REGISTRATION OF TRADEMARK-COPYRIGHT AND THE CONCEPT OF FAIR USE

PRIYA.S.NAIRSREE LEKSHMIKARUN KRISHNAN

Introduction

• A trademark,  is a recognizable sign, design or expression which identifies products or services of a particular source from those of others.

• The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher or on the product itself.

• The essential function of a trademark is to exclusively identify the commercial source or origin of products or services.

•  Trademarks serve to identify a particular business as the source of goods or services.

• It should be noted that trademark rights generally arise out of the use of, or to maintain exclusive rights over, that sign in relation to certain products or services, assuming there are no other trademark objections.

Registration of Trademark• The law considers a trademark to be a form of property. 

• Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction.

• Certain jurisdictions generally do not recognize trademarks rights arising through use.

• If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement proceedings will therefore be limited.

• In cases of dispute, this disparity of rights is often referred to as "first to file" as opposed to "first to use." 

 The registration process includes several steps.

• First, the trademark owner files an application to register the trademark. About 3 months after its filed, the application is reviewed by an examining attorney at Trademark Office.

The examining attorney checks for compliance with the rules of the Trademark Manual of Examination Procedure. 

This review includes procedural matters such as making sure the applicant's goods or services are identified properly.

It also includes more substantive matters such as making sure the applicant's mark is not merely descriptive or likely to cause confusion with a pre-existing applied-for or registered mark.

• Second, If the application runs afoul of any requirement, the examining attorney will issue an office action requiring the applicant to address certain issues or refusals prior to registration of the mark.

• Third, If the examining attorney approves the application, it will be "published for opposition.“

During this 30-day period third-parties who may be affected by the registration of the trademark may step forward to file an Opposition Proceeding to stop the registration of the mark.

If an Opposition proceeding is filed it institutes a case before the Trademark Trial and Appeal Board to determine both the validity of the grounds for the opposition as well as the ability of the applicant to register the mark at issue.

• Fourth, provided that no third-party opposes the registration of the mark during the opposition period or the opposition is ultimately decided in the applicant's favor the mark will be registered in due course.

COPYRIGHTCopyright is a legal concept, enacted by most governments, giving the creator of an original work exclusive rights to it, usually for a limited time.Generally, it is "the right to copy", but also gives the copyright holder the right to be credited for the work, to determine who may adapt the work to other forms, who may perform the work, who may financially benefit from it, and other related rights.It is a form of intellectual property (like the patent, the trademark, and the trade secret) applicable to any expressible form of an idea or information that is substantive and discrete.

Copyright initially was conceived as a way for government to restrict printing; the contemporary intent of copyright is to promote the creation of new works by giving authors control of and profit from them.

Copyrights are said to be territorial, which means that they do not extend beyond the territory of a specific state unless that state is a party to an international agreement.

Today, however, this is less relevant since most countries are parties to at least one such agreement. While many aspects of national copyright laws have been standardized through international copyright agreements, copyright laws of most countries have some unique features.

Typically, the duration of copyright is the whole life of the creator plus fifty to a hundred years from the creator's death, or a finite period for anonymous or corporate creations.

Some jurisdictions have required formalities to establishing copyright, but most recognize copyright in any completed work, without formal registration.

Generally, copyright is enforced as a civil matter, though some jurisdictions do apply criminal sanctions.

Most jurisdictions recognize copyright limitations, allowing "fair" exceptions to the creator's exclusivity of copyright, and giving users certain rights.

The development of digital media and computer network technologies have prompted reinterpretation of these exceptions, introduced new difficulties in enforcing copyright, and inspired additional challenges to copyright law's philosophic basis.

Simultaneously, businesses with great economic dependence upon copyright have advocated the extension and expansion of their intellectual property rights, and sought additional legal and technological enforcement.

 opyright, in most cases, does not prohibit one from acts such as modifying, defacing, or destroying his or her own legitimately obtained copy of a copyrighted work, so long as duplication is not involved.

However, in countries that implement moral rights, a copyright holder can in some cases successfully prevent the mutilation or destruction of a work that is publicly visible.

Fair use• Fair use is a limitation and exception to the exclusive right granted

by copyright law to the author of a creative work.

• Fair use is a doctrine that permits limited use of copyrighted material without acquiring permission from the rights holders.

• Examples of fair use include commentary, search engines, criticism, news reporting, research, teaching, library archiving and scholarship.

• It provides for the legal, unlicensed citation or incorporation of copyrighted material in another author's work under a four-factor balancing test.

Four-factor balancing test.

 Factors to be considered shall include:

• the purpose and character of the use, including whether such use is of a 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; and

• the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

Fair use and professional communities

• Courts, when deciding fair use cases, in addition to looking at context, amount and value of the use, also look to the standards and practices of the professional communities where the case comes from.

• Among the communities are documentarians, librarians, makers of Open Courseware, visual art educators, and communications professors.

• Such codes of best practices have permitted communities of practice to make more informed risk assessments in employing fair use in their daily practice. 

Fair use as a defense

•  In litigation on copyright infringement, the defendant bears the burden of raising and proving that the use was fair and not an infringement.

• Thus, fair use need not even be raised as a defense unless the plaintiff first shows (or the defendant concedes) a "prima facie" case of copyright infringement.

• If the work was not copyrightable, the term had expired, or the defendant's work borrowed only a small amount, for instance, then the plaintiff cannot make out a prima facie case of infringement, and the defendant need not even raise the fair use defense.

Practical effect of fair use defense

• The practical effect of this law and the court decisions following it is that it is usually possible to quote from a copyrighted work in order to criticize or comment upon it, teach students about it, and possibly for other uses.

• The April 2000 opinion ruled concerning the four factors of fair use that

1) defendants' use of plaintiffs' articles is minimally, if at all, transformative,

2) the factual content of the articles copied "weighs in favour of finding of fair use of the news articles by defendants in this case", though it didn't "provide strong support"

3) concerning the amount and substantiality prong, "the wholesale copying of plaintiffs' articles weighs against the finding of fair use", and

4) the plaintiffs showed that they were trying to exploit the market for viewing their articles online and defendants did not rebut their showing by proving an absence of usurpation harm to plaintiffs. established uses cause few problems.

The economic benefit of fair use

• A balanced copyright law provides an economic benefit to many high-tech businesses such as search engines and software developers.

• Fair Use is also crucial to non-technology industries such as insurance, legal services, and newspaper publishers. 

• On September 12, 2007, the Computer and Communications Industry Association (CCIA), a group representing companies including Google Inc., Microsoft Inc., Oracle Corporation, Sun Microsystems, Yahoo! and other high-tech companies, released a study that found that Fair Use exceptions to US copyright laws were responsible for more than $4,500 billion dollars in annual revenue for the United States economy representing one-sixth of the total US GDP.

• The study was conducted using a methodology developed by the World Intellectual Property Organization.

• The study found that fair use dependent industries are directly responsible for more than eighteen percent of US economic growth and nearly eleven million American jobs. 

• "As the United States economy becomes increasingly knowledge-based, the concept of fair use can no longer be discussed and legislated in the abstract.

• It is the very foundation of the digital age and a cornerstone of our economy," said Ed Black, President and CEO of CCIA.

•  "Much of the unprecedented economic growth of the past ten years can actually be credited to the doctrine of fair use, as the Internet itself depends on the ability to use content in a limited and unlicenced manner."