A presentation to IABC Houston Entrepreneurs SIG on 14 April 2011 by Sunisha S. Choksi, Attorney at Law

1. Provided by courtesy of:
The Law Office of Sunisha S. Choksi
4601 Washington Ave., Suite 200
Houston, Texas 77007
Phone: (832) 319-6724
Fax: (832) 319-6714
sunisha@choksilaw.com

2. WHAT IS A COPYRIGHT?
An original, creative expression (work of
authorship) affixed to a tangible medium.
A type of intellectual property protection
established by the U.S. Constitution....
Article I, Section 8, Clause 8
Empowers the United States Congress
“ To promote the Progress of Science
and useful Arts, by securing for limited
Times to Authors and Inventors the
exclusive Right to their respective
Writings and Discoveries.”

3. A COPYRIGHT PROTECTS
ORIGINAL & CREATIVE...
Literary works
Musical works, including any accompanying words
Dramatic works, including any accompanying music
Pantomimes and choreographic works
Pictorial, graphic, and sculptural works
Motion pictures and other audiovisual works
Sound recordings
Architectural works
Computer programs
Maps
Author has to have exercised some independent,
intellectual effort to claim a copyright in a given
work.

4. A COPYRIGHT DOES NOT PROTECT...
Works not fixed in a tangible form
Facts
Ideas
Concepts
Systems
Methods of operation
Short phrases, slogans, titles and names
Mere listing of ingredients
Familiar symbols & designs
Typographical ornamentation, lettering or
coloring
Information that is common property- ex. lists or
tables taken from public documents from Fed.
Govt.

5. WHEN COPYRIGHT PROTECTION
VESTS
At the moment creation
+
original work of authorship fixed in a tangible form that it is
perceptible either directly or
with the aid of a machine or device.
Ex. Print copy, digital file
The copyright immediately becomes the property of the author(s)
who created the work. Registration of work of authorship with
the Copyright Office not required to establish a copyright
protection.

6. "BUNDLE OF RIGHTS" AFFORDED
TO COPYRIGHT OWNERS
The exclusive right to...
Reproduce the work (make copies),
Prepare derivative works,
Distribute copies of the work,
Publicly perform the work &
Publicly display the work.

7. WHAT IS A DERIVATIVE WORK?
Defined in 17 U.S.C. § 101: A work based upon one or more pre-
existing works, such as-
translation,
musical arrangement,
dramatization,
fictionalization,
motion picture version,
sound recording,
art reproduction,
abridgment,
condensation, or
any other form in which a work may be recast, transformed,
or adapted.
A work consisting of editorial revisions, annotations, elaborations,
or other modifications which, as a whole, represent an original
work of authorship, is a “derivative work”.

8. HOW LONG DOES A COPYRIGHT LAST?
It Depends...
All works published in the U.S. before 1923- In the Public Domain
Generally, works published after 1922, but before 1978:
95 years from the date of publication
For an Individual- All works published after 1977:
Life of the author + 70 years
For Corporate Authorship under “Work for Hire” or specifically
commissioned, after 1977:
95 years from the year of its first publication, or a term of 120 years
from the year of its creation, whichever expires first
For works published anonymously or under a pseudonym, after 1977:
95 years from the year of its first publication, or a term of 120 years
from the year of its creation, whichever expires first

9. CORPORATE AUTHORSHIP-
WORKS MADE FOR HIRE
Section 101 of the copyright law defines a “work made for hire” as
A work prepared by an employee within the scope of his or
her employment or
A work specially ordered or commissioned for use as a
Contribution to a collective work,
Part of a motion picture or other audiovisual work,
Translation,
Supplementary work,
Compilation,
Instructional text,
Test,
Answer material for a test, or
Atlas,
And if the parties expressly agree in a written instrument
signed by them that the work shall be considered a work made
for hire.

10. COPYRIGHT NOTICE
Consists of the symbol or word “copyright (or copr.),” the
name of the copyright owner, and the year of first
publication:
© 2011 Company, Inc.
Once required as a condition of copyright protection; now
optional though highly recommended to give actual
notice of copyright claim.
DO NOT require registration with, the Copyright Office to
use copyright notice.

