About johncexton

John Anello Jr. Intellectual Property Law TRADEMARK / I.P. SPECIALIST Trademark/Copyright/Patent/Licensing/Contracts TESS / TARR / TEAS / TTAB johncexton@aol.com www.johnanello.com Trademark and IP Professional with hands-on experience and a Juris Doctor law degree focused on Trademark and Intellectual Property.

Copyrights and Trademarks -What’s the difference?

By John Anello Jr.

Juris Doctor

Business & Legal Affairs/Marketing/Intellectual Property & Copyrights

 

DO YOU KNOW:

Copyrights:

The length of a copyright under the 1976 Copyright Act is Life plus 70 years.  What this means is that if you copyright © your intellectual property, (song, poem, photo, text, software, etc) you own the rights for that material for the rest of your life plus seventy years after your death.  Your heirs will reap the benefits of your intellectual property royalties for an additional seventy years, after which time the material becomes part of the “Public Domain”, free to use by all.  This is contingent, however, on the proper filing of a copyright.  The copyright office does not send notice of improper copyrights, and if a copyright is not executed correctly, it could fall into public domain.  Consider the song “The Caissons Go Rolling Along”, which was filed with an incorrect copyright notice.  The song was not copyrighted and its owners lost all royalties to it, due to the improper copyright notice.  Many people in business will trademark a company logo, but not copyright the very information that the company generates (brochures, promos, ads, instruction booklets, flyers, etc) thus giving the competition plenty of opportunity to “steal their materials”.  Several countries are signatory to “Copyright Conventions”, which means they all agree on protecting each other’s copyrights.  Many European countries are members of the “Berne Convention”, in which agreements were made on both honoring copyrights, and the methods on which copyrights are established.  Some Latin American countries are members of the “Buenos Aires Convention”, which is similar to the Berne Convention.

Do you know the six things you cannot copyright?

(Ideas, blank forms, facts, short phrases, titles, and names.)

 

Trademark:

Do you know the difference between a Trademark and a Copyright?  Well, first of all, a Trademark is a word, phrase, symbol, or design or a combination thereof, that identifies the source of the goods or services of one party from those of another.  A copyright protects an original artistic or literary work.  Secondly, a Trademark identifies a certain company’s logo or moniker that makes it stand out from all others.  Under copyright law you cannot copyright a name; however, under Trademark law, you can register the name and logo of your business and the unique product or service it provides.  So how does one Trademark a company or brand name?  By simply using the name and logo of your company, followed by the symbol TM, you have begun the Trademark process.  If you use it long enough, you will establish a Trademark by common usage.  But it is still not a registered Trademark.  The best way is to register it with the trademark office.  The first thing involved  in registering it is a Trademark search, in which databases are searched to see if anyone else already has that name, or one very similar.  If you clear the name via a trademark search, then you register the trademark with the U.S. Trademark office, and the mark is represented by the symbol ®, which means it is a registered symbol. This gives your company added protection in case another company comes along, and tries to use a mark similar to yours to “cash in” on your fame, quality, or product uniqueness.

Music Publishing-Questions & Answers:

Aside

Music Publishing-Questions & Answers:

By John Anello Jr.

Juris Doctor / Intellectual Property / Media & Entertainment

 www.johnanello.com

 

1)     

Q: I want to record my own composition.  How can I best protect it?

A: File a copyright application with the Library of Congress electronically for $35, or with a written or CD audio copy of your song and a check made out to Library of Congress for $85.00. The form formally called a PA form (Performance Art) is now a CO form, and can be downloaded from the Copyright Office website on the internet, file it on line, or you can call the Library of Congress in Washington D.C. and they will send them to you.  Another kind of copyright form, which is used to record the actual recording of the composition onto CD is called an SR (Sound Recording) form.  To file this, send in a SR form with two (2) copies of your recordings and a check to the Library of Congress for $45.00.

2)

Q:  I want to record a CD and want to sing or perform a famous artist’s composition.  Do I need permission from the artist or composer?  How do I get to use it?

A:  You do not need express permission from the artist.  Once a song is recorded and released by the artist to the public, anyone else may record it.

BUT IT IS NOT USED FOR FREE.

You must request what is called a MECHANICAL (or Compulsory) LICENSE from the publisher, or from a clearance agency that will get the license for you.  You must also pay a statutory royalty, which is set up by Congress, and states a maximum a publisher can charge you to use the song.  (As of this writing the standard automatic statutory royalty for a popular song is 9.1 cents per CD or cassette/per song, provided the recorded song is 5 minutes or less.)

