There’s no getting around it: designers and creatives of all types need to understand intellectual property law. This is so we can protect our own work in an age when images circulate freely around the Internet, as well as make sure we are providing viable products to our clients.
While this may sound like a tough, even overwhelming responsibility, it becomes much less daunting when you do away with abstractions and legal jargon and just explain the rules in simple terms. Here we’re going to explore one basic question that tends to cause needless confusion: what’s the difference between copyright and trademark?
Copyright directly affects all creatives, so listen up and listen close.
What is it?
The answer is staring you in the face: copyright is the right to make copies of some creative work – a drawing, a design, a film, a musical recording, etc. In the United States, the artist automatically possesses sole copyright to her work. Barring a few exceptions (to be discussed below), no one else has the right to copy it without his or her permission. The point of this law is to make sure that artists are able to profit from their own work and control their own reputations/oeuvre.
- Do you have to apply for it? No. In the U.S. and most other places, you automatically possess copyright when you create something.
- Does it expire? Yes. In the U.S. copyright expires 70 years after the death of the author. At that point it enters the “public domain” and anyone can copy the image.
- Is it universal? No. Copyright law varies from country to country. However, most countries’ laws are similar and many of them agree to respect one another’s laws.
- What does it apply to? Copyright applies to material things, not to ideas. If you draw a dog wearing a top hat, then the copyright applies to the particular arrangement of lines that compose the character, not the “concept” of a dog in a top hat. So another artist is free to make her own dog in a top hat, as long as the lines aren’t the same, or so similar that her drawing could be claimed in court to be “derivative” of the original artist’s work.
Exceptions to copyright law
Photo by Steve Rhodes
The U.S. allows people to use copyrighted work without permission under certain circumstances. This range of exceptions, mostly for discursive or educational purposes, is called “fair use” and includes: commentary, search engines, criticism, parody, news reporting, research, teaching, library archiving, and scholarship.
Copyright infringement is an illegal violation of copyright, and you can be punished under the law for this. We wrote about some famous copyright infringement cases in this blog post. For example, how artist Jeff Koons was pronounced guilty for making a sculpture deemed “derivative” of another artist’s photograph, while artist Richard Prince used another artist’s photograph even more directly, but was pronounced innocent on the grounds that his work was not derivative but rather “transformative.” (In reality, these are bizarre, borderline cases that make copyright rules seem less straightforward than they really are, so take them with a grain of salt).
Photo by Marina Noordegraaf
Trademark does not directly affect creatives in the way that copyright does, but it does directly and seriously affect the business owners who are your client, so you had better understand it.
What is it?
A trademark is a legal means of controlling your company’s brand marks (words and symbols, like a logo) to make sure that other companies do not use them in a way that would cause confusion in the marketplace or otherwise diminish your brand’s power to call your particular goods or services to mind. In short, it is a way of protecting the distinctiveness of your brand.
Here are the main facts you need to know about trademark:
- Do you have to apply for it? Technically, yes. Once your trademark is approved, you get to use the registered trademark symbol: ®. However, the United States gives businesses the benefit of pursuing trademark protection from the start, even if they have not officially registered yet. Any business can add the pending trademark symbol, ™, to their brand mark to signal that they intend to register a trademark eventually.
- Does it expire? Yes, in the United States trademark expires every 10 years. However, the business always has the option to renew at that time, so theoretically a trademark can last forever as long as the company exists and does not forget to renew.
- Is it universal? No. Businesses must apply for trademark registration in every country where they wish to operate. Laws vary from country to country and some countries do not respect trademark at all. However, in general most countries have similar rules and will respect foreign businesses’ trademarks, even if the company has not officially registered in that country yet.
- What qualifies a brand mark for trademark protection? In order to get trademark protection, a brand must possess sufficient “distinctive character.” In other words, the government can only protect your special rights to a proprietary mark or name if that mark or name was unique to begin with (if it looks like one of these generic designs, for example, then you will probably be out of luck).