11. THE BENEFITS OF REGISTERING
COPYRIGHTS
Registration not required, but a # of advantages...
1. Establishes a public record of the copyright claim.
2. Before an infringement suit may be filed in court, registration
necessary for works of U.S. origin.
3. If made before or within five years of publication, registration will
establish prima facie evidence in court of the validity of the copyright
and of the facts stated in the certificate.
4. If registration is made within 3 months after publication or prior to an
infringement of the work, statutory damages and attorney’s fees will
be available to the copyright owner in court actions. Otherwise,
only an award of actual damages and profits is available to the copyright
owner.
5. Can record registration with U.S. Customs Service for protection
against the importation of infringing copies.
GIVES COPYRIGHT OWNER BETTER ENFORCEMENT MEANS TO
PROTECT COPYRIGHTED WORKS

12. COPYRIGHTS AS BUSINESS ASSETS-
ASSIGNMENTS AND LICENSES
Any or all of the copyright owner’s exclusive rights may be
transferred. The transfer of exclusive rights (exclusive
license or assignment) is not valid unless that transfer is in
writing and signed by the owner of the rights conveyed or
the owner’s authorized agent.
Copyrights may also be conveyed by operation of law and
may be bequeathed by will or pass as personal property by
the applicable laws of intestate succession.
Types of transfers:
Licenses – Owner retains copyright but allows 3rd parties the
right to use copyrighted content under certain terms and
conditions.
Assignment- Owner transfers all rights, title & interest to a 3rd
party.

13. COPYRIGHT INFRINGEMENT
Violation of the “bundle of rights” afforded to the
copyright owner.
Alleged Infringer- Anyone who, without the
permission or consent of the copyright owner...
Reproduces the work (make copies),
Prepares derivative works,
Distributes copies of the work,
Publicly performs the work &/or
Publicly displays the work.
Prove infringement by showing: 1) infringer had access
to the copyrighted work & 2) infringer’s work is
substantially similar to the copyrighted work.

14. INFRINGEMENT-
FAIR USE (SECTION 107 OF THE COPYRIGHT
LAW)
Reproduction of a particular work may be considered fair when:
Criticism
Commentary
News reporting
Teaching
Scholarship
Research
Parody (often found by courts to be “fair use”)
Section 107 also sets out four factors to be considered in
determining whether or not a particular use is fair:
The purpose and character of the use, including whether such use is of
commercial nature or is for nonprofit educational purposes.
The nature of the copyrighted work.
The amount and substantiality of the portion used in relation to the
copyrighted work as a whole.
The effect of the use upon the potential market for, or value of, the
copyrighted work.

15. DMCA TAKE DOWN NOTICE PROVISION
Created under the Digital Millennium Copyright Act as a
“Safe Harbor” provision to shield Internet Service
Providers (ISP) from contributory infringement.
ISP required to maintain and record information with the
U.S. Copyright Office regarding their DMCA agent
designated to address copyright infringement issues.
Copyright owners can demand removal of allegedly
infringing content by sending a take-down notice to ISP’s
designated DMCA agent.
If complete, ISP will either remove or disable website
containing alleged infringing work.

16. BASICS
ON
TRADEMARKS

17. WHAT IS A TRADEMARK?
A Trademark can be…
a word, ex: “EXXON” for oil products
a phrase, ex: “JUST DO IT” for sports apparel
a symbol, ex: the NIKE “Swoosh” for sports
apparel
a design, ex: The DISNEY “Cinderella Castle”
for children’s toys

18. WHAT IS A TRADEMARK?
As well as…
sounds, ex: NBC chimes
3D objects, ex: the Coca-Cola bottle
or a combination of the above, that identifies
and distinguishes the source of the goods of
one party from those of others.

