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Copyright Law

Trademark Symbols and When to Use Them

Trademark Symbols and When to Use Them

Sophi Robbins

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Given their constant presence in our daily lives, the symbols ® and ™ are very familiar to most of us. But what do they actually mean? And as a business owner, how do you know when to use them?

Both symbols refer to U.S. federal protection granted to the logo or phrase. The United States Patent and Trademark Office catalogues all registrations and applications in its database and reviews the database for potentially confusing marks when processing new applications. Registering your mark through their office is the best way to defend your brand from competitors.

What does the ™ symbol mean?

The ™ symbol, when added to a logo or phrase, indicates an unregistered trademark. This could mean that the trademark owner has “common law” rights, established automatically by law simply by using the mark. Or it could mean that they have begun the federal registration process but have not completed it yet. Although there is more protection to be gained by registering with the USPTO, it is still wise to use the TM symbol to communicate the seriousness of your mark, that you consider this to be your intellectual property that others cannot use. Competitors are more likely to avoid infringement when they consider the mark your property.

When to use the ™ symbol?

Use the ™ symbol whenever you use your unregistered mark in public. Common uses are as a  superscript at the end of the word or subtly integrated into the logo. It is often tempting to hide it amidst the design, but it’s important to remember that it should be easily visible since its purpose is to communicate your ownership to competitors.

Two examples for use:

  1. You just started your new business selling Sally’s Seashells. You have not registered your mark, and you aren’t even sure you want to. You can still use Sally’s Seashells™.
  2. You decide that, yes, it’s a good investment to register the mark. You work with an attorney to file an application and learn that it will be several months before it completes the process. You may keep using TM until you achieve registration.

Although it’s rarer, you might have also seen the symbol SM in a similar situation. The use of  SM , standing for service mark, is used the same way as ™ , but exclusively on services. For example, if your company sold seashell cleaning services rather than actual seashells, you could use Sally’s Seashell CleaningSM.

What does ® mean?

The ® symbol refers to registered trademarks only. Do not display this symbol until you have achieved registration with the USPTO. Use without registration can result in the USPTO refusing to register your mark, in which case you’ve lost the protection that the USPTO could afford for your intellectual property.

When to use ®

Use ® whenever you use your registered mark in public. Use the same methods for integrating it into the phrase or logo as you would for ™.

Many companies submit multiple applications on the same mark in order to cover multiple kinds of goods or services. For example, McDonald’s has registrations for both “restaurant services” and “coffee drinks.” It may be important for you to differentiate use of ® if only certain goods or services are registered.

Two examples for use:

  1. Your registration for Sally’s Seashells is complete! You receive a certificate of registration from the USPTO and can now start using Sally’s Seashells® to establish your brand against competitors.
  2. You applied for registration for Sally’s Seashells to sell seashells, and also to sell t-shirts, which you plan to do later on when your fanbase grows. The registration went through for seashells, but it hasn’t yet for t-shirts because you’re not selling them yet. You can use ® on your website, on your seashells, and on advertising. But for your t-shirts, you must continue to use ™ .

Both ™ and ® are optional symbols, and only serve to benefit you by communicating ownership and protection. It can easily become cumbersome to include the symbols in every single instance of a mark, so the general recommendation is to use it in the “first and last” cases. For example, your website may include the symbols at the top of the page in the header, and at the bottom in the footer, but not on any of the references in between. Or in a lengthy document, you can use the symbol on the first page or title but leave it off throughout until you reach the last instance of use. This clearly communicates the protection of the mark without overbearing your materials.

Use of the symbols is a great tool for protecting your intellectual property – using them correctly can save you a headache with the USPTO. Reach out to us if you have any questions, we’re always available to kickstart your IP journey.

ABOUT THE AUTHOR

PARALEGAL & OFFICE ADMINISTRATOR

Sophi has a background in office management and small business management and has had the pleasure of seeing multiple small companies grow with her. Since graduating with a BA in Environmental Studies and Business Marketing, she has worked in both office jobs and the service industry, finding ways to learn new skills and gain responsibilities. She puts those skills to good use with her own small business, an etsy craft store. She is also a skilled barista and mixologist, and enjoys trivia games and baking (she usually doesn’t even use a recipe, thanks to her time managing a bakery).

