Entertainment Law – Page 9 – The Business of Creativity

MoCA Board

I’ve been asked to serve on the Board of Directors for Fort Collins’ Museum of Contemporary Art (MoCA). Of course I accepted. My term starts in June and will run for 4 years. I think this is a great opportunity to help create business and intellectual property educational programming for area artists and students at all levels.

I’m really looking forward to getting started!

TriMedia Film Festival

I was just asked to serve on the Executive Board of the TriMedia Film Festival. I accepted. Ill post updates as applicable.

The overlap of trademark law and branding.

Most organizations are now understanding (at least fundamentally) the importance of differentiating themselves through programming and branding. Most understand the importance of the institutional logo as a symbolic “indicator of source” relative to the educational services and even tangible “goods” provided by the institution.

Many institutions and organizations are now developing “taglines” to further identify the core identity and mission of their institutions. Sometimes those taglines have been the result of a great deal of effort, research, and creativity. Sometimes those taglines have developed by attrition, or even the cliché, trite, and overused phrases that have become the personal favorites of an individual with the power to force their use. In any case, the resources invested in connecting that tagline with the institution can be enormous.

If your institution has invested the resources to create a truly distinctive and on-target tagline and other branding elements, it doesn’t seem fair for some other institution to come along later and start using the same clever or market-resonating tagline, slogan, jingle or other branding element that you spent so much time, energy, and money to develop and connect with the “good-will” of your institution in the marketplace.

Protecting this investment in the good will of your institution is what trademark law is all about. The goal of TM law is to protect consumers from confusion as to the source of a good or service they are interested in purchasing.

There are several key things to remember about trademark law:

TM law only protects “distinctive” branding elements that are used as an indicator of the source of the goods or services in commerce. Descriptive phrases MAY become eligible for TM protection as soon as enough consumers
TM protections vest in the first user as soon as the mark (word, graphic, phrase, etc.) is used in commerce. You do not have to file a registration to be protected in the case a “later user” starts using your mark in a way that would confuse consumers as to the source of the goods or services.
If you FAIL to enforce your rights in the mark, you risk losing your rights in the market because in the eyes of the law you’ve “abandoned” the mark.

What does this mean practically? If you have a distinctive tagline or other branding element, start using the “TM” symbol with the mark to indicate that you are using this to identify it as a source indicator of YOUR goods and services. If you register your trademark with the United States Patent and Trademark Office (www.uspto.gov), you can then start using the ® with your mark.

Why register your mark with the trademark office? Mostly because federal registration eases enforcement of the mark against infringing uses when needed by establishing certain presumptions – saving thousands of dollars in legal fees because one does not have to legally argue and establish the underlying right. Presumptions given upon registration include:

that the mark is valid as a trademark at all;
the presumption that the registrant is the first user of the mark; and
the right to use the mark throughout the entire United States, (unregistered marks may be limited to the practical boundaries of their geography);

Accordingly, before investing institutional resources to bring a new branding element like a tagline into your market, you should:

conduct an internet search (Google, Yahoo!, Etc.) to see if the line is being used elsewhere in your market, or in a market that’s close enough to yours to create consumer confusion. Remember, the protection vests with the FIRST USER IN COMMERCE, so if someone else is using the mark, you need to go back to the drawing board;
conduct a TM search on the tagline at www.uspto.gov;
if you’re still in the clear, register the domain name(s) that correspond to the mark because this will head of potential infringers who may themselves be starting at step one above;
if you’re serious about using the mark as an integrated part of your branding strategy, register the mark with the USPTO.

In conclusion, registration filing fees are $275-325 per registration, per class (plus the time and/or legal fees to complete the registration forms). Most institutions have several forms of the actual mark (simple tagline text, graphic treatment, logo, etc.) that will be used in deferent registration classes, so these registration fees can add up pretty quickly. However, registration fees are still just a drop in the bucket when compared to the resources you’re going to invest in creating and implementing the brand. The registration fees are also a small fraction of the legal fees you will save by registering the mark in the case you have to enforce those rights against an infringer. How much is your brand worth? It’s not a time to be penny-wise and pound-foolish.

Copyright Ownership and Transfer

Ownership vests in the creator unless transferred in writing.

I’ve been involved in several discussions just during the last week concerning who owns the copyright of a piece of creative work. The discussions have taken place primarily in the context of graphic design of a brochure, so we’ll go with that, but the concepts transfer easily to other commissioned work.

First, ownership vests with the creator of the work at the instant the design becomes a “tangible” expression of the idea (digital files are “tangible” for this purpose). In the case of a graphic design, then the designer owns the copyright UNLESS:

1. The work was created by an employee in the scope of the job, thus the designer on staff at the design studio does not own the work, the design STUDIO (the designer’s employer) owns the work. It’s a bit confusing in the employment situation because legally the employer CREATED the work rather than the employee, so the employer does not need a separate writing for each piece of work created by an employee. Just think of the paperwork! The only exception to this is that tenured university professors own the copyright on their articles – even if created “on the clock” as part of their job. I guess it helps to have a former professor as judge when you’re a professor litigating to retain ownership of your articles!

2. The work was created as part of a “work for hire” contract (where those words or words that mean the same thing) are used in the written contract. Note, there can be no effective “work for hire” oral contract – because copyright only transfers via a writing.

So, if you’ve contracted with an independant creative person to do some work for you, that person owns the copyright on the work (even after you’ve paid) unless they have specifically transfered the copyright to you in writing. The copyright and the physical work are “separable” – thus something like a painting or a sculpture can be sold and resold, with the copyright always remaining with the artist by default unless transferred in writing or created within the scope of full-time employment.