Navigating a Sea of Intellectual Property

[.opening-paragraph]The two forms of intellectual property that most small businesses are likely encounter in their marketing and branding initiatives are “copyrights” and “trademarks.” It’s important to understand the basic principles of these two property types, both to protect your own rights and to avoid inadvertently infringing on another entity’s IP.[.opening-paragraph]

Part 1: The Basics

Copyright[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]Not to be confused with “copywriting,” which is the term used for the act or profession of writing text in marketing and advertising.[.tip-text][.tip-box][.tip-wrap]is a special type of property automatically granted to the author of an original work, providing them exclusive control over whether, when, and how their work is used. This legal protection allows authors to sell or publish their work without fear that someone else will try to call it their own or even try to profit off of it themselves.

The term trademark is usually associated with logos, but as the US Patent & Trademark Office explains, a trademark can be “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.” The legal protection provided by a trademark is analogous to identity theft protection: it prevents another entity from using your good name to sell their product.[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]You might also encounter a the term “service mark” (SM). Technically, trademarks are intended to represent products, and service marks are intended to represent services. But even the USPTO uses the terms interchangeably, so we will, too.[.tip-text][.tip-box][.tip-wrap]

Just about any “creative work” can be protected by copyright. Paintings, music, literature, brochure copy, photographs, videos, graphic design, architectural works, and software code, to name a few. In contrast, trademark law only applies to names, symbols, or other devices when and as they are used for the identification of a brand.

So, can something be copyrighted and trademarked? Certainly! A few examples might include a mascot illustration or musical notation of a jingle, which are both creative works and common branding devices. On the other hand, simple items like a name, tagline, or color are explicitly ineligible for copyright. A logo may or may not be copyright-able—many utilize very simple shapes, common symbols, and/or lettering adapted from existing typefaces,[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]It's a weird quirk in the law that typeface designs cannot be copyrighted, but font software can. You can learn more about that in Eric Schrijver's Copy This Book.[.tip-text][.tip-box][.tip-wrap]and so are unlikely to be considered distinct enough to warrant copyright protection.

It’s also important to understand who is protected by each type of IP. In the mascot illustration example above, the copyright would be granted to the illustrator, not his client. But if his client uses the illustration as a branding element by a company, the company would own the trademark.

Part 2: COPYRIGHTS in marketing & branding

Purchasing Materials vs. Purchasing Rights

A couple years ago, a crypto investment firm made the news for spending $3 million at auction to acquire a copy of a rare book containing a late film director’s concept art and storyboards for a never-produced version of Dune. They somehow got the idea that ownership of the book gave them the right to republish it and even produce the film described in its pages.

Boy, were they wrong! They quickly learned that ownership of an object does not mean you have the right to reproduce or distribute the content within it. Which, if you think about it, is the whole point of copyright law![.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]You can read more on this silly story here.[.tip-text][.tip-box][.tip-wrap]

Business owners, you need to be crystal clear on this fact. [.highlight-yellow]Paying for a thing — even paying someone to create a new thing specifically for you—does NOT mean you own the copyright to that thing.[.highlight-yellow] As explained above, copyright is granted to the author, not the buyer.[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]So, the author is usually a person or group of people who actually produced the work. But, if that person is a statutory employee of a company, and the employee is producing the work as part of his normal duties, then that work may fall under copyright law’s “work for hire” exception, in which case the legal author of the work is the company, not the employee. But even in that case, if your company is hiring an outside marketing firm, any copyrights are bestowed to the creative firm you hired, not yours.[.tip-text][.tip-box][.tip-wrap]

This is why, when you engage a creative professional to produce marketing and branding materials or any other creative product for your business, you would be smart to demand a contract that is explicit about what rights are (and aren’t) being transferred.[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]A copyright can be “assigned” (that is, transferred from the creator to another owner), or usage rights to the work can be “licensed” in any number of ways. Typically, licenses are either “exclusive” (giving one entity sole right to use the work) or “non-exclusive” (allowing the owner to sell licenses to as many customers as they want), and the license may come with restrictions covering the territory, duration, and/or manner of use. In general, the larger piece of the copyright pie you want, the more you should expect it to cost.[.tip-text][.tip-box][.tip-wrap]

Mixed Authorship & Third-Party Materials

Beyond the creative product of the designer you’ve engaged for your project, almost any graphic design work is a mix of various authors’ works, whose copyrights must be respected: the copywriters, the photographers, the designers of any preexisting design elements, the font software developers, etc. Let’s consider an example.

