“Do I need permission to use the images I found on google on my website or in my artwork?”
“What if someone used my trademark (word mark) in their post?”
“Can I post or sell my parody of a popular song?”
It depends. Entrepreneurs, and rightfully so, should be thoughtful about what they include on their websites, use in their digital marketing, or what they can include in the products they sell.
Likewise, since it’s an owner’s duty to monitor the use of their intellectual property, they should be mindful of what rights they have and how far they can go to protect those rights and stop infringement.
When it comes to intellectual property and specifically infringement, entrepreneurs and business owners are responsible for two things: (1) making sure they (as well as their contractors, employees, or other vendors) do not infringe on the rights of others, and (2) monitoring and identifying when their rights have been infringed upon.
In basic terms, intellectual property infringement is the unauthorized use of an another’s intellectual property rights. For our purposes, I will focus on trademarks and copyrights (in two parts – starting with copyrights).
Trademark infringement is the unauthorized use of another’s trademark that leads to public (potential customers) confusion as to the actual company producing the product or delivering the service.
Copyright infringement is the unauthorized reproduction, distribution, performance, and public display without the permission of the copyright owner.
Stopping Infringement
In the U.S. you become a copyright owner as soon as your original work is fixed in a tangible medium of expression.
For example, you own the copyright to the book you’ve written (not the idea for the book) even before it’s published, sold, or registered with the Copyright office. U.S. copyright law provides copyright owners with the right to make copies, prepare derivative works, distribute copies, perform publicly, display publicly, and authorize others to exercise these rights.[1]
However, if you need to sue an individual or a business for copyright infringement and ultimately want to receive damages, you will need to have a registered copyright with the U.S. Copyright Office.
So, while not mandatory, it’s best to register your copyright before the need arises. If the time comes that you need to enforce your rights, the copyright registration serves as proof that you are the rightful owner, and the alleged infringer would then have the burden of demonstrating that they have not violated your rights.
More importantly, if you win your case, you may be entitled to civil statutory damages, fines, and attorneys’ fees.
Let’s take a step back.
When you become aware that someone is infringing upon your copyright, the first step is to advise the other party that you are the rightful owner and request that they cease and desist from using your work. We can help with that.
If the alleged infringer ignores your request, you have options including resolving the dispute before the Copyright Claims Board (CCB) if your claim is for damages up to $30,000. The small claims process with the CCB is more efficient and certainly less expensive than litigating in federal court. Learn More Here.
Where the infringement has resulted in damages over $30,000, you have the option of bringing a claim to federal court.
If you become aware of infringement across social media or other online platforms, you can also send a notification, or a DCMA takedown notice, to the online service provider about the infringing material and request that it be removed.
Again, the burden to disprove infringement would shift to the alleged infringer if they want to respond to the notice they received about the posts taken down.
How Do I Avoid Infringement?
Avoiding an infringement claim will come down to how conscientious you are as a business owner, or maybe how adverse to risk that you are (and business is inherently risky). The more conscientious and risk adverse, the more likely it will take steps to avoid infringing on the rights of others. But here’s the truth, many simply are not aware that they are infringing.
Here are a just a few tips to avoid infringement in your day-to-day operations:
Assume every image, song, video, etc. you find through a Google® search is protected by a copyright registration or at the very least requires a license to use first.
On a budget? Bookmark websites that provide “license-free” material for you to use for commercial purposes. Review the license or permissions policy on the website carefully to determine how you can use the material. Track the date you downloaded the image, song, or video along with their policy at that time.
When in doubt, reach out to the author, artist, platform and ask for permission to use. This includes large, well-known brands. Never assume you are too small for them to go after.
Create an internal IP policy and train your employees on using license-free materials and the need to request permission to use or purchase a license. Ensure contractors take the appropriate steps to avoid infringement and make sure your agreement with the contractor includes a well-drafted indemnification clause. Additionally, make use of assignment agreements to ensure copyright ownership is transferred to you.
Defenses to Infringement Claims
Like other legal claims, the facts matter, and you should know there are instances where perceived infringement isn’t infringement at all. A few common defenses include:
The work or material is not covered by copyright because it is a statement of fact. Facts alone are not covered by copyright. Create expression is required.
The work is protected by the doctrine of fair use. Fair use covers use of limited parts of a work for news reporting, commentary, criticism, or scholarly reports. Fair use is decided on a case-by-case basis.
Proof that the work was independently created despite the similarities.
Needless to say, it’s important for business owners to have a strategy for how they will monitor and protect their assets (their intellectual property) and take all of the necessary steps to avoid infringement.
When it comes to copyrights and what is and is not infringement, the facts really matter. Check out our Intellectual Property page for more information on how we help you protect your intellectual property.
At MC Law, we encourage small business owners to position themselves to avoid problems later, so reach out to us to make sure you have standards and contracts in place to avoid infringement claims against you. Feel free to reach out to us for a consultation to get started on protecting your intellectual property.
And stay tuned for Part Two that is all about Trademark Infringement!