The business attorney's guide to opyright law: as copyright interests grow increasingly valuable, businesses that fail to protect their creative works - or be mindful of the issues affecting their rights - run high legal risks. You can provide a key service to your business clients if you understand copyright basics

Illinois Bar Journal, Jan, 2009 by J. Joseph McCoy

Your business clients and their employees create works every day that are eligible for federal copyright protection--catalogs, advertisements, drawings, designs, programs, brochures, logos, and more. For many clients, these works are among their most valuable assets.

While many businesses recognize the importance of obtaining federal registrations for their trademarks, their other creative work is left unregistered. Surprisingly, the number of copyright claims received by the United States Copyright Office has decreased every year since 2004. (1) By contrast, the number of trademark applications filed with the United States Patent and Trademark Office has increased every year during that span. (2)

This article discusses the basic principles of copyright law and some of the common copyright issues that arise in a business environment. It also describes the benefits of securing federal registrations for copyrighted works and a new method of protecting your clients' interests efficiently and effectively.

What is copyright?

Copyright protection extends to "original works of authorship fixed in any tangible medium of expression." (3) As a general rule, if a work product is more than a short phrase or slogan and does not consist entirely of information already in the public domain, it is an original work of authorship. (4) A tangible medium of expression can be anything from a piece of paper to a CD-ROM or Web page.

Unlike patent or trademark rights, copyright attaches immediately to a work as soon as it is created, without the need for federal registration or use in commerce. Section 106 of the 1976 Copyright Act then gives the owner of the copyrighted work the exclusive right to (1) reproduce the work, (2) prepare derivative works based upon it, (3) distribute copies to the public by sale, (4) perform it, and (5) display it.

It can sometimes be difficult to distinguish a work that requires copyright protection from one that requires patent or trademark protection. Patents protect new ideas, processes, and devices. Copyright protects the tangible expression of those ideas, such as a drawing, description, or explanation, but not the ideas themselves.

Trademarks are source-identifying words, slogans, sounds, or dress, used to differentiate one company's products from its competitors. Since copyright requires a degree of originality and creative spark, words and phrases that are in the public domain do not receive copyright protection, even though they may be registered trademarks.

Note, however, that certain works may be both trademarks and copyrighted works if they contain the requisite level of creativity. Careful analysis is necessary to determine which method, or combination of methods, is appropriate to protect your clients' intellectual property.

Interplay between copyright and trademark

Logos, graphic designs, and sounds, to name just a few, can be both trademarks and copyrighted works, since they are source-identifying marks that often incorporate artistic effort. Yet the same work product is treated very differently under the two bodies of law. Particularly noteworthy is that many intrusive acts constituting copyright infringement do not also constitute trademark infringement.

Generally, the unauthorized exercise of one or more of the exclusive rights granted to a copyright owner is copyright infringement. Thus, an unauthorized reproduction, distribution, or display of a copyrighted work in a manner that is not a fair use (5) is actionable. Trademark infringement, on the other hand, requires use of the protected mark "in commerce" and "in connection with the sale or advertising of any goods." (6) Furthermore, the infringer must have used the mark in a way that was likely to confuse consumers.

To better understand the different standards for copyright infringement and trademark infringement, consider two scenarios. First, imagine someone copying your client's work for a private or noncommercial purpose. If that copy is not used in connection with the sale of goods or services, it is often not trademark infringement. The Lanham Act (7) does not protect marks from noncommercial dilution.

Second, imagine someone copying your client's work for a commercial use that is not likely to confuse the average consumer as to the source of the goods or services. For example, if Company A uses its logo solely in connection with the sale of gardening equipment, Company B may be able to use the same logo to sell vacation packages without infringing on Company A's trademark rights. Reproduction of a work, even for a commercial use, is generally not trademark infringement if the work is not used in a way that will likely deceive the public as to the source of the product.

While your clients may object to the unauthorized use of their intellectual property in these scenarios, neither use is likely to result in actionable trademark infringement. If they wanted to pursue legal recourse, they would have to proceed in copyright. Clearly, you can provide a valuable service to your clients if you grasp this area of law, specifically the unique issues that arise in a business setting.