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INTELLECTUAL PROPERTY of the

ELECTRICAL TRAINING ALLIANCE

Cass Cook

Specializing in Trademark and Copyright

New York Bar Member

District of Columbia Bar Member

Michigan Bar Member

Anvil Law, PLC

Washington, D.C. Ann Arbor, MI

ccook@anvil-law.com

(734) 794-4727

Overview of Intellectual Property

Copyright Basics

ETA’s Copyrights

Trademark Basics

ETA’s Trademarks

Developments

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Intellectual property (IP) refers to creations of the intellect for which a monopoly is assigned to designated owners by law.

Intellectual property rights (IPRs) are the protections granted to the creators of IP, and include trademarks, copyright, patents, and in some jurisdictions trade secrets.

Artistic works including music and literature, as well as discoveries, inventions, words, phrases, symbols, and designs can all be protected as intellectual property.

Copyright differs from other forms of Intellectual Property in that it protects the form of expression for the underlying work.

A Trademark is a word, name, symbol, or device which is used in trade with goods/services to indicate the source of the goods/services to distinguish them from the goods/services of others.

A Patent protects an invention and innovations or improvements thereon by providing the inventor with a set of exclusive rights which prevents others from making, using, offering for sale or selling the invention without the consent of the inventor.

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Copyright Basics

Copyright is a form of intellectual property protection rooted in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression.

Copyright covers both published and unpublished works.

What is Copyright?

Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.

Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, architecture, text books and…the ETA Curricula.

What does Copyright

protect?

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Copyright is secured automatically when the work is created.

A work is "created" when it is fixed in a tangible form, such as the first time it is written or recorded.

Neither publication, registration nor other action in the Copyright Office is required to secure copyright, although registration is recommended.

When does Copyright

exist?

Pursuant to 17 U.S.C. §106, a copyright owner has the exclusive rights, among others, to…

1. reproduce the copyrighted work;

2. prepare derivative works based upon the copyrighted work;

3. distribute copies of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

4. perform the copyrighted work publicly; and

5. display the copyrighted work publicly.

What rights are included in a

Copyright?

These rights can be transferred, in whole or in part, via an assignment, a license or other arrangement.

The term of copyright for a particular work depends on several factors, including whether it has been published, and, if so, the date of first publication.

As a general rule, for works created after January 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years.

For an anonymous work, a pseudonymous work, or a work made for hire, the copyright endures for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first.

For works first published prior to 1978, the term will vary depending on several factors.

Works published in the United States before January 1, 1926, are in the public domain.

How long does a

copyright last?

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A copyright notice is an identifier placed on copies of the work to inform the world of copyright ownership.

The copyright notice generally consists of the symbol or word “copyright (or copr.),” the name of the copyright owner, and the year of first publication…

©2016 Electrical Training Alliance

While use of a copyright notice was once required as a condition of copyright protection, it is now optional.

Use of the notice is the responsibility of the copyright owner and does not require advance permission from, or registration with, the Copyright Office.

What is a copyright

notice?

What is Copyright Infringement?

Copyright infringement occurs each time that a third party violates one or more of the copyright owner’s exclusive rights as set forth in Section 106.

To sustain an action for infringement, the copyright owner must prove:

1. ownership of a valid copyright in the work;

2. copying by the would-be infringer, and

3. that the would-be infringer’s copying constitutes an improper appropriation.

“Copying” is a term of art that contemplates two requirements.

First, the would-be infringer must have taken an improper amount of the plaintiff’s work – this is called “substantial similarity.”

Second, even if the works are substantially similar, the would-be infringer must have had access to the original work such that the ‘copy’ was not independently created.

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What’s at stake?

Damages for Copyright Infringement

According to Section 504 of the Copyright Act of 1976, a copyright infringer is liable for either:

1. The copyright owner’s actual damages and any additional profits of the infringer; or

2. Statutory damages.

Statutory Damages are $750.00 to $30,000.00…per infringement.

If the infringement is proved willful, then the damage award could be up to $150,000.00…per infringement.

How does the ETA protect its copyrights?

The ETA Registers its Copyrighted

Works with the U.S. Copyright

Office

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Registration establishes a public record of the copyright claim.

