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Trademark and Copyright Best Practices for Entrepreneurs & Creatives

by Deserae Weitmann
freelancing, money & life

Trademark-Copyright-Best-Practices

Intellectual property can be treacherous waters. Just ask Fine Bros Entertainment (“Fine Bros”).

Following their application for a registered trademark on the actual word “React” as it applies (very broadly) to internet videos, the Fine Bros announced a new licensing program called “React World,” discussed by Tube Filter.

The goal of the program was to expand the Fine Bros worldwide content assets by allowing fans and content creators to create their own “React” videos by registering for the program thereby receiving Fine Bros assets, logos/graphics, and “format bibles,” as well as creative and production guidance in return for a percentage of the profit from the “licensed” videos.

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Following the announcement, hundreds of thousands of followers unsubscribed from the main Fine Bros YouTube channel.

Want to avoid this kind of debacle in your business? Check out our entire class on Copyright, Trademark, and Intellectual Property for Entrepreneurs with Rachel Rodgers.

The React World program, which quickly spiraled into a worldwide internet controversy, has been cancelled, the trademarks around “React” have been rescinded, and the announcement of the program has been deleted from the Fine Bros YouTube channel.

This is about how the Fine Bros tried to play the intellectual property game and lost. A summary guide to what can and cannot be owned in the age of YouTube.

Why the Controversy?

Well, as the Fine Bros highlighted in their announcement video, they were not just attempting to trademark and license their specific brand assets (i.e., their logo, brand name, etc.), including the word “React,” they were making a move to de-facto trademark and/or copyright and license the “react format” of their videos, known generally in film as “reaction videos.”

Reaction videos are a format of film in which previously-filmed content shown to people and their reaction to that content is then captured on video.

The irony spurring the most vehement reaction [pun intended] is that the Fine Bros use previously-created content to create their reaction videos and claim the fair use doctrine to do so, attempting to shield themselves from infringement claims while essentially attempting to copyright (if not de-facto trademark) an entire format.

Adding to the usual backlash when a corporate entity tries to lay legal claim to generic terms, is the Fine Bros’ reputation for attempting to enforce their dominant hold on the reaction video scene, like when they took to Facebook to convince their fans into lashing out at Ellen DeGeneres for making a reaction video of kids reacting to outdated technology, a post that they have since-deleted.

Luckily someone got a screenshot of it.

Trademark and Copyright Best Practices for Entrepreneurs

What is a Trademark?

A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others, typically a brand name or logos that appear on goods.

What Exactly Can Be Trademarked?

Before you even think about developing a business based on a brand, logo, symbol, etc. it is VERY important to search for existing marks prior to using, claiming, and/or registering a mark. You can search the Trademark Electronic Search System (TESS) on your own, however, because of the complexity of the search, the classes, etc., it is highly recommended that you hire a trademark attorney to do a complex search of official records as well as other sources to clear your potential mark BEFORE you start using it or invest in assets displaying the mark.

Trademark and Copyright Rules for Entrepreneurs

You can find out more about doing a search on existing trademarks in Rachel’s class right here. If a mark is already registered in a similar class of business as yours, you CANNOT use it or you will be infringing on their mark.

Even if available, these types of marks will likely not pass registration or be protected by Trademark:

• Marks that are similar in sound, appearance, meaning, design or commercial impression to a mark that is already registered AND there is a likelihood of confusion because the goods and/or services of your business are similar to those of the mark already registered

• Name marks

• Marks that described the origin of the good

• Offensive marks

• Foreign term marks that translate into a descriptive or generic term

• Titles of books and/or movies

There is another class of marks that can technically be trademarked, under specific circumstances, but have an uphill climb.

These are called “weak marks.” What are weak Trademarks? Well, the weakest of the weak are what are called “generic marks.” Generic marks are marks that are the name of the good or product offered by the service, i.e. “H2O” for a water beverage or “T-shirt” for a retail store that sells t-shirts. Or, say… “react” to describe a reaction, generally.

Can “React” Be Trademarked?

Technically, yes.

How do I know what can be trademarked and copyrighted

WAIT – you said generic words to describe the actual good were not good marks! The trademark application submitted by the Fine Bros, if granted, would prohibit others’ use of the word “react” when used specifically to describe internet/web-based videos that portray a reaction to content.

Though this may seem like a broad application, in the world of trademark, it is technically specific enough to pass muster. However, the internet backlash is based on whether “react” should be able to be a registered trademark.

Reaction videos have been around for decades, predating YouTube. The internet masses argue that a verb which describes an act, even thought the act of “reaction” is in fact what is depicted in the Fine Bros’ videos, is too broad and has been used for decades, making it ineligible to be claimed as a unique mark.

The Difference Between Common Law Trademarks and Registered Trademarks

Common Law Trademark: Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark in commerce and in that sense, the common law trademark is automatic.

Depending on several factors, common law trademark may allow the common law user to successfully challenge someone else’s attempt at registration or application for that specific mark. You can and should give the public notice of your mark by using a trademark symbol designation each time you use your mark.

If you have not registered the mark, the proper symbol to use is “TM,” such as CreativeLive™.  An important limitation of common law trademark is that the protection only extends to the specific geographic area where the mark is used.