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Copyright Law

Copyright Infringement at the 2022 Olympics Illustrates the Broad Scope of Potential Defenders

Copyright Infringement at the 2022 Olympics Illustrates the Broad Scope of Potential Defenders

Amanda Milgrom

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This case leads to an interesting, and important, question: Who can be liable for infringing the artists’ song? How can Heavy Young Heathens name so many companies as defendants in the lawsuit? Could they all be responsible for copyright infringement?

In the case above, both Ms. Knierim and Mr. Frazier will certainly be held liable if Heavy Young Heathens is successful in its lawsuit. But these Olympic athletes likely would not have sufficient assets to cover the judgment in the event of the artists’ success. Copyright owners can seek up to $150,000 per infringement, and direct infringers such as these athletes likely don’t have the assets – so what do the artists do? They look beyond direct liability, to those who might be liable for indirect liability. There are two types of indirect liability: contributory and/or vicarious infringement.

Contributory infringement occurs when someone knowingly induces, causes, or materially contributes to the copyright infringement. Vicarious infringement (frequently applied to employers) does not require knowledge, but instead only requires that the potentially infringing party has the right and ability to, or be in a position to, supervise the infringers and directly benefit financially from the infringement.

Contributory infringement is premised on one’s failure to stop its own actions, which in turn facilitated the third-party infringement. Vicarious infringement is premised in one’s failure to stop a third party from directly infringing. These third-party liabilities are highly fact specific, considering the role of the third party in the action.

Here, Comcast Corporation, NBCUniversal Media, LLC, Peacock, USA Network, and U.S. Figure Skating will all have to spend countless dollars to defend themselves from third-party liability. What are some ways that you can you prevent third party liability in your business?

  1. As an employer, make sure to educate your employees about how they can avoid infringing another’s copyright. For example, if your employee creates PowerPoint presentations or posts on your website or social media, let them know about websites where the images are available for use to the public, such as unsplash.com. The owners of these images have provided them for free use by the public for any purpose.
  1. When hiring a third-party vendor for your business, read the terms of use that vendor. This may be located on the contract or on their website. Consider pushing back on any language where the vendor requires you to indemnify them in the case that they commit copyright infringement.
  1. If you own a website, the Digital Millennium Copyright Act provides a safe harbor – if you remove the potentially-infringing material as soon as you are notified, then the safe harbor will protect you from liability.

If you have questions, or would like to speak to one of our intellectual property attorneys, please reach out to amanda.milgrom@milgromlaw.com or jon.milgrom@milgromlaw.com.

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Copyright Law

Important Legal Issues for Buyers and Sellers of NFTs

Important Legal Issues for Buyers and Sellers of NFTs

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WHAT ARE NFTS?

NFTs are the latest digital asset to have taken the world by storm. Similar to cryptocurrencies like Bitcoin or Ethereum, NFTs are recorded on a blockchain ledger to verify ownership. However, while a cryptocurrency’s tokens are interchangeable and indistinguishable, each NFT is a unique asset such as a particular document, image, or video.

POTENTIAL FOR INFRINGEMENT AND ENFORCEMENT

Those who buy and use or resell NFTs should be particularly aware of the potential for infringement. Generally, NFT marketplaces verify sellers to ensure authenticity, however, this does not eliminate the possibility that a NFT is infringing another’s intellectual property rights. As a result, buyers should always conduct their own due diligence.

Last July, Opensea, a leading marketplace for the resale of NFTs,  delisted a seller after receiving a Digital Millennium Copyright Act (“DMCA”) notice alleging infringement. The delisted seller, “CryptoPhunks” was parodying NFTs created by, “CryptoPunks”, a very well-known seller who submitted the DMCA notice. Reactions to the CryptoPhunks delisting were mixed with many accusing the platform of censorship. What many critics may not realize is that Opensea was protecting not only themselves but potential purchasers of CryptoPhunks NFTs.

