Category Archives: News

Distinguishing Trademarks from Copyrights: A Q&A for Authors

Posted January 14, 2020

Authors Alliance is grateful to Nicolas Charest, Copyright Research Assistant, for researching and drafting this post.

There is longstanding confusion between trademarks and copyrights, which can sometimes lead to controversy in author communities. Notably, in 2018 an author sparked what came to be known as “CockyGate” after she registered a trademark for the word “cocky” in connection with her series of romance novels and asked Amazon.com to take down all romance novels with “cocky” in the title. The trademark application was later surrendered and cancelled following legal proceedings (more details here). More recently, another author sought trademark registration for the word “dark,” used in the titles of a series of her books, though she also later abandoned the application.

In light of these recurring issues, what should authors know about trademarks and copyrights, and how they might apply to their works? We’ve got you covered with this Q&A providing an overview of trademark rights and copyright and how these rights can arise in the publishing industry.

What are copyrights and trademark rights?

Copyright protects original works of expression and gives the author the exclusive rights to reproduce the work, to distribute the work, to prepare derivative works (like translations or movie adaptations), or to perform or display the work publicly. Each of these rights can be transferred by the author to a third party through an assignment or license.

A trademark is a word, phrase, symbol, or design (or a combination thereof) that identifies and distinguishes goods from one source from those manufactured or sold by others. Rights in a trademark are used to prevent others from using similar signs that would cause confusion to consumers in the marketplace, helping to avoid situations where products from another vendor would be mistakenly believed to come from the trademark owner or suggest such an association. The United States Patent and Trademark Office (“USPTO”), the federal agency responsible for the registration of federal trademarks in the U.S., has adopted the view that the title of a book cannot be registered as a trademark, but the title of a collection or series can. This is because the latter is more likely to identify a source of goods than the former.

Examples of trademarks from the publishing industry include the Penguin Group’s illustration of a black and white penguin on an orange background and the words “For Dummies” in a series of books from Wiley.

What is the purpose of copyrights and trademark rights?

While copyrights and trademarks are both intellectual property rights, they serve markedly different functions in the publishing world. In short, copyright controls the ways a work can be copied, distributed, and adapted, while trademark rights control the use of signs which have become distinctive to a particular author, series, or publisher.

For example, copyright protects the thirteen volumes of Lemony Snicket’s Baudelaire Orphan series, allowing the copyright owner to control the printing and selling of new copies of the books. A copyright owner’s rights are said to be “infringed” if someone exercises one or more of the copyright owner’s exclusive rights—by reproducing one of the books in the series, for example—without authorization or a copyright exception covering that use.

The trademarks “A SERIES OF UNFORTUNATE EVENTS” (TM Reg No. 2732326) and “LEMONY SNICKET” (TM Reg No. 5432563), on the other hand, give the trademark owner the right to prevent others from using these word signs in contexts that would cause consumer confusion as to the source or affiliation of the goods sold under the mark. This gives consumers assurance that books marked as being part of the “Series of Unfortunate Events” come from the author, Daniel Handler, publishing under the pseudonym Lemony Snicket, and indicates to potential readers that any books bearing the mark will be of the same literary quality and style as the other books in the series.

Trademarks are not limited to words. For instance, the exterior appearance of a collection of books can be a distinguishing sign that indicates a source and could be considered a trademark, over which the editor or publisher could claim trademark rights. Examples of such abound, including the recognizable layout of the paperback Penguin Classics collection and the Aspen Casebook Series, which the editor says is “famously known amongst law faculty and students as the ‘red and black’ casebooks.”

An author or publisher may wish to secure a trademark as an indicator of source to protect the goodwill created by the works of the author and to prevent other from usurping the reputation of the author.

How are copyrights and trademark rights obtained?

Under today’s copyright laws, copyright protection for original, creative works is automatic from the moment the work is “fixed in a tangible medium” (e.g., as soon as the author puts pen to paper, paintbrush to canvas, or saves a computer file). Although authors do not need to register their works in order to enjoy the protection of copyright law, registration with the United States Copyright Office has several benefits which make it an advantageous practice. Authors interested in the advantages of registering a copyright in their work can read our blog post Why Register Your Copyright.