19. WHAT IS A SERVICE MARK?
Like a trademark, except that it identifies and
distinguishes the source of a service rather
than a product.
Throughout this presentation, the terms
"trademark" and "mark" refer to both trademarks
and service marks.

20. A trademark is never a word or logo by itself…it
is used to identify specific goods and services.
Helps your customers to make purchasing
decisions regarding your goods and services
because of a prior experience with the products or
from recognition of a marketing or advertising
campaign.
There is an expectation by the customer
regarding the quality associated with the
branded products or services. (Good Will)

21. KEY POINTS TO REMEMBER ABOUT
TRADEMARKS:
Function as a source identifier of the goods and/ or
services that your business offers in the market place.
Create tangible business assets related to the
goodwill and reputation generated by the use of mark.
Is a type of property right that can be sold,
transferred, and/or licensed creating additional
streams of revenue for your business.
An important business asset that you want to protect
from competitors. Want to avoid a likelihood of
confusion by consumers with competitors’ brands.

22. WHEN CAN I USE THE TRADEMARK SYMBOLS
TM, SM AND ® IN THE UNITED STATES?
"TM" (trademark) or "SM" (service mark):
Use any time you claim rights in a mark, in order to
alert the public to your claim, regardless of whether
you have filed an application with the USPTO. Be
aware of conflicts with prior, senior users.
Federal Trademark Registration symbol "®":
Use only after the USPTO actually registers a mark,
and not while an application is pending. Also, you
may use the registration symbol with the mark only
on or in connection with the goods and/or services
listed in the federal trademark registration.

23. IS REGISTRATION OF MY MARK REQUIRED IN
THE UNITED STATES?
No. You can establish rights in a mark based on
legitimate, actual use of the mark in commerce.
This is based on common law rights you develop
in a mark if you are the senior user of the mark
in conjunction with specific goods and services in
the commerce.
However, there a number of benefits to
registering you trademarks.

24. REGISTERING YOUR BUSINESS’
TRADEMARKS- LOCATION MATTERS
You can also register your trademarks at the
state level, federal level, as well as in foreign
markets, depending on the type of commerce your
business is engaged in.
If just selling goods and services in Texas to
Texas customer…engaging in intrastate
commerce…can file for a state trademark
registration.
If selling goods over seas markets, such as UK or
Mexico…may want to register for trademarks in
those countries.

25. BENEFITS OF REGISTERING YOUR
TRADEMARKS—
U.S. FEDERAL TRADEMARK REGISTRATION
Owning a federal trademark registration on the Principal Register
provides several advantages:
constructive notice to the public of the registrant's claim of ownership
of the mark;
a legal presumption of the registrant's ownership of the mark and the
registrant's exclusive right to use the mark nationwide on or in
connection with the goods and/or services listed in the registration;
the ability to bring an action concerning the mark in federal court;
the use of the U.S registration as a basis to obtain registration in
foreign countries; and
the ability to file the U.S. registration with the U.S. Customs Service
to prevent importation of infringing foreign goods.

27. FIRST STEP IN THE TRADEMARK PROCESS-
BRAND SELECTION…NOT ALL TRADEMARKS ARE
CREATED EQUAL.
Marks that are made-up, fanciful, arbitrary, or
suggestive marks are inherently distinctive, and
are given greater weight in enforcement of
trademark rights. Ex: KODAK for film products.
With some exceptions (secondary meaning &
acquired distinctiveness), descriptive words or
designs that convey an idea about the quality,
characteristic or ingredient of the good or service
the mark is used in conjunction with are weak
trademarks and are afforded little
protection. Ex: COMPUTER-FIX-IT for
computer repair services.

28. Generic words or designs that are the common
words or designs for the good or service offered or
sold have NO TRADEMARK PROTECTION.
Ex. WINDOW CLEANERS offering window
cleaning services will not be afforded any
trademark protection because the word elements
are essentially the generic or common words to
describe the service offered.

29. HELPFUL WEBSITES
U.S. Copyright Office-
www.copyright.gov
United States Patent & Trademark Office-
www.uspto.gov
THANK YOU!