Under Section 504 of the Copyright Act, any person who sells an infringing work can be liable for statutory damages between $750 and $30,000 per infringement. This applies whether or not the seller knew that they were selling infringing material. With this, CryptoPunks would have been able to bring a claim against any person who bought and resold a NFT from CryptoPhunks based on alleged infringement.

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When deciding whether to purchase NFTs, all potential buyers should consider the possibility of infringement and the potential for personal liability . Some risky parodies may provide resale value —and a good laugh—but ultimately will not be worth the headache of defending an enforcement action.

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Copyright Law

Tattoos, Copyright Law, and the Doctrine of Fair Use

Tattoos, Copyright Law, and the Doctrine of Fair Use

Milgrom Team

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The murmuring conversation surrounding tattoos as copyrightable art is growing increasingly loud. Tattoos, once stereotyped as a heart surrounding “mom” on a nostalgic sailor’s shoulder, are now coveted artworks which can shape an individual’s identity and how one is seen by the world. Would Mike Tyson’s persona be the same without the face tattoo surrounding his left eye? And, speaking of face tattoos, would we recognize Post Malone without the sixty-plus tattoos on his face?

The subject of “famous” tattoos—those that adorn celebrities—and their re-creation in instances where the celebrities are depicted, has become controversial. The tattoos are inextricably linked to how we perceive celebrities themselves. As such, the many re-creations of celebrities in cartoons, drawings, SNL skits, video games, and even Coachella holograms feature the famous person with tattoos identical to those the person has in real life—sometimes to the chagrin of tattoo artists.

Some tattoo artists are taking legal action by claiming copyright infringement and seeking damages for the un-permitted re-creation of their art on imitations of celebrities. This brings to the surface several legal questions: (1) Is a tattoo on a famous person entitled to copyright protection enforceable by the tattoo artist? and (2) Does depicting a celebrity with tattoos fall under the doctrine of Fair Use?

1. Copyright Protection

Under Section 102 of the Copyright Act, copyright protection begins at the moment of creation for (1) original works of authorship (2) fixed in any tangible medium of expression from which they can be (3) perceived, reproduced, or otherwise communicated.

Under this statute, tattoos are copyrightable works. Tattoos certainly fall under original works of authorship, specifically pictorial works. And, as my grandmother will tell you, tattoos are permanent marks on a body and therefore “fixed” in a tangible medium. Depending on the subject’s decision of where to place the tattoo, a tattoo is also perceivable to the public. Thus, tattoos are entitled to copyright protection and all the rights connected thereto. Under copyright law, the tattoo artist is able to protect his/her/their art (even if it is on someone else’s body) and to prevent others from using or copying it without the artist’s permission.

2. The Doctrine of Fair Use

What if the tattoo is publicly decorating Scarlett Johansson’s shoulders—or any other famous person’s shoulders? Can tattoo artists enforce their copyrights for the re-creation of a celebrity with their tattoos?

Tattoo artists can protect their copyrights, with one caveat (and a very amorphous caveat at that): the doctrine of Fair Use under Copyright Law. Under Fair Use, it is permissible to use another’s copyrightable work without the original author’s permission but only under certain circumstances, such as criticism, comment, news reporting, teaching, parody, scholarship, and research.

Fair Use is a notoriously gray area of law, and courts have landed on four factors for evaluating a question of Fair Use:

  1. The purpose and character of the use: Courts consider whether the use is for commercial or nonprofit purposes and whether the use is “transformative,” meaning that it adds something new, with a further purpose or different character than the original work’s purpose.
  2. The nature of the copyrighted work
  3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
  4. The effect of the use upon the potential market for or value of the copyrighted work

When applied, these four factors lead to highly inconsistent results across the country’s circuits, frustrating tattoo artists and unlicensed users all over the world.

So, is the depiction of a celebrity with precise tattoos protected by the Doctrine of Fair Use? As is the answer with most Fair Use questions: it’s unclear. Two recent district court cases had opposite conclusions.