“Common law” trademark rights can arise based solely on the use of a mark in commerce where it is used as source identifier over a period of time and consumers recognize the mark as indicative of the specific source. However, like copyright, there are significant benefits to registering the work with the USPTO, including: 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 listed in the registration; public notice of your claim of ownership of the mark; listing in the USPTO’s online databases; and the ability to bring an action concerning the mark in federal court. Federal trademark applications can be filed on the basis of the mark being used in commerce in connection with the goods specified or on and “intent-to-use” basis. A registration of a trademark at the state level is also available, though the protection that it offers is limited to that state only.

How long do copyright and trademark protection last?

Under current copyright law in the United States, copyright lasts for the life of the author plus 70 years. Rights in a federally registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents with the USPTO. Common law trademark rights can continue as long as the sign remains distinctive.

Ringing in the New Year with Public Domain Works from 1924

Posted January 2, 2020
Montage of Public Domain works courtesy of the Center for the Study of the Public Domain

As we ring in the New Year, authors have one more reason to celebrate: another batch of works has entered the public domain in the United States. Last year, the new year brought works published in 1923 that had previously been protected by copyright into the public domain—the first time in 20 years that published works have entered the public domain due to copyright expiration. This January 1, the trend continued as we welcomed works published in 1924 that were previously protected by copyright into the public domain. Many of these works have been out of reach long beyond their creators’ lifetimes and for decades after their commercial potential was exhausted.

According to the Center for the Study of the Public Domain at Duke, new public domain works include Thomas Mann’s The Magic Mountain, E. M. Forster’s A Passage to India, Edith Wharton’s Old New York, Agatha Christie’s The Man in the Brown Suit, and A. A. Milne’s When We Were Very Young.

While 2020 brings certainty that works first published in the United States in 1924 are in the public domain, changes in copyright duration and renewal requirements during the 20th century mean that works first published in the United States between 1925 and March 1, 1989 could also be in the public domain because their copyrights were not renewed or the copyright owner failed to comply with other “formalities” that used to be required for copyright protection. Analysis undertaken by the New York Public Library reveals that approximately 75% of copyrights for books were not renewed between 1923-1964, meaning roughly 480,000 books from this period are most likely in the public domain.

Once in the public domain, works can be made freely available and can be adapted into new works of authorship. Last year, we covered some of the benefits of the public domain:

  • The public domain provides opportunities to freely translate works to help fill the gap in stories available to children in their native language; and

Authors Alliance looks forward to the new public domain works from 1924 being made more available and to the new works that are created by building upon this rich collection.

Authors Alliance Supports Immediate Access to Federally Funded Research

Posted December 20, 2019
Photo by Tim Mossholder on Unsplash

Media sources report that the Trump Administration is considering a policy to make the results of federally funded research immediately available for the public to freely access and use. Current policy requires results of federally funded research be made available in pre-print form within 12 months of publication. The rumored policy would eliminate the 12-month embargo. As an organization with a mission to advance the interests of authors who want to serve the public good by sharing their creations broadly, Authors Alliance strongly supports such a policy.

Many of our members are authors who rely on taxpayer dollars to fund their research and want the results of that research to be immediately available for potential readers to readily locate and access without being turned away by paywalls. Immediate and free online availability increases their works’ visibility, helping it to reach readers and benefit the public. Absent a federal policy, many authors simply do not have the bargaining power necessary to demand from publishers the level of access they want for their research. 

Removing barriers to access creates a more hospitable environment for future scientific advancements. Medical patients and their family members have especially compelling needs for this information. Many students, teachers, researchers, and other professionals from low- and middle-income countries struggle to get access to prohibitively expensive subscription-based journals. Even individuals at U.S.-based institutions may find that their libraries do not have the resources to subscribe to relevant journals in their fields. By removing price barriers, it is easier for students, teachers, researchers, and practitioners to access the information they need to learn, teach, research, and practice in their fields.

The rumored policy change does not require publishers to make the final version of articles based on federally funded research free—just for authors to make the pre-publication versions available. Publishers can still charge subscriptions for access to the final published version of these articles, not to mention all of the articles not funded by taxpayer dollars. Or publishers can charge for their value-added publishing services to those institutions who want professional peer review. By paying for publishing services rather than paying for the right to read, institutions can use their budgets to pay for publishing rather than for subscriptions, publishers can earn a living, and the public can then read taxpayer funded research without paying for the privilege.