Before an infringement suit may be filed in court, registration is necessary for works of U. S. origin.

If made before or within five years of publication, registration establishes in court of the validity of the copyright and of the facts stated in the certificate.

If registration is made within three months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner.

Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies. For additional information, go to the U. S. Customs and Border Protection.

Benefits of Copyright Registration

The ETA registers its copyrights in its printed manuals and workbooks.

…and in the Alliance’s electronic materials.

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The Digital Millennium

Copyright Act

(DMCA)

The DMCA was signed into law by President Clinton on October 28, 1998.

The legislation implements two 1996 World Intellectual Property Organization (WIPO) treaties: the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.

The DMCA extended the reach of copyright to the Internet.

The DMCA limited the liability of the providers of on-line services for copyright infringement by their users.

OCILLA is United States federal law that creates a conditional safe harbor for online service providers (OSP) and other Internet intermediaries.

Shields Internet intermediaries for their own acts of direct copyright infringement (when they make unauthorized copies).

Shields Internet intermediaries from potential secondary liability for the infringing acts of others.

By exempting Internet intermediaries from copyright infringement liability provided they follow certain rules, OCILLA attempts to strike a balance between the competing interests of copyright owners and digital users.

The Online Copyright

Infringement Liability

Limitation Act (OCILLA)

Take Down and Put Back Provisions - Example

Nancy posts several pages from an ETA workbook on the popular Electrical Apprentice Chat website, WWW.SHOCKTALK.COM.

The ETA, searching the Internet, finds Nancy’s copy.

Cass, an ETA lawyer, sends a letter to ShockTalk’s designated agent (registered with the Copyright Office) including:

• contact information • the name of the workbook that was copied • the web address of the copied workbook• a statement that he has a good faith belief that use of the material in the

manner complained of is not authorized by the copyright owner, its agent, or the law.

• a statement that the information in the notification is accurate • a statement that, under penalty of perjury, Cass is authorized to act for

the copyright holder • his signature

ShockTalk takes the workbook posting down.

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ShockTalk tells Nancy that they have taken the workbook down.

Nancy now has the option of sending a counter-notice to ShockTalk, if she feels the workbook was taken down unfairly.

The notice includes:

• contact information • identification of the removed video • a statement under penalty of perjury that Nancy has a good faith

belief the material was mistakenly taken down • a statement consenting to the jurisdiction of Nancy’s local US

Federal District Court, or, if outside the US, to a US Federal District Court in any jurisdiction in which ShockTalk is found.

• Nancy’s signature

If Nancy does file a valid counter-notice, ShockTalk notifies the ETA, then waits 10-14 business days for a lawsuit to be filed by the ETA.

If a lawsuit is not filed, then ShockTalk must put the material back up.

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USE OF CONTENT

You acknowledge and agree that as between you and ETA, the text, graphics, audio, video, data, and applications ("Content"), including their selection, arrangement, and associated "look and feel," made available in connection with use of the Service, are owned by ETA. ETA is the sole owner of intellectual property rights in the Content under copyright, trademark, patent, and/or other applicable laws. Any misuse of the Content will violate such laws and the Terms of Service and may subject you to civil and criminal penalties.

Except as expressly provided in conjunction with your use of the Service, the ETA grants no express or implied rights to use the Service (other than those rights previously mentioned), including, without limitation to: copy, frame, upload, modify, sell, republish, transmit, assign, distribute, license/sublicense, reverse engineer, or create derivative works.

BY COMPLETING THE REGISTRATION PROCESS AND CLICKING THE “AGREE” BUTTON, YOU REPRESENT THAT YOU ARE AUTHORIZED TO USE THE SERVICE AND AGREE TO USE THE SERVICE AND ALL MATERIAL ACCESSED THROUGH THE SERVICE IN ACCORDANCE WITH THE TERMS OF SERVICE AND ALL APPLICABLE LAWS.

“This domain has been acquired via legal means by the Electrical Training Alliance.”

