Tip of the Day: Protecting book titles part II

If you can register a book title as a trade mark, you've put yourself in a very strong position. Copyright in the book will expire 70 years after the death of the author, whereas a trade mark can keep going for ever. However, a trade mark's life can be cut short if it stops being distinctive: the Registry's own examination guide explains that the name of Sherlock Holmes has been used over the years by too many traders for it still to function as a trade mark. It distinguishes Spiderman, which is not only the name of a fictional character but is also capable of identifying the goods of one trader. So, as with other trade marks, it's important to take care of book titles that you might wish to protect this way.
And other people might well have registered literary trade marks for their own purposes. "Ulysses" is registered in class 16 (the appropriate class for books) - but not by the Joyce estate: it's the trade mark of H-D Michigan, Inc., who also sell motorcycles and related goods. They own many more trade marks too, mostly showing the full name by which they are better known, Harley-Davidson. Should it ever come to it, the Joyce estate would have rights to carry on using the name for books, although whether that use would be considered trade mark use is a moot point. That does show the importance of checking for other people's registered trade marks before you choose a title for your book, though.

Tip of the Day: Protecting book titles

A friend asked me today about protecting a book title, and it's a good subject for a general tip. Book titles - and similar things, such as song titles - won't usually be protected by copyright. A great deal of thought might go into them, but it's not enough to make them original literary works. But the law of passing-off might give them protection, and they might be registrable as trade marks. A bit of lateral thinking might well get you the protection you hope for.
Trade marks are, however, supposed to be badges of origin, and book titles aren't. They often refer to what's in the book rather than indicating the commercial source of the book, which is usually done by identifying the publisher separately or in the name of a series, such as the Rough Guides. As trade marks, titles that describe what the book's about will be pretty useless.
With time, a descriptive trade mark can become registrable: it might also be protected under the law of passing off. Marketing activities and evidence of sales revenue will help show that the title has broken through the barrier and acquired the features of a trade mark. So too will ancillary products, commercial spinoffs, and merchandising: they might exist at a distance from the book, but they will help make the title an indication of origin. "Gone With The Wind" has been a UK registered trade mark since 1993, "The No 1 Ladies detective Agency" since 2004, though that title could be considered to have attached itself to a series of novels.

Tip of the day: compensation for infringement of copyright

If someone infringes your copyright, your financial remedies will be either damages or an account of profits. The idea of damages is to put the parties back into the position they would have been, but for the infringement: if you'd have granted a licence had you been asked, a reasonable royalty will be the measure of damages employed, and if you wouldn't the judge will probably look at what the defendant has saved itself.

In an account of profits the court will find out what profit the defendant has made from the infringing act, and award that to the claimant: the profit, after all, is properly theirs.

Once upon a time (before 1988) a rather draconian remedy called conversion damages was available. The court would treat all the takings (not just the profits) from the infringement as the claimant's. The possibility of losing all the proceeds, not just the profits, made would-be infringers (including those whose activities might be marginal) think twice before going ahead.

Now the courts can award such additional damages as the justice of the case may demand. This sounds promising, but additional damages are very rarely awarded, for the simple reason that they push the boundary between compensation and penalty too far. Damages are not there to penalise the infringer, and once an award of damages has been made (so the claimant is restored to the position where they should be) there can be no room for anything to be added that can truly be called "damages".

Some countries - the USA being a prime example - give statutory damages. You can recover a certain amount without having to prove that you have lost anything. This is the blunt instrument that has been used to attack illegal filesharers in the last few years, resulting in substantial awards of damages against them - notwithstanding that very little actual damage has been caused. Statutory damages neatly sidestep the issue.

Tip of the Day: Avoiding copyright infringement

A very small and rather obvious point that came up recently - but it's sometimes the small and obvious ones that are most easily overlooked. Suppose you heve asked someone to create something for you that will be protected by copyright. Ideally, you'll have taken an assignment of the copyright, but there might be many reasons why that isn't possible - and one might be that the project is still in its infancy.

If you need to bring a new programmer/photographer/composer/writer/whatever in later to finish the project, don't fall victim to the temptation to show them what the previous person had done. Keep that completely out of sight. Go right back to the basics, whatever it was that gave you the idea in the first place. Then there can be no suggestion - no serious suggestion - that the second person infringed the copyright of the first.

There might be arguments that you did actually have the right to use the first person's work, but you shouldn't rely on them. They are arguments you will have eventually to present before one of Her Majesty's judges, and they make for a very critical audience. moreover, they aren't an audience that pays you so they can enjoy the show: they require you to pay for the privilege of appearing before them, and you'll have to employ a very expensive supporting cast too.

Tip of the day: trade marks as designs

Not feeling very inspired today, having spent yesterday in the office dealing with a visit from our regulator. Why, I wonder, is it thought that professions need to be regulated? The answer, I fear, is that being a solicitor is no longer a profession, it is a mere business, and one cannot rely implicitly on the integrity of some of its members, so the majority have to submit to a level of control designed for the truly dishonest or incompetent.

Anyway, today - following on from my comments about passing-off law as a back-up where design protection fails (as design protection usually does) by highlighting one area where it will work the other way round. The design that makes up your trade mark could also be protected as a registered design. The requirements for a registered design are stiff: it must be novel and have individual character. Trade marks, by contrast, even get better as they get older. But a new business or product is likely to have a new logo, and if it functions as a trade mark it has distinctive character which is at least part of the way to individual character. A rebrand might produce some registrable designs, too, though here the stumbling block will be that the character of the new design will often owe something to the old one and 'individual character' might be hard to show. But it's easy (and cheap) to get a design on the register, and these days maximising your IP portfolio is often the name of the game.

