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University of Massachusetts Amherst

Family Business Center

Is Your Intellectual Property Protected?

by Shel Horowitz

James Duda, one of the partners at FBC sponsor Bulkley, Richardson and Gelinas, LLP, came to the Family Business Center September 10, 2002 to talk about five different kinds of intellectual property: trademarks, patents, copyright, trade secrets, and publicity.

But with only half an hour for his talk, Duda only got to cover the two categories business owners are probably most concerned with: trademark and copyright.

Trademarks distinguish a particular product, through words, symbols (such as a logo or the shape of a Coke bottle), or even particular sounds and colors. But the purpose of trademark registration, as the government sees it, is not to protect a business owner's rights; rather, it's to avoid confusion in the mind of the consumer. So if you decide to bring to market, a carbonated brown soft drink in a curvy bottle, called Moca-Mola, a certain soft drink company might make your life very difficult on the grounds that you were creating confusion in the public eye as to the source of the product, and thus infringing its trademarks.

There is such a thing as a common law trademark, not registered with the government. However, while registration provides nationwide protection against infringement, a common law trademark protects you only in the geographic areas where you actually use it. But it does mean that if you develop a brand, locally, and someone else later registers the mark, you can't be stopped from using it in your existing territory in connection with that particular product.

And if you have a trademark that you license to others, part of your job is to monitor not only the extent of the use but the quality of the product.

The job of a copyright registration is different; it's to protect the creator or copyright holder from other people using the creator's work. Any creative expression that can be fixed in a tangible form - not just writings and sound/video recordings, but wallpaper designs, computer code, and architectural drawings, among other things - can be protected by copyright. But an idea can't be protected, nor can exchanges of a single copy of an expression be prevented. In other words, copyright law prevents someone else from copying the words that make up a book, but it does not prevent the physical book from being sold again and again.

Copyright is assigned at the moment the work is created, and you can sue for infringement even if you don't register the work with the U.S. Copyright Office until after the infringement occurs. But if you haven't registered the copyright before the infringement happens, you will only be able to collect your actual damages and not statutory damages or your attorneys' fees.

Duda finished with a warning to make sure your company website is not infringing copyright. Either use original text and images, or secure permission from the copyright holder (and make sure the person you're dealing with does in fact have the authority).

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