Acumen Law Group, LLC

Electronic Copyright Registration: An Overview

Any time one creates an original work, such as a photograph or musical composition, that work is automatically copyrighted under common law.  With common law rights, a copyright owner can file suit against an infringer in state court and seek actual damages and “disgorged” profits. While copyright registration is not required for copyright protection, it is a prerequisite before a copyright owner can bring an action under the Copyright Act in federal court.  The primary benefit to bringing suit under the Copyright Act is the availability of statutory damages, which can go up to $150,000 per infringed work.  If copyright registration is made within three months after publication/creation of an original work, or prior to an infringement of the work by a third party, statutory damages and attorney’s fees are available to the copyright owner.  Thus, when a copyright owner fails to timely register, it can put him at a significant disadvantage in obtaining compensation for infringement.

Fortunately for copyright owners, the US Copyright Office recently began accepting electronic registration of original works.  The official Copyright Office website,, boasts a number of helpful articles and tutorials on how to electronically register copyrights.   Depending on the nature of the work, registration can take as little as an hour to complete and cost a modest $35.

At bottom, copyright owners should at all times prioritize timely registration.  If you are interested in learning more about copyright registration or infringement, please contact one of our attorneys at Acumen Law Group.

Authored by Bardia Fard, Esq.

Implied Copyright Licenses: A Last Resort For Unwritten Agreements

Consider the following scenario: A small business owner finds a graphic designer on Craigslist to design a logo for his business cards. The graphic designer designs the logo, the business owner pays the graphic designer, and both parties happily go their separate ways. No agreement is ever put into writing. Months later, the business owner launches a national advertising campaign featuring the business card logo created by the graphic designer. Upon seeing the advertising campaign, the graphic designer contacts the business owner, claims that she owns the copyright to the logo, and demands that the business owner pay for a license to use the logo on a national scale. Is the graphic designer’s demand legitimate? If so, what can the business owner do in this situation? More fundamentally, who actually owns the copyright in the logo?

Copyrights Ownership

Generally, copyright ownership in a creative work is vested in the author(s) of the work itself. Thus, in the scenario above, the graphic designer is in fact the author and rightful copyright owner. There is an exception to this rule, however: in the case of a work made for hire, the employer is considered the legal author of work created by his/her employees. There are really only two scenarios in which a work for hire can exist: (1) work created by an independent contractor, and (2) work prepared by an employee within the scope of his employment. For work created by an independent contractor, two important conditions must be met to invoke the work for hire doctrine: (1) the work is commissioned; and (2) there is a written contract memorializing the arrangement as a work made for hire.

So what does this mean for the business owner in our scenario? The graphic designer was not his employee, and there is no written contract, so the doctrine of work for hire does not apply. Is our business owner entirely out of luck? Fortunately for him, the doctrine of implied license may create the contract he failed to obtain.

The Implied License

Each copyright author generally has five exclusive rights: (1) the right to reproduce the copyrighted work; (2) the right to prepare derivative works based upon the work; (3) the right to distribute copies of the work to the public; (4) the right to perform the copyrighted work publicly; and (5) the right to display the copyrighted work publicly. Copyright authors are free to license all or a portion of their rights to third parties.  While the ownership of the copyright stays with the author, a licensee may be permitted to distribute copies of the copyright, or use it publicly, etc. In the absence of an actual written agreement between the parties, an implied license to use the copyright may arise based on the conduct of the parties. Ultimately, an implied license provides the licensee (the business owner in our scenario) some nonexclusive rights to use the copyrighted work to the extent that the copyright author would have allowed had the parties initially negotiated and signed an agreement.