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Online Flashcards

How Copyright Law Affects How You

Teach in the Classroom

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Fair Use of Copyright

Notwithstanding the provisions of sections 106 and 106a, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

§ 107 · Limitations on exclusive rights: Fair use

In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

(1)the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofiteducational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

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Agreement on Guidelines for

Classroom Copying in Not-For-Profit

Educational Institutions

Congress recognized Teachers’ need to duplicate materials for their students by including the language “multiple copies for classroom use” in Section 107.

Educators, authors and publisher groups produced an Agreement on Guidelines for Classroom Copying in Not-For-Profit Educational Institutions –these guidelines are not part of the Copyright Act –but provide a minimum standard for copying.

I. Single Copying for Teachers

A single copy may be made of any of the following by orfor a teacher at his or her individual request for his or herscholarly research or use in teaching or preparation to teacha class:

a. A chapter from a book;

b. An article from a periodical or newspaper;

c. A short story, short essay or short poem, whether ornot from a collective work; and/or

d. A chart, graph, diagram, drawing, cartoon orpicture from a book, periodical, or newspaper.

II. Multiple Copies for Classroom Use

Multiple copies (not to exceed in any event more than onecopy per pupil in a course) may be made by or for theteacher giving the course for classroom use or discussion;provided that:

a. The copying meets the tests of brevity and spontaneityas defined below and;

b. Meets the cumulative effect test as defined below; and

c. Each copy includes a notice of copyright.

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Definitions:

Brevity

i. Poetry: (a) A complete poem if less than 250 words and if printed on not more than two pages or, (b) from a longer poem, an excerpt of not more than 250 words.

ii. Prose: (a) Either a complete article, story or essay of less than 2,500 words, or (b) an excerpt from any prose work of not more than 1,000 words or 10% of the work, whichever is less, but in any event a minimum of 500 words. [Each of the numerical limits stated in “i” and “ii” above may be expanded to permit the completion of an unfinished line of a poem or of an unfinished prose paragraph.]

iii. Illustration: One chart, graph, diagram, drawing, cartoon or picture per book or per periodical issue.

iv. “Special” works: Certain works in poetry, prose or in “poetic prose” which often combine language with illustrations and which are intended sometimes for children and at other times for a more general audience fall short of 2,500 words in their entirety. Paragraph “ii” above notwithstanding such “special works” may not be reproduced in their entirety; however, an excerpt comprising not more than two of the published pages of such special work and containing not more than ten percent of the words found in the text thereof, may be reproduced.

Spontaneity

i. The copying is at the instance and inspiration of the individual teacher, and

ii. The inspiration and decision to use the work and the moment of its use for maximum teaching effectiveness are so close in time that it would be unreasonable to expect a timely reply to a request for permission.

Cumulative Effect

i. The copying of the material is for only one course in theschool in which the copies are made.

ii. Not more than one short poem, article, story, essay or twoexcerpts may be copied from the same author, nor more than three from the same collective work or periodical volume during one class term.

iii. There shall not be more than nine instances of such multiple copying for one course during one class term.

[The limitations stated in “ii” and “iii” above shall not apply to current news periodicals and newspapers and current news sections of other periodicals.]

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III. Prohibitions as to I and II Above

Notwithstanding any of the above, the following shall be prohibited:

a Copying shall not be used to create or to replace or substitute for anthologies, compilations or collective works. Such replacement or substitution may occur whether copies of various works or excerpts therefrom are accumulated or reproduced and used separately.

b There shall be no copying of or from works intended to be “consumable” in the course of study or of teaching. These include workbooks, exercises, standardized tests and test booklets and answer sheets and like consumable material.

c Copying shall not:

1. substitute for the purchase of books, publishers’ reprints or periodicals;2. be directed by higher authority;3. be repeated with respect to the same item by the same teacher from term to term.

d No charge shall be made to the student beyond the actual cost of the photocopying.

Some Practical Concerns…

Can I scan course readings and put them up on my Web site for my students to read?

Not without permission.

Materials posted on the Web would be widely accessible by people all over the world. In effect you would be distributing the information broadly, thus affecting the market for that work (fair use factor #4).

An exception is that works in the public domain could be reproduced on a Web site without penalty. It would also be acceptable to provide citations and links to other websites and/or articles from electronic journals or full text databases.

