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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jrosenblatt@cfl.rr.com
A Quick Thought On The Distressful Combination Of Copyright And Photos
I hear it said that Native Americans superstitiously believed their souls were stolen through a painted or photo portrait. I never took that story seriously, after all it was only a story, and the large number of their 19th century portraits hanging in our Nations National Portrait Gallery, shows the opposite. In fact the strength of character shown in those portraits would indicate the subjects were otherwise pleased with the result. And no reports were ever heard about any souls eloping with any photo.
With that as prologue, perhaps this article should be titled, “Does taking a copyrighted photo of a copyrighted design, appropriate any of the copyrights in the design?” I’ve received many questions on this subject of photos and copyright and thought an answer now due.
Where a design, whether two dimensional or of a three dimensional object, qualifies as an original creative or ornamental work, protection automatically arises under copyright. For designers intending to produce an original, ornamental, and commercially valuable work, even without some utility, the commercial value in the design will belong to its author and its copyright cannot be divested without a conscious and intentional act of divestiture, by assignment, exclusive license, or agreement to produce a work for hire.
Photos of copyrighted works are themselves creatures of copyright and like a design, copyright automatically arises in an original creative photo composition but, contrary to popular hearsay, the copyright in the photo of a design cannot appropriate any of the author’s copyright in the original design.
As soon as a design is fixed in any form, two or three dimensional, copyright vests in the author of the design. That means the creator of the design owns the design copyright. That’s simple enough for anyone. However, the copyright may be divested by a written agreement such as a work for hire or an assignment agreement and the design may be modified as a derivative work, only with the owner’s or author’s permission. However, no rights to the design are transferred by assignment unless there is an agreement expressly transferring the separate copyright interests defined in the law as reproduction, modification, transfer, use, performance or display. That’s the law.
Where photos are made of a design, with permission and without any other agreement affecting the author’s rights, the photographer, as the author of the photo will own the copyright to the composition of the photo but not to the design shown in the photo. Anyone can reproduce the photo, assuming permission of the photo’s copyright owner, even it the photo includes several separately owned copyrighted designs, assuming each of the owners gave permission for the photo.
. . . contrary to popular hearsay, the copyright in the photo of a design cannot appropriate any of the author’s copyright in the original design.
Proceeding on the assumption permission had been granted, the owner of the copyright in the photo, only owns the right to the original composition shown by the photo but not to any of the designs shown in the photo. The separate owners of the copyright designs in the photo continue to own their separate respective designs and do not own the copyright to the photo composition. All may use the photo, once again assuming permission for its use have been given, and in no event will use of the photo divest any owner of a copyrighted design shown in the photo or give any copyright owner of a respective design shown in the photo, the right to use any other separately owned copyrighted design shown in the photo composition.
How Your Patent Attorney Can Sometimes Help
Sometimes, as it has been known, people threaten to sue. Sometimes, the threat, made under the emotion of a heated discussion, otherwise known as a shouting match, ends with, “wait ‘till you hear from my attorney.”
As a practicing attorney, I can say most of us are burdened with the imposition of strict rules of ethics, the high cost of practicing law, a family to support, and most of all, the Florida Supreme Court regularly telling us, as officers of the court we must act civilly to each other, even, or especially, where our clients may act uncivilly to each other and expect us to follow their bad example. While always mindful of our Supreme Court, I find this rule, unlike some of the others, particularly gratifying when it is my client who made the threat, without first consulting me, and then after putting his proverbial foot in his mouth, expects me to deal with whatever he has created, with the same coin. So much for client management.
As a patent, copyright, trademark attorney, I have found one of the worst kinds of “shouting matches” is usually over a weak and descriptive trademark, and where my client is the one on the side of the weak (or sometimes non-existent) trademark. Take the case in point of a “slogan” trademark. A slogan is a combination of words and, as we know, words strung together typically have meaning. Isn’t that the purpose of stringing words together? Remember “hits the spot,” from Pepsi Cola? Or “the pause that refreshes,” from its rival Coca-Cola? For a slogan trademark, as with any other trademark, the question is always 1) does the mark serve as a source of origin 2) in the minds of the consumers 3) in the actual or likely markets for the product. So, “ hits the spot,” used wherever Pepsi Cola is sold or in a likely market where Pepsi may be expected to expand its products, would be a trademark if the consumers in those markets recognized the slogan and identified the slogan with Pepsi Cola. Simple logic, right?