Generally, courts create implied nonexclusive licenses where (1) the licensee requests the creation of the work, (2) the licensor makes that particular work and delivers it to the licensee, and (3) the licensor intends that the licensee copy and distribute his work. See I.A.E., Inc. v. Shaver, 74 F.3d 768, 772 (7th Cir. 1996). In our initial scenario, the graphic designer owns the copyright to the logo. However, the conduct of the parties clearly demonstrates that the logo was created for use by the business owner. As such, an implied license may be created based on what the parties would have agreed to had there been a written contract. Nonetheless, courts analyzing the same scenario would still consider to what extent and for what purposes the graphic designer created the logo in the first place. Is its use in a national campaign advertisement outside the scope of the implied license, which may have been limited to use on a business card? Is it reasonable to assume that the business owner can use the logo so long as it is used for the purpose of his business? While the implied license may be an effective gap-filler in the absence of a written agreement, it does not absolve our business owner from liability for unfettered use of the logo.

The best way to avoid such ambiguity is, of course, to negotiate the terms of the agreement and put everything into writing: who owns the logo, what the business owner can do with the logo, what rights, if any, does the graphic designer have in the logo after the business owner pays, etc . If you are interested in learning more about implied licenses or have a copyright dispute,  please feel free to contact us to speak with one of our attorneys at Acumen Law Group.

Authored by Dominika Szreder Fard, Esq. & Shoko Asaka (Law Clerk)

Literary Titles and Trademark Protection

Trademark registrations for most book or movie titles (“literary titles”) are difficult to obtain.  While copyright laws protect the actual content of creative works, literary titles are generally not entitled to either copyright or trademark protection.  Even where the literary title is unique, such as The Curious Case of Benjamin Button, the United States Patent and Trademark Office (“USPTO”) and courts typically do not allow trademark registration.  The USPTO and courts alike reason that literary titles are per se “inherently descriptive” unless the title has “wide promotion and great success” or is part of a series of creative works, such as Nancy Drew or Twilight.  See Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002).  Thus, under the current legal doctrine, single literary titles (like The Curious Case of Benjamin Button) are not registerable, while series titles (like Twilight) are registerable.

For many, this legal doctrine is both confusing and frustrating.  The vast majority of creative works do not reach the high level of promotion and success necessary (also known as “secondary meaning”) to overcome the per se “inherently descriptive” designation by the USPTO, and few creative works actually evolve into a series.  The denial of trademark protection for single literary titles is significant and arguably unfair.  Literary titles can be valuable assets, used as bargaining chips in lucrative licensing opportunities for related merchandise.  A valid trademark registration for a literary title can make an appreciable difference in the ultimate value of a licensing agreement.

With a little creative lawyering, however, one can bypass the USPTO’s hard stance on single literary titles and secure trademark protection for works otherwise unregisterable.  Although a single literary title may not be registerable for the literary work itself, one can secure trademark protection for the title of the work by registering it for use in connection with other goods or services. For example, while the USPTO would likely deny registration for The Curious Case of Benjamin Button for use in connection with a movie, the USPTO would likely grant registration for the same title for use in connection with clothing or other  merchandise.

Though perhaps a bit crude, another approach is to simply intend on writing another book or producing another movie reasonably close in time to the release of the first literary title.  With this approach, one may file an Intent to Use Application with the USPTO after publishing the first literary title.  Even if one doesn’t ultimately write that second book, the Intent to Use Application can buy the precious time needed for the literary title to garner secondary meaning, thereby overcoming the USPTO’s restriction on registration.  Significantly, while the Intent to Use Application is pending, third parties are deterred (but not enjoined) from using that particular literary title.  Thus, the Intent to Use Application may provide an effective hedge that keeps third parties from using your literary title while you either write your second book or acquire the secondary meaning.

There are a number of other approaches one can take in securing protection, including state and foreign trademark registration.  Depending on the factual predicate of your case, one approach may be better suited than the other, or a combination of approaches may be most effective.  If you are interested in learning more about securing trademark protection for your literary title, please feel free to contact us to speak with one of our attorneys at Acumen Law Group.

Authored by Dominika Szreder Fard, Esq.