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  • Shreepal "Shreeps" J. Zala, Esq.

Someone’s Stealing From Me! Copyright and Trademark Infringement

Updated: Jun 27, 2023

Copyright and Trademark Infringement: Someone’s Stealing From Me!


You go to all that length to protect your copyrights and trademarks, but someone is still using your work or logo without your permission!


Don’t feel too bad - what you have must be worth copying, right? You’re good at what you do.


Thanks, but no thanks!


Your mind is your property & it’s worth protecting.


Even more so, do you want to sit there and just let someone else profit off your work?


No, of course not.


Ok, well how to know for sure if it’s infringement?


Depending on whether it’s copyright or trademark infringement, what you’ll need to prove will be different. Additionally, what you’re entitled to recover will depend on how well protected your work(s) was initially. In this post, we’ll cover the basics you should know about copyright and trademark infringement including how infringing on a copyright is different than infringing on a trademark. We’ll briefly discuss the legal elements of each (what you’d need to prove in court), and what legal options you have if you can prove you were the victim of infringement.


You should walk away from this with a better understanding of what copyrights and trademarks are, what you need to know prove infringement of either, and also the inverse, how to avoid infringing yourself.


What is Infringement?


Infringement typically refers to the unauthorized use, copying, distribution, or exploitation of someone else’s intellectual property rights. To “exploit” simply means “to profit from”.

An intellectual property owner is given certain exclusive rights. An infringer violates a right that was supposed to be the exclusive right of the lawful owner. To the IP owner, there are real consequences including lost sales, unfair market competition, or as often the case, a loss of brand or personal reputation. For brand owners, this is a serious consequence.


Copyright Infringement

A copyright owner enjoys an exclusive bundle of rights in his or her original work. There are eight rights listed under USC Title 17 (which is where you can find all the authoritative law on copyrights). Copyright infringement occurs whenever someone violates any of the exclusive rights of a copyright owner without first obtaining permission.

Infringement can take various forms, including:


a) Unauthorized Reproduction


Making copies of works without the owner's permission. An easy example is when someone duplicates a musician's song or album without a license (remember burned CDs and Napster?)


b) Distribution


Distributing copyrighted works without proper authorization is another common example. When a copyrighted DVD is sold in bulk internationally without proper licensing, this violates a copyright in the right to distribution.


c) Derivative Works


If you create a new work largely based on copyrighted material and without obtaining appropriate permissions, then you have violated the copyright’s owner exclusive right to create derivative works. For example, you couldn’t write a The Simpsons-spinoff about character Ned Flanders without first obtaining permission from the original show creators (presuming they still have ownership in the copyright of all the show’s characters).

And that’s just three of the eight exclusive rights enjoyed by a copyright owner. To prove infringement, you’ll have to show conclusively that one of these rights is being violated.


Proving Copyright Infringement

In addition, you must prove your exclusive right is being violated or infringed by proving certain legal elements of copyright infringement. Since I don’t want to bore you with lengthy explanations of each element, I’ll keep these explanations brief.

  1. Valid Copyright Ownership: You need to prove you’re the rightful owner. A valid registration with the Copyright Office will help a lot.

  2. Lack of Independent Authorship: You have to prove that similarities between the works are more than just coincidence. That, in part, the infringer did not come up with his similar idea independently on his own, but was influenced by your work. Takeaway, just because the works are the same does not mean it’s infringement

  3. Substantial Similarity: Copyright protection is not black and white. A work may have both protectable and unprotectable elements. The infringement needs to infringe upon something protectable in your work, something that is unique or original to your work.

  4. Unauthorized Use: An infringer is only guilty if he or she doesn’t have your permission, a license to use your work, a valid fair use exception, or some other lawful reason to be copying your work.

  5. Commercial Advantage* (to prove criminal infringement): Sometimes an infringement can be treated as a criminal offense. This requires showing the infringer willfully stole for commercial gain.

Trademark Infringement

Trademark infringement occurs when someone uses a mark that is likely to cause confusion with an existing trademark. Unlike copyrights which focus on copying something original, trademark protection protects brands or logos - anything you might associate with a certain brand. So what you’re proving to the court is not that something original was copied but that the infringement is going to cause confusion to consumers in the marketplace. This is the key difference between copyrights and trademarks. Copyrights protect original works of art whereas trademarks protect source-identifying logos or brands.


For something to constitute trademark infringement therefore requires a much different analysis. You must prove the infringing mark is confusingly similar to your brand or dilutes your brand. Counterfeit luxury goods are a good example.The point is to protect the integrity of your brand as it relates to the public.


Proving Trademark Infringement


So, it probably goes without saying then, that proving trademark infringement is a different analysis than copyright infringement. The legal elements needed to prove infringement are as follows:


1. Ownership: You must prove you have a valid and enforceable trademark. A

trademark application does the trick. Remember, first to file, first to rights.

2. Likelihood of Confusion: You must show the infringer’s use of a similar mark is likely

to cause confusion among consumers. There are various ways to prove this -

sometimes a court will simply survey people to see if there’s confusion.

3. Use in Commerce: You’ll hear the term “use in commerce” a lot in trademark law.

It’s because trademarks protect business brands. You must show the infringer’s

use in commerce will have a harmful financial impact on your business and brand

- either in real money or reputation.


If you show likely evidence of all these elements, a court may even award an injunction in your favor which is a court order that requires the infringer to immediately stop using the mark.


Comparing Copyright & Trademark Infringement

Other than proving ownership in the work, the elements for proving copyright and trademark infringement are much different. Remember copyright protects original creative works while trademarks protects marks used to identify goods.

For quick review, here are the elements required for each:

Proving Copyright Infringement

  1. Valid Copyright Ownership

  2. Lack of Independent Authorship

  3. Substantial Similarity

  4. Unauthorized Use

  5. Commercial Advantage (for criminal infringement cases)

For Trademark Infringement

  1. Valid Trademark Registration/Ownership

  2. Likelihood of Confusion

  3. Use in Commerce

It’s important that you recognize that copyright and trademarks protect different intellectual property. Copyright protects original expression. Trademarks protect brands.

Either way, depending on circumstance, engaging in copyright or trademark infringement can have serious consequences. Courts are allowed to award up to $150,000 in statutory damages for wilful infringement.


In general, courts will award damages in infringement actions in a number of ways. Firstly, it will likely require the infringer to cease violating the copyright or trademark or suffer further penalties or arrest. Usually this is done through an injunction which is a court order that legally requires the infringer to stop. In other instances, upon a proving of financial loss, the court will award the equivalent in lost monies.


Conclusion:


People talk about infringement all the time simply because it’s part of the yin and yang of copyright law. In a dollar-driven world, unscrupulous people will always look to take advantage of others’ property. And for a lot of people, intellectual property theft seems benign compared to the theft of actual physical property. But that’s dangerous thinking! Your IP matters just as much as your physical property and perhaps even more because, in the case of trademarks for instance, that theft could damage your reputation in the minds of your consumers.

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