U.S courts have actually outlined a spectrum of “distinctiveness” to guide trademark-granting decisions. Here it is, from most distinctive (and thus most likely to attain trademark status) to least distinctive:
- fanciful marks: totally made up words or signs, like Kodak, that thus have no existing associations
- arbitrary marks: words or signs that are familiar but have nothing to do with the business context, like Apple computers
- suggestive marks: words or signs that have obvious connections to the business or industry, but are not merely descriptive and require imagination, like Blu-ray
- descriptive marks: words or signs that simply describe the product, like a brand of potato chips called “Salty.” Such a brand would almost certainly not qualify for trademark protection.
The threat of “generic”
Photo by Rahel Jaskow
It is possible for words or marks that were once distinctive to lose their distinctiveness due to overuse by the public in a way that no longer refers to the original product. For example, “zipper” used to be a brand name for a specific company’s product, but soon people started referring to all zippers as “zippers” (indeed, we cannot even think of another term to use), so it became generic. When a brand officially becomes generic, its trademark privileges are revoked. The same thing can happen with designs. We wrote an article on this subject which you can read here.
Trademark infringement is a violation of a brand’s trademark rights and is punishable under the law. The U.S government recognizes two types of trademark infringement: confusability and dilution.
Confusability determines trademark infringement in cases where the trademarked word or logo is not especially famous. The logic is simple: if another company starts using a name or design that is so similar to the trademarked one that an average consumer could become confused about which brand refers to which company, then trademark has been violated. Obviously, two brands are more likely to be confused if they are in the same industry and/or regional market, and this is taken into consideration in trademark lawsuits.
If a brand is already very famous, like Coca-cola, then people are not likely to easily confuse it with a knock-off brand calling itself “Koka-kola” or something along those lines. However, famous brands do worry about another kind of infringement called “dilution”: this is when another party starts using someone else’s trademarked name to refer to something unrelated – like “Koka-kola breakfast cereal.” Associating this name with breakfast cereal could threaten to “dilute” the strong association in people’s minds between “Coca-Cola” and soda, so this would be considered trademark infringement.
The most well-known trademark infringement cases, then, naturally have to do with dilution.
For example, in 2002 lingerie company Victoria’s Secret sued a small sex shop in Kentucky called Victor’s Secret. Obviously there was no danger of anyone confusing the two, but Victoria’s Secret claimed that associating their name with sex toys harmfully diluted their brand associated with underwear, and they won.
Apple Corp., The Beatles’ multimedia company that formed in 1967, has sued Steve Jobs’ Apple Inc. for trademark infringement on several occasions – first in 1976, when Apple Inc. first formed (here Apple Corp. allowed Apple Inc. to use the name on the provision that they stay out of the music business), then again in 1989 when Apple Inc. introduced music playing abilities on its machines, and again in 2003 when Apple Inc. introduced iTunes. The two companies have since come to a settlement that basically allows both to use the trademark in certain ways, and to pay the other when they want to use it in other ways.
99designs’ Copyright Contract
Now that you understand everything there is to know about copyrights and trademarks, we encourage you to read 99designs’ Copyright Contract again so you’re totally familiar with the terms you are agreeing to when you sell a design on our platform. It’s pretty straightforward, but here are some key items you should be aware of:
- The 99designs Copyright Contract is a default. If you and the client both agree to draw up a different contract with its own terms, then that will automatically supersede the 99designs one.
- “Assignment of intellectual property rights” is what happens when you sell most things on 99designs. It means that you transfer all intellectual property rights, including copyrights, to the client. That means you cannot sell your design again because you no longer have the copyrights to it. That would be copyright infringement.
- “License of intellectual property rights” is what happens when you sell a readymade logo with a non-exclusive license. It means that you give the client copyrights to the design but not exclusive ones, so you also retain copyrights yourself and can sell the design again and again. Once this happens, the design can never be eligible for trademark protection.
- If your design has any third party content, like stock images, you must declare it to the contest holder by providing a link to its licensing conditions before they elect to purchase your design. Third party images are only allowed if you can transfer the license to the contest holder or if the contest holder can purchase the license himself or herself.
- As designer, you indemnify the client. That means that if the client suffers any legal costs as a result of your design (for example, if you committed copyright infringement or trademark infringement, whether by making something unoriginal or using third party images without permission, and the client gets sued), then the client can hold you, rather than 99designs, legally liable for reimbursement.
- 99designs is not party to the agreement. Meaning the agreement is just between you and your client.