Example: To use one popular song on your CD-9.1 cents for one song, on 1000 CDs pressed would be $91.00 paid to the publisher.

(9.1 cents per CD x 1000 CDs or cassettes =$91.00)

One such clearing agency is the HARRY FOX AGENCY in NYC. If you request a license from them they will secure one for you if they represent the publisher.

By statutory law, a publisher cannot refuse you a mechanical license for a song that has ALREADY been released, and cannot charge you MORE than the maximum set by Congress as long as the song is 5 minutes or less. (If it is more than five minutes, it takes the statutory rate and adds more per minute. He CAN charge you less, and if you are using several songs from the same publisher, you can try to negotiate a lower rate, though he is not obliged to lower it.  Normally the Mechanical Royalty is due to the publisher when you SELL the CD or cassette, not when you make it. However, most publishers will request an “advance” and it is customary in the music industry to give them at least 50% of the total amount due.  Some publishers will request the entire amount paid up front.  Remember that this only covers your re-recording of someone else’s composition, NOT sampling someone else’s actual recorded music.

3)

Q: What if I want to use a popular song in a video, music video, or film?

A: This kind of license is called a SYNCHRONIZATION LICENSE, and is NOT a statutory “automatic” rate.  You must negotiate personally with the publisher, copyright owner,  or clearance agency to agree on a fee for use of the music in your visual production.

4) Q: What if I want to use someone else’s song that has NEVER been released before?

A:  This is NOT covered by a Mechanical License, and you would usually negotiate an advance for the music. If it is a famous songwriter, the advance could be very high.  If it is a new songwriter, you can usually just offer the standard Mechanical License and advance, and they may accept.

5)

Q:  What if I want to “sample” or re-record the ACTUAL RECORDED TRACKS of someone’s record, not just perform the composition myself? What if I use only a few seconds or notes?

A:  If you take ANY PART of someone’s copyrighted material, especially recordings, and sample them, you must get the permission of the owners of both the composition, and the owner of the recorded tracks.  What you will need is a Mechanical License from the publisher, AND a “MASTER RECORD LICENSE” from the record company or owner of the recording.  You MAY NOT just sample someone’s recording and use it on yours, and several companies and artists have been sued over this and lost!

6)

Q:  What if I use someone else’s music on my CD or recording and a duplication house presses my CD for me.  Am I liable, or are they liable for copyright infringement?

A: Usually the duplication company will ask you to sign a legal form indicating that you have secured full rights to all the intellectual property (music) you represent, and have received
all necessary permission and releases.  So the fact is that YOU are liable for damages.

John Anello Jr J.D.

Ó 2016, All Rights Reserved

The Trademark Process

The Trademark Process

By John Anello Jr.

http://www.johnanello.com

 

It’s hard to determine what a trademark ultimately costs

There are several stages to it.

 

First you must perform a thorough search the name Nationally, Statewide, and Internationally, and “Common-law” to make sure no one has it or is using it.,

 

Then you have to examine the mark to see if it is strong enough

(A Trademark cannot be just “descriptive”. You could never get a trademark called “Comfortable Jeans” because it would merely be descriptive. That’s why they have names like Diesel Jeans, Levi’s Jeans, etc.)

The name has nothing to do with a description of the product.

 

ALSO: It cannot be geographically misrepresentative, like saying “British Cookies” when they are not from Britain.

 

Once you select the Trademark name you want, then it is filed with the US Patent and Trademark Office.

 

THEN: it is examined by a Trademark Examiner to see if it is strong enough and also does not conflict with other existing trademarks. If the Trademark Examiner objects to the trademark, he/she will issue an OFFICE ACTION, objecting to the trademark, blocking the trademark. At that point, you must go to task with the trademark examiner and offer a defense to the office action. If you win that process, your trademark is published in an International publication for all to see. If anyone in the world objects to your trademark application, they can file an argument, and then you have to go to the Trademark Trial and Appeals Board also referred to as TTAB (Trademark Court) and argue for it. If you win, you will receive the registration of the trademark.

There are two kinds of applications, one is “INTENT TO USE” the mark, meaning you intend to use it in commerce. You have 6 months to deliver the evidence.

 

The other application is “Already In Use”. In addition to the application, you have to provide evidence that you are really doing business with the trademark and not just

“sitting on it”.

 

So you have to show the first day it was ever shown in public, the first day it was ever used in Commerce, and a sample picture (JPG) of the product showing the trademark on it.

 

Filing and Legal Costs can very from $500 or $600, to $2500+, depending on how much resistance you experience to your application.

 

                                                                                                                                                Ó  John Anello Jr J.D.  2016,

All Rights Reserved