You have obtained federal trademark protection, so you should
feel that all of your intellectual property rights are protected,
right? What if you have not obtained the appropriate intellectual
property protections? In fact, many people misunderstand the scope
of the intellectual property rights they possess and it has ended
up costing them significantly. A recent Ninth Circuit case
illustrates this precise dilemma, and what's at stake by not
clearly understanding and differentiating between different aspects
of intellectual property protection.
BACKGROUND ON THE CASE
In Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke and
DJ Services, LLC, the Ninth Circuit reinforced the principle that
the Lanham Act (the "Trademark Act") is limited to
protecting consumer confusion over the origin of an actual good and
cannot be used to protect content. The Plaintiff, a producer of
karaoke music tracks, alleged trademark infringement and unfair
competition, among other things, against the owner and operator of
a karaoke business. However, in actuality, the Plaintiff was
improperly seeking copyright protections under the guise of
trademark law – causes of action to which the Ninth Circuit
identified as a "species of mutant copyright."
Yes, the Plaintiff in Slep-Tone had a valid trademark. However,
it is apparent that the Plaintiff did not have a clear
understanding of the rights actually possessed. Whether you are a
big or a little fish, it is imperative that you remember these
three simple steps when seeking intellectual property
1.Have a clear understanding of what exactly you want to
When deciding on intellectual property rights, it is important
to determine the type of protections that you are seeking. This may
sound simple, but your objectives may likely blend together. For
example, imagine you are a small business owner who has just
designed a logo for your business. Initially, you may identify that
you want this logo to serve as your trademark and thus you want
that sort of protection. However, this logo could also be viewed as
a "work of authorship" and could also qualify for
copyright protection. Recognizing your intellectual property for
what it truly is, rather than simply a "trademark," will
allow you to expand your intellectual property protections as
broadly as necessary.
2.Understand the different areas of intellectual property
As clearly stated by the Ninth Circuit in Slep-Tone, a
"good" for the purposes of trademark law is, "the
'tangible product sold in the marketplace' rather than the
creative content of that product." There is a clear difference
here and the courts have shown dedication to policing and enforcing
The Lanham Act is the primary federal statute that governs
trademarks, service marks, and unfair competition and provides
protections against unauthorized usage of a trademark in the stream
of commerce. Conversely, the Copyright Act protects original works
of authorship, fixed in any tangible medium of expression. Works of
authorship can include literature, music, dramatic works, pictures,
art, sound recordings, movies, choreographic works, and
Visit the United States Patent and Trademark Office here to
learn more about trademark protections. Likewise, the Library of
Congress website offers resources to learn more about copyright
3.Understand how to properly enforce your intellectual property
Even though the Ninth Circuit in Slep-Tone acknowledged that
there may have been unauthorized use of the Plaintiff's tracks,
it refused to extend relief due to Plaintiff's failure to
enforce the appropriate rights. In this case, the Plaintiff may
have had a strong cause of action for copyright infringement,
instead of the protections of a copyright via a trademark
infringement cause of action. If you feel that your intellectual
property rights have been violated, it is crucial to identify and
determine the appropriate manner of enforcing your intellectual
property rights through the proper administrative and litigation
channels. As always, it is important to consult with an attorney
for a more detailed analysis on trademark and copyright law and the
applicability of these laws to your intellectual property rights.
When you come to the table with these three steps in mind, you
surely won't miss a beat!
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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