A policy requiring the outputs of federally funded research be made immediately available would maximize the value of investment in research by ensuring that more readers can access research results than if the works were available through restricted means alone. For these reasons, Authors Alliance supports a policy that would ensure that the public is not made to pay both to create and to read research and would open up opportunities for others to build upon research, accelerating the pace of innovation and discovery.

Please Support Authors Alliance Today

Posted December 18, 2019

Can you help Authors Alliance remain the organization you turn to for copyright resources and as a voice of reason in copyright debates?

In 2019, Authors Alliance celebrated five years of providing resources that empower authors to make—and keep—their works available in the ways they want. We’ve taught you about copyright and fair use, we’ve strategized with you to secure fair contract terms, and we’ve celebrated with you when you got your rights back.

On top of our educational efforts, we’ve urged policymakers to consider the perspective of creators when formulating proposals that affect how authors can use, create, and share copyrighted works. This year, our advocacy initiatives included supporting reasonable limitations to copyright that help authors create and share their works, promoting stronger mechanisms for authors to get their rights back, weighing in on the U.S. Copyright Office’s registration modernization plans, and cautioning against an ill-advised implementation of a copyright small claims tribunal.

Our commitment to authorship for the public good is stronger than ever, but we cannot continue our work without your support. Please consider making a tax-deductible donation today to help us carry on our work in 2020 and beyond. Every contribution enables us to do our part to help you keep on writing to be read!

New Report on Termination Rights for Authors

Posted December 10, 2019

Last week, Public Knowledge released Making Sense of the Termination Right: How the System Fails Artists and How to Fix It, a report that explores the right of authors to terminate a copyright license or grant and regain rights in their works—even if their contracts contain language to the contrary.

The termination system was designed to protect authors and their heirs against unprofitable or inequitable agreements. But the report argues it is failing to protect the very people termination was designed to serve: artists and creators. According to Dylan Gilbert, Policy Counsel at Public Knowledge and co-author of the report, “Unfortunately, numerous problems—from legal cost and complexity and imbalances of power to scarce public information—are combining to create dysfunction in the system, which appears to be preventing artists from effectively using their termination right.”

The report critiques the complex eligibility, timing, and filing formalities for termination, which are exacerbated by ambiguities in the law and its application. On top of the onerous procedural requirements, the report highlights power asymmetries governing the negotiation, assignment, and reversion of ownership rights that also harm authors—particularly creators of color—who seek to exercise their termination rights.

The report recommends six policy actions to help restore fairness and functionality to termination of transfer rights:

  • Revise the Copyright Act so that the termination right vests automatically;
  • Revise the Copyright Act so that the termination right vests sooner than 35 years after a grant of rights under § 203 or 56 years after the copyright is first obtained under § 304;
  • Eliminate or revise the “work made for hire” exception or statutory definition;
  • Mitigate the need for artists to litigate ownership disputes prior to exercising their termination right by revising the statute of limitations or clarifying that the mere act of registering an adverse claim with the Copyright Office is not an effective repudiation of an ownership claim;
  • Address derivative works issues through statutory clarification; and
  • Conduct a formal study on the exercise and administration of the termination right, including the effects of the termination right on contract negotiation and renegotiation.

Click here to read the full report for more details on Public Knowledge’s recommendations to improve termination rights for authors.

Authors Alliance and our partners have created tools to help authors unpack the complex termination provisions. To learn more about termination of transfer and how to evaluate whether a work is eligible for termination under U.S. law, authors can explore the Termination of Transfer Tool, developed by Authors Alliance and Creative Commons. Authors can also refer to Authors Alliance’s guidance and templates for how to provide notice of termination to rightsholders and record the termination with the U.S. Copyright Office.

Georgia v. Public.Resource.Org: Copyright Case Before the Supreme Court

Posted December 2, 2019
photo of the Supreme Court building
photo by MarkThomas | Pixabay

The following post by Authors Alliance Copyright Research Assistant Nicolas Charest provides an overview of Georgia v. Public.Resource.Org Inc. Today, the Supreme Court of the United States will hear oral arguments in this case, which examines whether the “government edicts” doctrine extends to the Official Code of Georgia Annotated, rendering it uncopyrightable.