Registered Trademark: Although common law trademark is automatic, it does not guarantee that your mark will not be infringed upon. If you own a business and are relying on you marks to distinguish your goods from others of different quality, you should absolutely register your marks.

There are several legal advantages to registering your mark:

• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration

• Public notice of your claim of ownership of the mark

• You can file a lawsuit for infringement in federal court/actually enforce your marks

• Listing and ability for others to search your mark in the USPTO/TESS databases

• You can record the registration with the U.S. customs service to prevent the importation of infringing goods

• The right to use the registered trademark symbol – ®

• Use of the U.S. registration to obtain registration abroad

To learn more about the common sense reasons for registering your mark, check out Rachel Rodger’s blog Small Business Bodyguard.

What is Copyright?

Copyright best practices for entrepreneurs

Copyright is meant to protect original works of authorship that are fixed in a tangible form of expression, such as a physical copy, videotape/film, or vinyl/cd/mp3. It does so by giving the creator of the fixed work exclusive right to display, perform, make copies or, distribute, and prepare derivative works of the work.

What Can and Cannot be Copyrighted?

The Fine Bros backlash is a great reminder that you can’t just purport to own the copyright on anything you want to.

The format of a reaction video is too generic of a concept to copyright and/or require a license to use. This is in line with the U.S. Copyright Statute which reads: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated or embodied in such work.” (17 U.S.C. Section 102(b)).”

Put simply, you cannot protect a general idea, but you can protect a very specific, recorded expression of that idea.

For example, you cannot copyright poetry, but you can copyright the actual text of a poem. You cannot copyright the format of painting on canvas using oil-based paint, but you could copyright a specific, original painting on canvas using oil-based paint.

Can paintings be copyright protected?

As the incomparable Rachel Rodgers puts it, “People have ideas all day long, but the law can’t protect them until they are manifested in some tangible form, because otherwise there’s no proof.” To dive deeper into the legal verbiage of the copyright statute and its requirements, check out Rachel Rodger’s post on understanding copyrights.

In addition to format, the following cannot be protected by Copyright, whether registered or not:

• Names of products

• Names of businesses, organizations, or groups

• Pseudonyms of individuals

• Titles of works

• Catchwords, catchphrases, mottoes, slogans, or short advertising expressions

• Listings of ingredients in recipes, labels, and formulas

Just like trademark, before you start claiming copyright ownership over what you believe to be an original work, you should search the U.S. Copyright Records database to make sure someone else hasn’t already registered your “original” work.

The Difference Between Common Law Copyright and Registered Copyright

Common Law Copyright: Common law copyright is automatic. By this, I mean that once you have created an original work, common law copyright applies to your work.

There are no publication, notice, or registration actions required to secure common law copyright on your original work. However, as an entrepreneur, if you’re relying solely on common law copyright protections, you should definitely provide notice of the copyright.

What copyright and trademark means for entrepreneurs and creatives

Notice is important because it informs the public that the work is protected by copyright, identifies the owner of the copyright, and shows the first year of publication of the work. Notice can take different forms, depending on what format the copyrighted work takes.

• If the work is visually perceptible, i.e., a painting, book, website, etc., then the proper notice format is: [the (c) symbol] [the year of the first publication of the work] [name of the copyright owner/creator]. Example: © 2015 John Johnson.

• If the work is a sound recording, the proper format is as follows: [the (p) symbol] [year of first publication of the sound recording] [name of the owner of the copyright in the sound recording]. Example: ℗ 2015 CL Records, Inc.

Registered Copyright: Although common law copyright is automatic, like with common law trademark, it does not guarantee that your work will not be infringed upon. There are several legal advantages to registering your copyright:

• Public record of the copyright ownership

• You can file a lawsuit for infringement on a work of U.S. origin in federal court

• Registration within the first five years of publication will establish prima facie evidence of the validity of the copyright. Real talk: if you register within the first five years after publication, the copyright will be deemed valid and enforceable

• Registration within the first three months of publication allows the owner/creator to collect statutory damages and attorney’s fees from the defendant in an infringement suit [note: even without registering your copyright, you are eligible to collect actual damages (i.e., damages that can be proven) and lost profits]

• You can record the registration with the U.S. customs service to prevent infringing copies from being imported

The Takeaway

Do your homework and don’t be the Fine Bros.

As an entrepreneur, there’s no excuse for not being fully informed on what you can do, what you can’t do, and maybe what you should do in regards to establishing and registering your trademarks and copyrights.

If you are building a business around your Trademarks or copyrights, it’s important to take precautionary steps to make sure your investment will be protected. Search for the mark, register your mark if it’s available, and enforce your mark!

For much more information, including a copyright registration worksheet, check out Rachel Rodger’s CreativeLive class, Copyright, Trademark, and Intellectual property for Entrepreneurs.

If you’re ready to start a freelance business, or get serious about growing your existing client base, download our free eBook, The Freelancer’s Roadmap.

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Deserae Weitmann

Deserae Weitmann is CreativeLive’s Corporate Counsel in our SF studios. She spent the majority of her life in Seattle, is a lover of all things fluffy, a music nerd, and a sunshine junky.