For an example of how this might work, see here and here.

Tip of the day: imitating designs

When I present courses, I like to stress that the different IP rights are quite independent, each designed to do its own job. The intellectual property field displays a lack of joined-up thinking not because of any lack of intellectual rigour but simply because the rights are not intended to interoperate.

They do, however, overlap to some extend, and there are also some provisions which display a little negative joined-up thinking, if you like: for example, the provisions in the Copyright, Designs and Patents Act that restrict copyright’s incursions into the designs field. The Trade Marks Act also ensures that many designs will not be eligible for dual protection as trade marks too.

There are also plenty of areas of overlap. All five ways to protect a design will often co-exist quite happily: there can be UK and EC registered designs, Community unregistered design right, UK unregistered design right and even a touch of copyright. But even if none of them applies – problably because they have all expired – the design might still be protected.

This is what happened in the recent Numatic v Qualtex [2010] EWHC 1237 case in the High Court. Qualtex had done their homework before they tried to make their own replica of the Henry vacuum cleaner: they ensured there was no remaining design protection. What there was, though, was a passing-off action, relying on the fact that the public recognised a tub-shaped vacuum cleaner with a shiny black ‘bowler hat’ type lid even if it didn’t say Henry on it and even without the face decals that decorate the original.

The get-up (hat the Americans would call ‘trade dress’) of a product, or of a business, can be protected by a passing-off action. There’s nothing new about it. It will cost a lot, but if your key market is threatened by an imitator that’s probably not going to be your first concern. As for what you can get away with, the old copyright maxim, ‘what is worth copying is worth protecting’ doesn’t apply – but if what you’ve produced is clearly an imitation it might well go to far. The question in a passing-off case is whether you are deceiving customers, and imitation – notl to intellectual property lawyers, the sincerest form of flattery – will often, perhaps nearly always, lead to deception.

Tip of the day: choosing a trade mark (1)

The number of trade marks in the world is finite. It might be large, but it doesn't go on for ever. Chances are, your preferred new trade mark will be similar to someone else's, and if it's similar enough to create a likelihood of confusion and the other people have theirs registered for similar goods or services, you're in trouble.

Of course, you can do a lot to put clear blue water between their trade mark and your proposed one. But that concept of likelihood of confusion creates a fuzzy edge to trade mark protection, and you can never be entirely sure whether you are heading for trouble.

One possibility in this sort of situation is to talk to the other trade mark owner. Of course this will alert them to a problem they didn't know about otherwise, and they might take a more hard nosed approach than they would if they found out about you only after you were up and running, at which stage it will cost them money to oppose your application or to sue for infringement. But these days the chances are that trade mark owners will oppose or sue more readily than in the past: it's because people have become so aware of the value of their trade marks, and they don't want anyone damaging it. I don't think you should normally assume that you can get enough momentum by ploughing straight on, though more litigious colleagues might advise differently.

Tip of the day for 10 June: getting copyright

It might seem to be too good to be true, but you don't need to do anything to secure copyright. All you have to do is create something that copyright will protect. You don't even need to put © on it, though there are good reasons to do so when you publish copies.

This might also seem to be too easy to be true, or to be entirely good for you. That's often right. When you say you own copyright in somethng, or that it is your copyright work, all you are really doing is claiming that you have it. To support that claim, you might need evidence. What if someone accuses you of copying their work, or you find someone who seems to have copied yours? Which one was first in time will then be an important matter (though it won't be the only thing to argue about, because if there's no copying there's no infringement).

To prove that you had created a work by a particular date, you can post a copy to yourself or some trusted third party (your lawyer might be a good choice) and keep the unopened package, conveniently dated by the Royal Mail, in a safe place. You could deposit the copy with a bank or other agent, of course, but the posting-to-someone option is particularly easy.

The United States still operates a copyright register, so there is somewhere in the world where you can officially deposit a copy and get a filing date. However, you should beware of ne thing: your work will be published as part of the process. If it's not confidential, that doesn't really matter, but if it's something like an idea for a film or TV series this is exactly what you don't want. A useful alternative which does meet the needs of the authors of such things is provided by the Writers' Guild of America, and it is available to non-members. But This is not legal advice, and you should ensure it is right for you first - and equally you should get professional advice on other tips given here. All I'm trying to do is point you in the right direction, and help you avoid some pitfalls!

Tip of the day

Until I run out of ideas, I'll present a tip every day - OK, let's say every weekday - for the benefit of readers - and the world at large. Feel free to request anything you think should feature.

I always tell people who come on a course where the subject comes up that they must remember that there is notihing in UK copyright law to make the commissioner (even for money or money's worth) of a copyright work the owner of copyright in it. That has to be done by assignment, and an assignment has to be in writing and signed by the copyright owner if it is to be legally effective.

Many businesses, and private individuals, hire others to create something for them: a photograph, a graphic, a painting, some prose, a piece of music, a film. It might be perfectly OK for copyright to remain with the creator - who can then sell the same thing, or one identical to it, to someone else, perhaps - but there will certainly be situations where this is not desired. Imagine if your business did not own copyright in its own website: it would be difficult to move it to another host. And trade marks - logos in particular - frequently comprise, or contain, copyright works. You can't leave them in the control of a graphic designer.

When you commission the making of the work, whatever it is, you should make a written record of the terms. This is what is commonly called a contract - and it's the ideal place in whcih to include an assignment. Pay your lawyer to draw it up for you. It's worth it. Because this site does not give legal advice (I am deliberately keeping these tips general) I'm not going to offer a form of words, I'm afraid.