Background

The Code Revision Commission (the “Commission”), an arm of the State of Georgia’s General Assembly, is mandated to ensure publication of the statutes adopted by the General Assembly. It does so by contracting with the LexisNexis Group (“Lexis”) to maintain, publish, and distribute the Official Code of Georgia Annotated (“OCGA”), an annotated compilation of Georgia’s statutes. Following guidelines provided by the Commission, Lexis prepares and sells OCGA, which includes the statutory text of Georgia’s laws and annotations (such as summaries of judicial decisions interpreting or applying particular statutes). Lexis also makes unannotated versions of the statutes available online.

Public.Resource.Org (“PRO”) is a non-profit organization that promotes access to government records and primary legal materials. PRO makes government documents available online, including the official codes and other rules, regulations, and standards legally adopted by federal, state, and local authorities, giving the public free access to these documents. PRO purchased printed copies of the OCGA, digitized its content, and posted copies online through its own website.

Georgia filed suit against PRO claiming copyright infringement. Before the lower courts, PRO invoked the judicially-created “government edicts” doctrine. As a matter of public policy, courts have held that government edicts having the force of law, such as statutes and judicial decisions, are not eligible for copyright protection. While the court of first instance agreed with the State of Georgia and the OCGA was found to be copyrightable, on appeal the Eleventh Circuit held that under the government edicts doctrine, OCGA is not copyrightable and rejected Georgia’s infringement claim against PRO. Now, the issue before the Supreme Court is whether Georgia can claim copyrights over the OCGA annotations or if it is prevented from doing so because the annotations are an edict of government.

Position of the Parties

The State of Georgia and the Georgia Code Revision Commission submit that the annotations are not excluded from copyright protection; the annotations lack the force of law and therefore do not trigger the government edicts doctrine. Georgia also argues that the annotations are “derivative works” from the statutes and though published alongside materials in the public domain, they nonetheless are produced by a private entity. Finally, Georgia states that copyright in the annotations is the underlying incentive for its partnership with Lexis and, absent copyright protection for OCGA, Lexis would lose incentive to produce the annotations unless Georgia used taxpayer funds to directly pay for the services.

Public.Resource.Org argues that, in addition to texts with binding legal effect, any works that represent an “authentic” exercise of state legal authority, including legal works adopted or published under the authority of the state, are uncopyrightable edicts of government and therefore cannot be copyrighted. They posit that as long as the documents embody the authority of the state, such works would not be subject to copyright, even if they do not have legal force. PRO concludes that since the OCGA is an official legal document that holds itself out as “published under the authority of the State,” it is therefore a government edict that is ineligible for copyright protection.

Next Steps

Audio of the oral arguments in Georgia v. Public.Resource.Org should be available on the website of the Supreme Court on Friday. We encourage members of Authors Alliance to contact us at info@authorsalliance.org to share your views on the implications and outcome of this case. We will provide an update once the Court issues its decision in this case.

New Resource on Law and Literacy in Non-Consumptive Text Mining

Posted November 19, 2019
Photograph of laptop computer
Photo by Andras Vas on Unsplash

Scholars are increasingly using text data mining to uncover previously unknown patterns, trends, or relationships from a collection of textual documents. In doing so, many of these researchers may be accessing, building, working with, and sharing materials without understanding the legal implications of their actions. In their newly released chapter, Law and Literacy in Non-Consumptive Text Mining: Guiding Researchers Through the Landscape of Computational Text Analysis (in Copyright Conversations: Rights Literacy in a Digital World), Rachael G. Samberg and Cody Hennesy analyze the legal issues that can arise when researchers are engaged in text data mining and provide guidance on how to approach these issues.

As Samberg and Hennesy write, “currently, many [ ] researchers programmatically access and download copyright-protected works—even when it potentially violates copyright, licenses, privacy, or computer fraud law—because it is technically feasible. Few of these researchers are malicious in intent; rather, they may lack the necessary training or support to safely navigate the obscure regulatory environment of the field.”