What if I use a system which uses passwords to restrict access to students in a particular class? Wouldn't that fall under fair use?

This is an area that is not perfectly clear and may not be fully understood until it is litigated.

Certainly, limiting access to students in a particular class makes a better case for fair use, but even under these circumstances one would have to consider the four fair use factors and the guidelines for brevity and spontaneity. For example, the information could be posted for one semester only and could not be re-used without getting permission.

Basically, if it would not be permissible to distribute copies of articles, images, or other copyrighted materials in paper format, then it would not be permissible to distribute them in electronic format.

If you do request permission from the copyright holder to post the work on the Web, they may require that you use a password or some method of encryption to protect against unauthorized access or illegal copying.

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Original works of authorship fixed in any tangible medium of expression, such as books or articles, are generally entitled to copyright protection.

Under the current law, registration, publication, and notice of copyright are not required for copyright protection.

But check for a Copyright Notice. Notice provides a starting point to determine if a work is protected and/or where to seek permission.

In most cases you can assume that outside materials that you wish to use/post (e.g., articles, book excerpts, pamphlets, etc.) are copyrighted, unless they were published in the United States before 1923, or produced by the U.S. government.

If you are ever in doubt on a copyright use issue, then contact the ETA and contact them BEFORE using, distributing or posting the content.

Better to seek permission rather than forgiveness.

If you are ever in doubt on a copyright use issue, then contact the Alliance –BEFORE using, distributing or posting the content.

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A trademark is a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.

Trademarks used to identify services are sometimes called service marks – though the terms trademark and service mark are used interchangeably.

Trademark law is somewhat unique in that its ultimate goal is to protect the consumer from confusion.

This end is often accomplished by a trademark owner enforcing its rights against a would-be infringer.

What is a Trademark?

1. Primary purpose of a trademark is identifying the source of goods/services (property right is secondary)

2. U.S. trademark rights are automatic when a mark is used to indicate the source of a good or service: common law rights

3. Rights are limited to the geographic area of use

4. Registration is not necessary

1. Provides nationwide priority of rights as of filing date, even if use is limited or only intended

2. Blocks others from registering similar marks for similar goods/services at relatively low cost

3. Provides notice to others and discourages adoption of similar marks

4. Has enforcement advantages

5. After 5 years use, registration can become incontestable, which limits defenses to infringement

6. Recording trademark registration with customs service can block imports

Advantages of Registration

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Trademarks of the Electrical Training Alliance

What is Trademark

Infringement?

The holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent,

(1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark;

(2) in commerce;

(3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services;

(4) where such use is likely to cause confusion, or to cause mistake, or to deceive.

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To prevail on a claim of trademark, a party must prove:

(1) that it has a protectable ownership interest in the mark; and

(2) that the defendant’s use of the mark is likely to cause consumer confusion.

1. Right to prevent others from using “confusingly similar” marks

Will use of mark deceive consumers or cause confusion or mistake?

− False affiliation, connection, or association between parties?

Scope Of Trademark Rights

1. Similarity of Marks

Appearance

Pronunciation

Meaning

Likelihood Of Confusion

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2. Example of difference in meaning: Swatch SA v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014):

SWAP:

to exchange one thing for another

SWATCH:

a piece of fabric or a contraction of Swiss Watch

Likelihood Of Confusion

3. Similarity of Products or Services

Related/complementary?

Sold to same consumers?

Sold in same channels of trade?

Likelihood Of Confusion

What’s at stake?

Damages for Trademark Infringement

Defendant’s profits

Plaintiff’s damages

Costs

Attorney’s fees

Treble damages (if infringement was willful/intentional)

Permanent Injunctions

Corrective Advertising

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Trademarks on the

Internet

• SEM increases a website's visibility in search engine results pages (SERPs). 

• Search engines provide sponsored results and organic (non‐sponsored) results based on a web searcher's query.

• Search engines often employ visual cues to differentiate sponsored results from organic results. 

• Search engine marketing includes all ways to make a website's listing more prominent for topical keywords.

SEO attempts to improve a website's organic search rankings in Search Results by increasing the website content's relevance to search terms. 

