Q3 • 2023


INSIGHTS Q: What should be copyrighted?


Copyrights protect all sorts of creative works, which, in the marketing world, often come about in the context of music, graphics or drawings (logos, unique typefaces, characters, etc.), audiovisual works (videos, animations, etc.), and original writings (scripts, articles, books, etc.). A creator technically needs to do


nothing other than create to have some copyright protection over their work. That said, registering a copyright can be done for relatively little cost and provides many benefits, such as the following:  A registration is a public record of your copyright ownership. It serves as evidence that you are the original creator or owner of the work and establishes a clear date of creation.


 You can file for copyright infringement in federal court. Without registration, your options for legal recourse may be limited. Registration also allows you to seek more kinds of remedies in a copyright lawsuit, such as statutory damages and attorney’s fees.


 Registration allows you to take advantage of the Digital Millennium Copyright Act (DMCA) provisions, which can help you combat online copyright infringement through means such as requesting takedowns of infringing content from online service providers.


 A registered copyright makes it easier to license and transfer your rights to others. It adds credibility and value to your work when negotiating contracts or entering into licensing agreements.


Music, movies, books, and magazines are almost always registered with the US Copyright Office. Visual art, photographs, short articles, and websites are less likely to be registered.


Q: Will a trademark include specifi c images, colors, and words (if they are part of our company logo)?


A trademark registration applicant has a choice whether they want to claim color as


NEWS | REVIEWS | IDEAS | OPINION |


part of their trademark or not. By not claiming color in a trademark application, the protection becomes broader, allowing flexibility to use the mark in various colors and adaptations without limiting its scope and enforceability. However, including a color claim may be necessary to ensure a trademark is sufficiently unique and distinguishable to warrant protection. When it comes to words, invented words


and arbitrary words tend to have the strongest trademark protections, while generic words cannot be protected. In the middle are descriptive words—which usually cannot be trademarked unless they gain distinctiveness through many years of use—and suggestive words (such as Coppertone), which are harder to protect. Therefore, it’s best to choose words that are invented or arbitrary to obtain stronger trademark protections. For example, Pepsi for soda or Exxon for gasoline are invented words. Arbitrary word examples include Ford for cars, Domino’s for pizza, and Target for


retail shopping. None of those brand names describe or suggest what they are selling, so they get stronger trademark protections.


Q: What is the process to “claim” rights to any intellectual property our brand may want to trademark or copyright? Would it be a local fi ling? State fi ling?


Federal fi ling?


Publicity right infringement claims are a matter of state law and, therefore, usually brought in state court. Federal courts have jurisdiction over copyright infringement claims. Trademark claims can usually be brought in either state or federal court, depending on whether it is registered with the US Patent and Trademark Office, among other factors. Contract law and parties’ locations can also impact what courts have jurisdiction. Please consult your attorney about where you may or may not be able to file a lawsuit depending on the specific facts and circumstances of your case.


FINAL THOUGHTS FROM Alina & David


Ask your attorney to conduct a trademark search or copyright search before investing too much time and money into a name, logo, or other creative work.


Talk to your attorney about getting strong licensing agreements, work-for-hire agreements, and publicity releases to help ensure your agencies and brands have the legal rights necessary for your marketing campaigns.


Remember that there are federal and state laws that apply to marketing claims, discount off ers, BOGO off ers, sweepstakes, contests, rewards programs, and loyalty programs! Lawsuits can be in the millions of dollars. It’s important to work closely with a marketing attorney like us to help ensure your marketing campaigns and marketing practices comply with federal and state laws and are not considered “unfair” or “deceptive.” Go to YourAdAttorney.com and connect with Alina Lee, Founding Partner, on LinkedIn to learn more.


The information provided in this interview/article does not, and is not intended to, constitute legal advice; instead, all information, content, and any materials or websites referenced are for general informational purposes only. Readers of this article should contact their attorney to obtain advice with respect to any legal matter.


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