Trademarks and copyrights are among an organization's most valuable assets. If you think someone is infringing your intellectual property rights, understanding a few key issues will enable you to evaluate whether to enforce your rights and what steps to take.
The first step is to understand the legal tests for infringement that courts have developed through case law. The tests vary.
A trademark identifies the source of an owner's goods or services from those of others. Good, protectable marks for organizations are ones that members and the public associate with them: the organization's name and acronym, as well as key brand names, logos, or slogans for programs, shows, events, or publications.
The test for trademark infringement is likelihood of confusion: Are consumers likely to confuse the parties' marks and mistakenly believe they come from a common source? For instance, will they believe that the infringer's goods or services are sponsored, licensed, or approved by the organization when they are not?
To determine this, courts look at a variety of factors, including:
- the similarity of the parties' marks, goods or services, and channels of trade
- the sophistication of consumers and whether they are actually confused
- the intent of the infringer in adopting the mark
- the strength of the trademark owner's mark
- the number of same or similar marks owned by third parties for the same or similar products or services.
Copyright protects "original works of authorship" and becomes the property of the authors who create the works from the moment they are in fixed form. Copyright gives the authors the right to make and distribute copies, perform and display the works publicly, and create derivative works (adaptations). Trade and professional associations often own copyrights in written publications or visual works (photos, artwork, websites, and sometimes logos, which also may be protected as trademarks).
To prove infringement, a party making the claim must show that it owns a valid copyright in the work, that the defendant copied original elements of it, and that the works are substantially similar. Factors that courts consider may include the uniqueness of the work that was copied and how much of the copyrighted material was copied.
You don't need to register trademarks or copyrights to enforce them, although the legal claims and outcomes may vary depending on whether the plaintiff owns registered rights or not. Registration can enhance the value of trademarks and copyrights, better keep "wannabes" at bay, and make policing against infringers easier. It may also allow you to collect more money damages if you prevail in a court action.
Determining whether a trademark or copyright has been infringed can be complicated, but it's the essential first step before taking any legal action. Be sure to avoid some common mistakes in analyzing possible infringement.
Common Mistakes: Trademarks
The party with prior rights prevails, so begin your investigation here. You don't have much of a defense if you fire off a cease-and-desist letter to the alleged infringer, and they respond that they used their mark before you did—and so, in fact, you should stop infringing their rights.
Check applications and registrations that the association and alleged infringer may own, since they will identify the dates of filing and first use. If none exist, for dates relating to the association, check its records and use of the mark in advertising, and ask staff who may know the institutional history. Also search the internet for first references to the trademark, and don't forget to check the Internet Archive (also known as the "Wayback Machine") for archived copies of websites.
Even if you do own the trademark, don't assume that you have unlimited rights to it. Rather, objectively determine whether the mark is strong enough to stop the infringer from using its similar mark.
The spectrum of marks, from strong to weak, is:
- Fanciful: a term that has no meaning other than as a brand name. Example: Exxon petroleum products.
- Arbitrary: common terms that have no relationship to the goods or services to which they apply. Example: Apple computers.
- Suggestive: terms that suggest, but do not directly describe, the goods or services or their attributes. Example: Microsoft microcomputer software.
- Descriptive: terms that describe the goods or services or their characteristics. These terms often cannot be registered unless they have been used extensively over a period of time. Example: Food News industry blog.
Owners of strong marks often can protect them beyond the exact products or services for which they are registered or used, and legal action against infringers may be advisable. At the other end of the spectrum, while marketers often adopt descriptive marks because they make it clear to consumers what is being sold, they can sink an infringement claim. The rationale is that no one party should have exclusive rights to these terms. For example, an association using the title Food News for its blog may not have a winning claim against others who are using the same phrase to fairly describe their magazines, podcasts, or other media channels on the same topic.
Common Mistakes: Copyrights
As in trademark cases, start any investigation into possible copyright infringement by looking into ownership. Check whether your organization has filed any copyright applications or owns registrations covering the work in question.
If an employee created the work as part of his or her employment, your organization owns the copyright. Depending on whether you used outside vendors, consultants, meeting planners, or volunteers to create it, unless you have a work-for-hire agreement or copyright assignment, those authors probably own the rights. Under another scenario, your organization may have licensed the right to use text, artwork, or photographs from another party; in that case, the other party retains ownership of the copyright.
Even if you own the copyright, don't fail to determine whether the potential infringer can make a viable "fair-use" claim. The fair-use doctrine may allow others to fairly use the copyrighted work for criticism, comment, news reporting, education, research, or parody.
After conducting your investigation, if you've determined that you own the intellectual property in question, you still have a decision to make: Should you move forward with an infringement claim?
Determine the benefit in spending time, money, and other resources to take action versus the risk of doing nothing. You've saved on legal fees by doing your own fact gathering, but depending on the gravity of the infringement and your knowledge of the law, you may wish to consult with an intellectual property attorney, particularly on more complicated matters, since the law is nuanced.
If you decide to proceed with a claim, consider these questions before you begin:
Who should approach the infringer?
If someone on your internal team contacts the infringer, it will be less expensive, and the infringer probably will perceive this as being less aggressive than if your attorney were to make the first contact. This softer approach may help you resolve the matter quickly, but you may not fully vet all the issues involved without help from your counsel.
How should you contact the infringer?
To avoid boxing yourself into a legal position that may not benefit the organization if the matter goes further, you may wish to explain the problem to the infringer in business instead of legal terms, keeping the door open to provide details on the legal position if needed. In this case, consider calling instead of writing the infringer. If you can't resolve the problem, have your attorney follow up.
What tone should you take?
The tone of your initial call, email, or letter can greatly influence how the other party responds and how quickly you may be able to reach an agreement. Being reasonable and measured, based on egregiousness of the infringement, is often successful.
When you're aggressive or overbearing, the other party often responds to your behavior rather than addressing the core issue. Also, infringers sometimes post cease-and-desist letters online to seek comments from others. If the online community thinks your organization is bullying someone, you may face an unwanted PR issue.
What stance should you take?
As with tone, the stance you take with the infringer likely will mirror the gravity of the conduct and intent. Where the infringer has intentionally and blatantly infringed your rights—for example, by illegally using your certification mark with the intent to confuse your members and other potential customers—the best approach likely is to take a strict position and communicate the penalties the infringer faces and the damages for which it may be held liable.
With lesser, garden-variety infringements, you may be able to resolve the issue by approaching the infringer with an educational message that explains your rights and concerns about infringement. This approach is often appropriate when the other party is unaware that it has infringed your rights, when chapters are infringing, or when someone has republished one of the organization's copyrighted articles without permission, intending to share it with others simply because he or she liked it.
Other options exist when the infringer posts photos or other content you own on social media platforms without your permission. Check the site's takedown procedures, advise the site of the infringement, and request that the content be removed.
By thoughtfully policing your organization's trademarks and copyrights, you greatly enhance their value as important business assets.
Authored by Nancy H. Lutz
As published by the American Society of Association Executives (ASAE) on August 14, 2017.