Search engines regularly update their algorithms to penalize poor quality sites that try to game their rankings, making optimization a moving target for advertisers.

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• Sponsored results are based on searches for selected keywords.

• Search ads are often sold via real-time auctions, where advertisers bid on keywords.

• In addition to setting a maximum price per keyword, bids may include time, language, geographical, and other constraints. Listings were originally sold in order of highest bids.

• Modern search engines rank sponsored listings based on a combination of bid price, expected click-through rate, keyword relevancy and site quality.

• Google and other Internet search engines and e-commerce sites have made search engine keyword advertising ubiquitous.

• Unauthorized use of a trademark as a keyword can constitute infringement.

• Some case law requires that the infringed mark appear in the text of the sponsored ad.

• This is a straight trademark infringement case.

• Many OSP’s have trademark usage policies and takedown procedures similar to those discussed earlier concerning copyright infringement

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• The process for the resolution of disputes regarding the registration of internet domain names.

• The UDRP currently applies to all .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .post, .pro, .tel and .travel top-level domains, and some country code top-level domains.

• In 2012, ICANN launched a process to create new generic Top Level Domains (gTLDs).

– A number of new brand protection mechanisms under the New gTLD Program

– Industry commentators predict that the UDRP will continue to be used as the primary dispute resolution process.

A successful UDRP complaint must establish three elements:

1. The domain name is confusingly similar to a trademark or service mark in which the complainant has rights;

2. The domain name registrant does not have any rights or legitimate interests in the domain name; and

3. The domain name registrant registered the domain name and is using it in "bad faith."

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The following non-exclusive factors can be considered by a UDRP panel to assess bad faith in a UDRP proceeding:

• Was the domain name registered primarily to sell the domain name registration to the owner of the trademark?

• Was the domain name registered to prevent the owner of the trademark from using the mark in a domain name, if the registrant has engaged in a pattern of such conduct?; and

• The domain name registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or

• By using the domain name, the domain name registrant has:

1. intentionally attempted to attract

2. for commercial gain

3. Internet users to the registrant's website

4. creating a likelihood of confusion with the complainant's mark

Under the ACPA, a trademark owner may bring a cause of action against a domain name registrant who:

1. Has a bad faith intent to profit from the mark; and

2. Registers, traffics in, or uses a domain name that is

– Identical or confusingly similar to a distinctive mark

– Dilutive of a famous mark

– A trademark protected by 18 U.S.C. § 706 (marks involving the Red Cross) or 36 U.S.C. § 220506 (marks related to the “Olympics”)

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• A trademark is famous if the owner can prove that the mark “is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner.”

• “Trafficking” in the context of domain names includes, but is not limited to “sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.”

• The ACPA also requires that the mark be distinctive or famous at the time of registration.

A court may consider many factors, including nine that are outlined in the statute, when determining whether the domain name registrant has a bad faith intent to profit, including whether the registrant:

1. Has trademark or other intellectual property rights in the domain name;

2. Has a legal or common name embodied in the domain name;

3. Has made prior use of the domain name in connection with the bona fide offering of goods or services;

4. Has made bona fide noncommercial or fair use of the mark in a site accessible by the domain name;

5. Intends to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;

6. Has offered to transfer, sell, or otherwise assign the domain name for financial gain, without having used the mark in a legitimate site;

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7. Provided misleading false contact information when applying for registration of the domain name;

8. Registered or acquired multiple domain names that are identical or confusingly similar to marks of others; and

9. Registered a domain containing a distinctive or famous mark.

Alliance IP Developments

The Alliance continues its copyright registration practice for its print and electronic materials alike

So too, the Alliance continues its enforcement efforts against all infringers of its copyrights and trademarks

The Alliance continues its trademark registration practice and enforces its rights against all infringers

The Alliance is enhancing its internal trademark policies with an eye toward brand development, protection and enforcement

If you know of or learn of any potential infringements of the Alliance’s intellectual property rights, then please inform the Alliance

If you wish to use some of the Alliance materials for a particular purpose, then just ask and the Alliance will find a way to help continue the mission of education.

Questions or Comments?

Cass Cook

ccook@anvil-law.com

(734) 794-4727