[.narrative]Ed Vandalay, owner of Vandalay Industries, hires a freelance graphic designer, Sofia Koh, to design and print a brochure for his company’s product line. In the course of her work, Sofia makes use of a range of technologies, content, and assets, including 5 fonts and 12 stock photos. She purchases licenses for each, completes the design, and produces a beautiful, effective brochure. Ed and his sales team are so pleased with the book, they want to make use of the design and content for their website, social media, and other materials that are managed by their in-house marketing team. Ed asks Sofia for all the files. But here’s where it gets sticky. Sofia explains that she is not authorized to send him the fonts and images used in the brochure layout, because the licenses are not transferable. She refers Ed to the font foundries and stock photo sites, to purchase separate licenses for Vandalay. But Ed is confused—why should he have to pay for fonts and images contained in a brochure he already paid for?[.narrative]

I can’t count how many times I’ve had conversations like this one. I sympathize with the Ed’s position, but there’s no doubt Sofia is right. It’s generally not permissible for a designer to share copyrighted materials they purchased from a third party, even if the materials were purchased specifically for a client’s project. In most cases, each user needs a license.[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]There are exceptions, including creative works that are offered “free for commercial use”. Examples include stock images on sites like UnSplash, fonts like those on Google Fonts, and a wide variety of content on CreativeCommons.[.tip-text][.tip-box][.tip-wrap]

Ideally, these are the types of issues that should be discussed before a project begins, but (as in this case) the designer and/or client can’t always predict the future. So, knowing the rules of the road can help your company avoid surprises.

Don’t Meme Me, Bro: The Dangers of Found Images

We can’t talk about third-party materials without mentioning the habits of social media. Creating, modifying, and sharing of found images might be common practice on social platforms, but you should be careful of the practice intersecting with your marketing. The image your well-meaning social media manager is posting is probably copyrighted, and if there are people in that photograph, your use of their image may represent misappropriation. We don’t have time to get into personal privacy and publicity rights, here, but (to keep it simple) never use any person’s name or likeness to promote your product, without permission.

Copyright Notice & Registration

You are certainly not under any obligation to announce that your work is copyrighted. It has been protected by copyright law from the moment you created it. But just as a “no trespassing” sign can make people think twice about jumping a fence, a copyright notice can be a preventative measure.

Any creative work can be tagged with the “©” symbol. Conventionally, this symbol is paired with the author’s name and year of creation (for example, this article’s copyright notice would read “© 2024, Rush Creative”). To use the © symbol, no official registration is required, and there’s no application or review process. But registering with the US Copyright Office is an extra layer of protection, and may be required in order to defend your materials in court. Here’s what the Copyright Office has to say:

Copyright exists automatically in an original work of authorship once it is fixed, but a copyright owner can take steps to enhance the protections. The most important step is registering the work. Registering a work is not mandatory, but for U.S. works, registration (or refusal) is necessary to enforce the exclusive rights of copyright through litigation. Timely registration also allows copyright owners to seek certain types of monetary damages and attorney fees if there is a lawsuit, and also provide a presumption that information on the registration certificate is correct.[.close-quote][.close-quote]

Fortunately, copyright registration is not an expensive or terribly time-consuming process. The application fees start at just $45 (apart from whatever legal fees you may incur).

The choice about whether or not to register a copyright largely depends on what kind of materials we’re talking about. If this creative work is the product you’re selling, then it is probably foolish not to register, but if the creative work in question is a brochure to sell a product… maybe that’s not worth the trouble? And, of course, it’s the copyright owner(s) who would have to complete the registration process. Talk to your attorney.

Sorry, Skynet: Copyright & Artificial Intelligence

As generative AI transforms the design industry, I’m surprised there have been so few red flags raised about the IP issues related to using AI in a company’s marketing and branding. As the US Copyright Office explains, “it is well-established that copyright can protect only material that is the product of human creativity. [.highlight-yellow]Most fundamentally, the term ‘author,’ which is used in both the Constitution and the Copyright Act, excludes non-humans.”[.highlight-yellow]

Materials entirely created by generative AI are clearly not eligible for copyright protection. But what about works created as collaborations between AI and human writers or designers? At what point does the software become a paintbrush, rather than a painter? I'm sure courts will be grappling with this for years. Meanwhile, I urge creators and clients to be very careful about how and when they use generative AI. And I think it is incumbent upon all creative professionals to be open with their clients about their use of such technology.[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]You can read more about the current state of the law regarding AI and copyrights, here.[.tip-text][.tip-box][.tip-wrap]

Copyright Best Practices

Of course, this is just the beginning. There are countless other issues about copyright to tackle...What constitutes“fair use”? Where does inspiration end and plagiarism begin? How much can you quote or sample before it’s copyright infringement? These are issues that are out of the scope of this article, but I will offer a few tips:

• If you didn’t create it yourself, assume someone else owns the rights to it—particularly commonly licensed products, like fonts and photos.
• If you pay someone to produce any kind of creative work for you, negotiate the rights transfer up front.
• If you (or your employees, or designers you hire) produce something that requires software, fonts, images, text, or any other materials acquired from a third party, make sure you understand where those assets came from and what the copyright implications are. Better yet, discuss the ground rules for use of third-party assets before the project begins.