Now for a cognitive example. Think of your first response to a well known slogan, “make mine a Bush “ for example, with the “Bush taken out and another mark, “Bryers.” (That’s an ice cream trademark), inserted in its place. If your first thought is “oh boy, that’s a Bryers ice cream product made by Bush beer company, you would be legally correct only if the ice cream market would be the logical extension of Bush’s beer business? Make sense? If not and ice cream is not the logical extension of beer, then “make mine a ( )” as a trademark is limited and as Mr. Bush’s attorney, I better prepare for the worst from Mr. Ice cream’s attorney. It can get worse (for the attorney that is). What if the slogans “make mine a ( ),” can be interpreted as descriptive. Certainly “make mine a ( )” could be descriptively applied to any product, even Starbucks coffee, as in “make mine a Starbucks.”
To add some balance to our discussion and give our poor attorney some ammunition to defend his client’s honor and his own reputation, let’s jump to slogans qualifying as a famous slogan trademark . You might ask when does a mark becomes famous, slogan or otherwise or is there any such thing as a famous slogan trademark? General Electric would say, “we bring good things to living,” is their slogan trademark and a famous one too. As a guide to the perplexed the U.S. Trademarks’ Anti-Dilution statue, now famous for itself, provides a qualified answer. What the Anti Dilution statue says is a mark may be famous only when the court says it’s famous and to assist the court, the statue gives the bewildered judge, benchmarks against which the “famous” mark is measured, as the mark’s distinctiveness, the amount of time the mark was used, the dollar amount spent in advertising with the mark, the geographical extent of the market in which the goods and services are sold, and the consumers’ recognition of the mark.
If Starbucks dares to take “make mine a . . .,” away from beer and use it with coffee, let’s see if we can help Mr. Starbucks’ attorney, even if Bush insists its slogan is “famous”. At first glance, there seems to be no way out. Any use of the famous slogan “make mine a ( ),” or similar slogan would seem to be an infringement regardless of its application, to beer, ice cream or coffee or anything else.
So what can we do for our stressed attorney, told by his client he has to defend the client’s honor after he is charged with misusing the famous slogan mark of his competitor and, worse, his arch rival?. For help, we can and will point the attorney to the exculpatory provision of the U.S. Trademark Law for words or slogans used otherwise than as a mark, meaning the slogan is not used by the client as a trademark to show the source of origin for the goods or services, but descriptively to make a statement and the Trademark Law can’t stop anyone from making a statement. That’s free speech and only the Copyright Law can do that. So where a slogan is used fairly and in good faith only to describe goods or services, that use is an indisputable right and cannot be abridged or restricted.
So what about, “make mine a ( ).” It describes how a beer drinker or ice cream eater or coffee drinker, would specify her preference for a trademarked product and functions equally as well with Bush, or Blatz or Bryers or Starbucks. So why would it not be a descriptive slogan and free for use by all? While any defense against a “famous” mark would be difficult, every one deserves a defense, even a hot headed client who “dared” Mr. Bush to sue only because he knew he could rely on his patent attorney. I hope our attorney remembers to send a bill.
In any event, it is better not to adopt an already famous trademark, without the express permission of the mark owner and regardless how many degrees of separation there are between your product and that of the famous trademark products or services. As a case in point, I’ll leave you with the “Here’s Johnny” case. Johnny Carson, famous late night TV host was always introduced by the also famous slogan, “and here’s Johnny.” Along comes an enterprising purveyor of portable toilets (these are the facts; I don’t make up this stuff), and calls his business (you guessed it), “here’s johnny.” Of course Johnny Carson won. So unless you real name is McDonald or Disney or Ford or International Harvester and you use it in the best of good faith as the rightful name to your product, don’t even think of using a “famous” trademark.
Next month it’s back to the Internet and what to do when an international tribunal, acting under the Uniform Domain Name Dispute Resolution Policy, decides against your domain name.
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jrosenblatt@cfl.rr.com . |
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