Solid Oak Sketches, LLC v. 2K Games, Inc., 449 F.Supp.3d 333 (S.D.N.Y. 2020)

In the Solid Oak Sketches, LLC v. 2K Games, Inc. 449 F.Supp.3d 333 (S.D.N.Y. 2020), the federal district court in New York considered whether the defendant 2K Games, a video game developer owned by Take-Two Interactive Software, was guilty of copyright infringement for its highly realistic rendering of the tattoos of NBA stars LeBron James, Eric Bledsoe, and Kenyon Martin in its NBA 2K basketball game featuring various NBA athletes. The athletes had each granted permission to the NBA, who then granted the defendant permission to use the athletes’ likenesses in the game.

The plaintiff in the case, Solid Oak Sketches, an entity consisting of tattoo artists, held exclusive licenses to five of the tattoos featured on the athletes. Each tattoo was determined to be highly recognizable and essential to any depiction of the athletes themselves. Solid Oak Sketches alleged that 2K Games infringed on its copyrights (which were federally registered after the game was developed) by depicting these players’ tattoos without a license from Solid Oak Sketches. 2K Games claimed that its used was de minimus and, further, was protected under Fair Use. The Court agreed with 2K Games.

When applying the four factors of Fair Use, the Court found that 2K Games’s use of the tattoos was negligible and only constituted 0.000286%—0.000431% of the entire game’s data; that the use was transformative because they were necessary to render a realistic image of the players’ likenesses; and that the tattoos did not play a significant role in marketing NBA 2K, nor did it hurt Solid Oak Sketches’ market. The court further held that the tattoo artists had granted the athletes an implied, nonexclusive license to use the tattoos as part of their likenesses and personas since the tattoo artists knowingly tattooed public figures, and the players had, in turn, licensed the use of their likenesses for use in the NBA 2K game. Thus, the Solid Oak Sketches court held in favor of 2K Games: the depiction of the players’ tattoos in the NBA 2K game constituted Fair Use.

Catherine Alexander v. Take-Two Interactive Software, Inc, 489 F.Supp.3d 812 (S.D. Ill. 2020)

Solid Oak Sketches’ holding that (a) tattoo artists who ink celebrities grant those celebrities implied, nonexclusive licenses to their copyrightable tattoos and (b) the unpermitted depiction of a celebrity’s tattoos in a video game is protectable under Fair Use contrasts the holding in a recent district court case with nearly identical facts, Catherine Alexander v. Take-Two Interactive Software, Inc. 489 F.Supp.3d 812 (S.D. Ill. 2020). In Alexander, plaintiff  tattoo artist Alexander brought suit against Take Two, the maker of WWE 2K (yes, the same 2K), alleging that Take Two infringed on Alexander’s six copyrighted tattoos which she had rendered on wrestler Randy Orton’s body when WWE2K recreated those tattoos in its realistic depiction of Randy Orton in its WWE 2K video game series. Take Two adopted the same argument as in Solid Oak Sketches, claiming that its use was de minimus and permissible under the doctrine of Fair Use.  In contrast to Solid Oak Sketches, the Alexander court ruled that Take Two was guilty of copyright infringement and that it unlawfully infringed on tattoo artist’s Catherine Alexander’s copyrights in its realistic depiction of wrestler Randy Orton’s six tattoos in its WWE-2K video game series. Take Two admitted to copying the tattoos to create a realistic avatar.

The court in Alexander did not determine whether Alexander granted Orton an implied license when she rendered his tattoos and concluded that the use was not de minimis since Alexander’s tattoos were copied onto Orton’s avatar in their entirety. The court held that, although Take Two had a license from Orton to use his likeness in the game and although copying Orton’s tattoos were necessary to render a realistic game experience, Take Two’s use of the artists’ tattoos was not protected under the doctrine of Fair Use. The court found that the use was not transformative because it served the same purpose as Alexander’s: to decorate Orton’s body, and that Take Two did not use any creativity when it fully copied the copyrighted tattoos in Orton’s avatar. These factors weighed against a finding of Fair Use. Thus, the Alexander court ruled in favor of the tattoo artist and the protection of her copyrights.

Both of these decisions may be appealed to the 2nd and 7th circuits, respectively. However, we may still not have a clear answer for Fair Use as it relates to tattoos and to artists’ ability to enforce their copyrights. In other words, while tattoos are permanent, the extent of the copyrights of the artists who design them may still be in flux.

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