Part 3: TRADEMARKS in marketing & branding

Trademark Notice & Registration

And as with copyrights, you are not obligated to announce that your branding device is a trademarked. Your name, logo, tagline, brand color, or other device is protected by a trademark simply by virtue of using it in commerce. Still, you can remind others of your rights simply by tagging the device with a simple “TM”. As the USPTO says, “The symbol lets consumers and competitors know you’re claiming the trademark as yours.” Of course, that word claiming is instructive—until it’s tested in some registration process or court proceeding, your label is just an assertion.

That brings us to the famous [.reg]®[.reg]. Unlike all the other labels we’ve discussed here, this one cannot be used without explicit permission. You have to (first) apply for trademark registration with the US Patent & Trademark Office, and (second) convince them to approve your submission. Unless and until your federal registered trademark is granted, you can only use a TM.[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]Also, remember that trademarked devices are registered individually. If your logo contains multiple parts (text and icon, for instance) and you only seek registration for the version of the logo that contains both, then you can’t use the [.reg]®[.reg] symbol when the icon appears alone. And as you develop additional versions or variations on that trademarked device, you’ll have to apply for trademark registration for each one, if you want them equally protected.[.tip-text][.tip-box][.tip-wrap]And the [.reg]®[.reg] only applies to federal trademarks. There is no special symbol recognizing that you have a registered trademark at the state level. Here’s what the USPTO says about trademark registration:

You become a trademark owner as soon as you start using your trademark with your goods or services. You establish rights in your trademark by using it, but those rights are limited, and they only apply to the geographic area in which you’re providing your goods or services. If you want stronger, nationwide rights, you’ll need to apply to register your trademark with us.[.close-quote][.close-quote]

But fair warning: trademark registration can take years and cost thousands of dollars, after legal fees. Plus, there will be ongoing costs to maintain the registration, over the years.

And another caveat: federal law only protects interstate commerce. If your company only does business within a single state, you may not be eligible for federal trademark registration, and it probably wouldn’t help you with local disputes, anyway. Here’s the USPTO again, “Trademarks that are not ‘used in interstate commerce’ are not eligible for federal registration and cannot be protected under federal trademark law.”

State trademark registration generally provides less thorough protection, but is generally quicker and cheaper to obtain. And it might be the only option, in some cases. If this kind of protection is important to you, consult an intellectual property attorney.

What Is Trademark Infringement, Anyway?

As you are creating the elements of a brand and the materials that will ultimately become trademarks representing that brand, it’s important to understand the principles that guide trademark law, to create the most defensible trademarks.

The challenge for any brand development team is that there truly is nothing new under the sun. Suppose your company is named “A-BIRD,” and you decide the perfect representation of your product is a letter “A” with a bird in it. But a quick google search will show you countless examples of that same name and/or mark already being used by dozens of companies—does that mean you can’t use your name or your logo, without risking trademark infringement?

It depends.

According to Cornell Law School,“Trademark law protects a trademark owner’s exclusive right to use a trademark[.highlight-yellow] when use of the mark by another would be likely to cause consumer confusion[.highlight-yellow] as to the source or origin of goods.” So, it is not necessarily trademark infringement for another company to use similar (or even identical) name, logo, or other trademarked device you employ. It’s only infringement if the use of that device would likely cause a consumer to confuse their product with yours.[.tip-wrap][.tip-button][.tip-button][.tip-box][.tip-tri][.tip-tri][.tip-text]You can read more about the "likelihood of confusion" standard, here.[.tip-text][.tip-box][.tip-wrap]

The practical consequences of this are that trademarks become siloed by geography, industry, and marketing channels. Two companies named A-BIRD and/or featuring the same A+bird logo may not be violating each other’s trademarks, if they operate in different regions of the country, if they sell completely different products, and/or if they otherwise market to a completely different set of customers. Case in point: consider how many companies are currently using the name “Delta”.

Ultimately, from a legal standpoint, it’s less important whether anyone on the planet is using a similar trademark device, and far more important to determine whether the device you want to employ (or something similar to it) is being used by a direct competitor, or other local business, or other brand that might be seen by the same audiences you’re marketing to. That’s not to discount the importance of originality. I would never advise a client to knowingly duplicate another entity’s brand devices—not only is that unethical, but it defeats the purpose of branding. Still, the focus should be on telling your story and distinguishing your product from your competitors, not protecting it from every conceivable trademark dispute.

Trademark Best Practices

A few tips to help you avoid trademark issues, as you develop your brand:

• Begin your branding project with a “discovery” stage that includes surveying the competitive landscape. Familiarize yourself with their marketing and branding materials.
• Avoid the use of any templated or ready-made elements to represent your brand, especially stock art logos and illustrations.
• Perform a thorough vetting of any new trademark device (especially your name and logo) before you publish it. Search state and federal trademark databases, local business directories, industry-specific listings, Google, etc. For public-facing brands with a national audience, you may want to hire a trademark search consultant.
• But above all, hire a good designer! You’re far less likely to infringe on anyone else’s IP (or be the victim of infringement) if your visual communications are a step above the sea of mediocre work out there. [.end-marker][.end-marker]