Trademarks remain effective as long as the holder uses them and they maintain their association in the mind of the marketplace: when either of those things stops, so does the term of the trademark. (Although not RIGHT THAT INSTANT.)
Trademarks are usually words, short phrases, or logos, but anything which can reasonably form an association with a good or service can be a trademark, including a color, a series of musical notes, or possibly even a scent. As long as the association can be shown, it can be argued that a trademark exists.
It should also be noted that consumers don’t have to know what the ultimate source of the goods and services are, only that the mark indicates a consistent source. “Budweiser” brand beer is brewed by Anheuser-Busch InBev SA/NV, a Belgian transnational beverage and brewing company. Anybody who drinks beer knows what Budweiser beer is like. Some of them may know it’s brewed by a company called something like “Anheuser-Busch.” Very few of them probably know it’s brewed by a giant Belgian conglomerate, especially since they try so hard to play up its American origins. Doesn’t matter. So long as people can reasonably rely on getting the same beer-sperience every time they drink a beer labeled “Budweiser,” “Budweiser” is the trademark for that beer.
As is probably obvious, trademarks are infringed when someone uses the trademark, or something confusingly similar to it, to market similar goods and services. There is a concept called “dilution,” “blurring,” or “tarnishment” that can make this a little muddy: the holders of famous marks can sometimes argue that use of the marks even for different goods and services would be unfair to consumers and/or diminish the value of the brand. Anheuser-Busch InBev doesn’t make cars (that I know of,) yet if you tried to sell Budweiser brand automobiles, they might have something to say about it. And even if they didn’t win, they could make you ring up enough legal fees to make you sorry you tried. So don’t do that.
Other than famous marks, the only time you have to worry about infringing trademarks is if you could cause confusion in the marketplace. So if you make it reasonably clear that your use is not associated with the brand, you’re fine. Of course that sounds simple in theory but in practice arguments about what constitutes a likelihood of confusion have put a whole lot of lawyer’s kids through college. If you have questions about what constitutes a non-confusing use, you should ask a trademark attorney.
Trademark holders are notoriously vicious about protecting the value of their marks: that’s because, as we learned earlier, they only have value if the association is maintained. So they will often react very aggressively to even the possibility that someone is infringing their marks in a way that might weaken them. Losing an association is called “genericization,” and it is the death of trademarks. When a term becomes generic for a type of good or service, it can’t be a trademark. For example, “xeroxing” becoming the generic term for photocopying. If the public associates “xerox” with all photocopiers, Xerox Corporation can’t claim a unique association with their photocopiers.
For the same reason, you can’t register generic words as trademarks in the first place: allowing you the exclusive use of the word “egg” to sell eggs would unfairly disadvantage all other competitors, so you can’t claim a trademark for Egg brand eggs. There is a whole continuum of trademark strength from “generic,” which can’t be used, to “descriptive,” to “suggestive,” to “fanciful,” to “arbitrary.” The further down that list you are, the stronger your mark.
4) Trade Secrets, Et Cetera
Frankly, trade secrets are beyond the scope of this post, but they are often referred to as a fourth main type of IP, so I thought I’d mention them. Trade Secrets are just that – secrets that are valuable in trade. In other words, if information provides a competitive advantage if and only if it is kept secret, it could be a trade secret and therefore protectable by law. Disclosing trade secrets when you have an obligation not to do it can get you sued and, in extreme cases, arrested. The purpose of non-disclosure agreements, commercially, is to protect trade secrets. Once a trade secret is disclosed, it becomes worthless, at least legally.
This is why you can never, EVER have a trade secret that is protected by patent, copyright, or trademark: you have to disclose inventions and artistic works to get a patent or a copyright, and if the public doesn’t know about your mark, it can’t be a trademark because no association can possibly form. Trade secrets can be used to protect the way you make products associated with trademarks: the best example is the “Eleven Herbs and Spices” which go into Kentucky Fried Chicken’s original recipe. If nobody knows how it’s made, the making process is a trade secret even if everybody knows about the end result.
There are other legal concepts which might be bundled under “IP law,” for instance “trade dress,” which is related to, but not the same as, a trademark. Or “Moral Rights,” which are mainly important in Europe and other places full of Commies, but which have rough equivalents in US law. But these are the basics. I hope you found this post helpful (or at least interesting.) Questions are welcome either in the comments, on Twitter, or by email.
Thanks for reading!
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