The document discusses trademarks, copyrights, and the associated risks. It notes that trademarks protect anything that identifies the source of a product or service, and rights are derived from distinctive use in commerce. Copyright is created by fixing original expressions in tangible form. The document warns about risks like infringement through unauthorized use of protected trademarks or copyrighted material, advising readers to conduct clearance research before use. Failure to do so could result in injunctions, damages, and legal fees exceeding $250k.

1. Trademarks and Copyrights:
Rights or Liabilities?
Presented by John Nishi
Oct. 18, 2010
© 2010 All Rights Reserved.

3. Trademarks
Trademarks – ANYTHING that identifies the source
of a product or service
• Words Brand Name
• Symbols & Logo Product
• Colors* Shape
• Shapes*
• Sounds*
• Smells*
• Textures*
• Tastes* (?)
* if non-functional

4. Development of Trademark Rights
Rights derive from USE of a DISTINCTIVE mark in commerce
• Commercial "Use" of Mark
• Distinctiveness
– inherently distinctive (fanciful, arbitrary, suggestive)
– descriptive but with acquired distinctiveness
– non-distinctive (merely descriptive or generic)

5. Development of Trademark Rights
• Registration is advantageous but not necessary
– Presumption of national rights
– "Constructive Use" date

6. Development of Trademark Rights
The TM and  Symbols …
• "TM" symbol represents only a claim of rights;
does not establish rights
• Use  only after Federal registration

7. Trademark Risk
Proactively clearing a new trademark for use is AT LEAST AS IMPORTANT
as establishing enforceable rights

8. Trademark Risk
Likelihood of Consumer confusion is the
infringement standard
• similar (not necessarily identical) marks
• related (not necessarily competing)
commercial activities
Dilution of famous brands

9. Trademark Risk
Scope of activities that create potential liabilities is broader than scope required
to develop rights
• Business Name
• Domain Name
• Advertising Campaign

10. Trademark Risk
Conduct CLEARANCE RESEARCH …
• BEFORE using commercially,
• BEFORE you must commit to brand
• BEFORE filing for registration &
• BEFORE you get emotionally attached

11. Copyright Ownership
Rights created without registration by fixation of original expressions into
a tangible form
• protects expression (not idea)
• must be fixed in tangible form
• Registration is Optional, Easy & Inexpensive
– provides notice
– preserves statutory damages

12. Copyright Ownership
Copyright Notice Recommended
• (© or "Copyright") + Yr. Pub’d + Owner
– Example: © 2005 Acme Products

13. Copyright Ownership
"Works Made for Hire": Must acquire ownership by assignment if
Copyrightable Work is created by a non-employee (with very few
exceptions)
• Make Copyright Assignment a condition of hiring/engagement

14. Copyright Risk
BEWARE of a business plan that relies on use of another's copyrighted
material
• Music at work = public performance
• Photocopies of news/scientific articles
• Software (Unauthorized Users/Modification)

15. Imagine never
thirsting … it
Copyright Risk isn't hard to do
BEWARE of "borrowed" works < 120
Yrs Old
• Recall: Copyright
automatically attaches the
moment a "work" is created
• Duration: Author's life +70
years
– Works by a company
employee last 95 years
from first publication or
120 years from creation

16. Copyright Risk
Infringement by
• reproduction
• modification
• distribution of copies
• public performance or display

17. Your Exposure
Trademark Infringement
• Injunction + Damages + Legal Fees (worst case)
• Legal fees easily greater than $250k
Copyright Infringement
• Legal fees + Injunction + Damages
• Legal fees easily greater than $250k

18. John Nishi
Dickinson Wright PLLC
301 E. Liberty Street, Suite 500
Ann Arbor, Michigan
734.623.1938
JNishi@DickinsonWright.com