Samberg and Hennesy’s survey of copyright and other legal issues affecting text data mining addresses:

  • Copyright and Fair Use: Samberg and Hennesy review several cases where courts have considered the intersection of full text searching a corpus and fair use and found non-consumptive text mining to be fair. They caution that researchers should understand that while it may be fair use in some cases to create and utilize a database for text data mining, further publishing that database may exceed the bounds of fair use.
  • Contract Law: Samberg and Hennesy discuss how contract law may define how researchers can access materials and what use they can make of them, and may even supplant fair use rights. They review the effect of database license agreements, website terms of service, and agreements with archives and special collections on text data mining.
  • Ethics: Samberg and Hennesy consider the best practices in responding to requests from web hosts relating to scraping content from the site.

Samberg and Hennesy use this framework to define literacies for researchers based on three stages of outreach and education further articulated in the chapter: use of precompiled corpora, corpus creation, and corpus publishing. The authors conclude that the key literacy is for researchers “to understand the need for a workflow [ ] and to explore a tailored approach in consultation with their librarians.”

This chapter is a valuable contribution towards helping scholars using text data mining to acquire the skills they need to understand and approach the legal implications of their work. Law and Literacy in Non-Consumptive Text Mining: Guiding Researchers Through the Landscape of Computational Text Analysis is available to read in full under a CC-BY license.

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Thanks to a grant from the National Endowment for the Humanities (NEH), Rachael Samberg will lead a national team to help humanities researchers and staff navigate complex legal questions in cutting-edge digital research. The institute, Building Legal Literacies in Text Data Mining, will teach humanities researchers, librarians, and research staff how to confidently navigate the major legal issues that arise in text data mining research. Authors Alliance Executive Director Brianna Schofield will take part in the institute in her capacity as a copyright expert. A call for participants is currently open; applications are due December 20, 2019.

Authors Alliance is Hiring a Staff Attorney

Posted November 13, 2019

Do you want to help authors understand and enjoy their rights and promote policies that make knowledge and culture available and discoverable? Are you a passionate advocate for the positive role that authors can play in advancing access to knowledge and culture? Come join our team as our first staff attorney!

Learn more about the position and how to apply on our jobs page. Applications will be considered on a rolling basis beginning February 3, 2020.

Rights Reversion: Opening Classic Works to New Global Audiences

Posted November 12, 2019

We are grateful to Anita Walz, Assistant Director of Open Education and Scholarly Communication Librarian at Virginia Tech, for sharing the following rights reversion and open access success story. Anita worked with the authors of an out-of-print textbook to make a digitized version available online under a Creative Commons license for a new generation of students—not only at Virginia Tech but around the world. This guest post is published under a CC BY-NC-4.0 license.

“I want to assign this book as required reading for my graduate class. However, there are 125 students and I can’t find enough copies for students to access, borrow, or purchase. You’re a librarian. Can you help?”  Librarians often field such inquiries. Depending on the situation, such inquiries may lead to nuances of copyright, ebook acquisition, a search for substitute titles, assertion of fair use and exploration of more ideal scenarios: open access works and open educational resources. Sometimes such inquiries lead us outside of libraries to fact-find with authors and publishers on behalf of library users. The example of Veterinary Epidemiology: Principles and Methods is one such case.

In 2015 and 2016 I worked on my first rights reversion digitization project, inspired in part by the Authors Alliance’s publication Understanding Rights Reversion: When, Why & How to Regain Copyright and Make Your Book More Available. Of course, I didn’t know that it was a rights reversion scenario when I first started. A new faculty member had approached me with a copyright quandary: She wanted to use an out-of-print seminal work from 1987 for her class of 125 students. The six copies owned by the library and the several used copies available for sale would not be nearly enough. A thorough check indicated that a digital version was not available for purchase. We also explored working with the Copyright Clearance Center, but the cost was exorbitant. Wanting to honor the professor’s selection of this particular text, my colleagues and I aided her in conducting an informed fair-use analysis and the library displayed selected chapters one-chapter-at-a-time via the library’s secure eReserve system. With the book obviously out of print, and wondering who owned the rights, I contacted the book’s authors in September 2015.

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