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PR Perspective by Jane Baxter Lynn, JBL Public Relations Strategies jbl@jblprstrategies.com and Shannon Jost, Stokes Lawrence, P.S. shannon.jost@stokeslaw.com Among the key legal issues faced by PR and marketing professionals are intellectual property rights. Knowing how to manage intellectual property can ensure that the valuable messages and materials you create for your employers or clients are adequately protected. Understanding the essentials of trademarks, copyrights and other related legal issues can help you and the organizations you serve maximize the value of their corporate identity and avoid embarrassing or costly litigation. There are four key types of Intellectual Property – trademarks, copyrights, patents and trade secrets. In this Perspective, we are going to focus on the first two as they pertain to marketing and communications. Be aware too that we are only scratching the surface, as there are other issues relating to communications and the law that you should find out about, including rules relating to commercial speech, product endorsements, right of publicity, internet promotions and marketing to children. Step one is to familiarize yourself with the rules relating to trademarks and copyrights. Depending on the size of your company or organization you may wish to identify a law firm that specializes in this area and can guide you through the process. Developing a corporate or brand identity has always been important for the promotion and sales of products and services, as well as retention of customers. Successful brands like Coca Cola, McDonalds, Nike, Apple, Microsoft, and others have spent millions of dollars to both create and protect those brands. Unless they had, copy cats might have capitalized unfairly on these companies’ marketing to develop their own businesses. Indeed, many have tried to do so. First let’s look at the difference between a trademark and a copyright. According to Shannon, a Trademark is a word, device, or symbol used by an individual or business to identify its good or services, and to distinguish them from others. These include logo designs, colors, sounds and even smells, in the case, for example, of a perfume maker. Copyright is a form of protection provided to the authors of original works of authorship, including literature, plays or screen plays, musical works, artistic creations, and marketing materials such as brochures, websites or special events and promotions. Copyright is available to both published and unpublished works. Trademarks: The strongest trademarks are usually fanciful, made-up words. Everyone knows the story of how an American ice-cream manufacturer made up a product name Haagen-Dazs to sound as though it was Scandinavian, when in fact it means nothing. Trademarks also can be familiar words used in new ways such as Old Navy, Amazon.com, and Long Island Wine Country (a bit more on this last one later). The more unique a mark is, the stronger the protection it will receive. Developers of corporate identity programs also should be aware of another type of mark protectable under trademark law, called Trade Dress. Trade dress refers to a distinctive, nonfunctional feature or group of features, which distinguishes an individual’s or business’s goods or services from those of another. This involves “total image” and can include the color and design of packaging, configuration of the goods, and other features of the product. Well known examples are the Coca Cola bottles and the iPod. Things that you can look at and know without seeing a traditional product brand. On Long Island when I worked for the Long Island Wine Council one of the region’s wineries was sued by Duck Horn Vineyards in California because of its name and its labels. The premise was that Duck Walk Vineyards was too close in name to Duck Horn and ducks were used on the winery’s labels. Fortunately, the Long Island winery had covered all its intellectual property requirements and was able to show that the duck used by Duck Horn and those used by Duck Walk were completely different species. The names were also unrelated. It still cost the owners a lot of time, money and anxiety to protect their marks so you can imagine what it would have been like if they hadn’t protected themselves in advance.
When one is considering whether to pursue a trademark registration for a product or service, some items to consider are:
Before applying, the onus is on you or your lawyer to ensure that there is no-one else out there already using the marks or dress because ‘first usage’ is always the over-riding factor if it comes to litigation. Once you have decided to claim trademark rights in a trademark or service mark, you can use either the ™ or the SM symbol to indicate that you claim an ownership right in the mark. You can use these symbols regardless of whether you file an application for registration. But only once a federal registration has been granted can you use the formal registration symbol ®. Once you receive your registration, policing and enforcing your mark is essential. Although owning a trademark registration gives you a strong advantage, again the onus will be on you in the event of litigation to prove that you own and are protecting your mark. If you can’t, you may lose it. Your next step is to prepare a corporate style guide for your employees, licensees, franchisees, suppliers or anyone else who may use the mark with your permission to ensure that it is correctly presented. Here are some Trademark Usage guidelines from Shannon:
On this last point, when I was with the Long Island Wine Council, we used it as an opportunity to contact the media not only to let them know that Long Island Wine Country® was a registered trademark, but also to show that we were a professional organization. It also gave us the opportunity to give them more information about our wine and to request use of the website address in any further coverage. Copyrights: Copyrights relate to the original creations, covering the expression of ideas, not the idea itself. Copyright includes the rights to copy the work, prepare derivative works, distribute copies, perform or display the work publicly. It is not absolutely necessary to put the ©. However, inclusion of a copyright notice is a good idea so that others will be on notice that you claim rights in the work. On all marketing materials, including your website, you should include the date of production and the words “Copyright and name of your organization”. You’ll see at the end of this article a notice: Copyright © 2007 Jane Baxter Lynn and Shannon Jost. All rights reserved. Re-printed by permission. Interestingly, many people neglect to cover themselves in this way. Registration of your work with the U.S. Copyright Office (there is no state copyright protection or registration) is not necessary in order to obtain copyright protection. But if you ever need to pursue litigation, in most cases you must first have obtained a copyright registration. It is a good idea to pursue copyright registration early on - within 90 days of publication of your work - so that all of your rights will be preserved. What’s next: Once you’ve covered the trademark and copyright registration bases for your work, you need, as I’ve already mentioned to protect them. Shannon suggests:
Marketing in an internet world How to protect our brands and our messages in today’s internet world is even more challenging and is a huge subject in itself. The straight answer is: it’s not easy. With the vast array of forums, chat rooms, blogs, wikis, and other ‘social’ media, as these are being called, it can be virtually impossible (excuse the pun!) to police your marks. Remember the onus is on you to ensure your corporate identity, product or service are protected. Jane Baxter Lynn heads JBL Public Relations Strategies www.jblprstrategies.com, an international public relations, communications and marketing consulting business, specializing in the Arts, Travel & Tourism, and Wine industries. Jane has spent more than two decades in international public relations, corporate communications and marketing. She has worked in Belgium, France, South Africa and the United States. Her responsibilities have included management of global, national and regional communications, addressing both external and internal audiences. Her firm provides a senior level consulting resource, focusing on branding, strategic planning and marketing communications. Its mission is to help clients expand awareness, manage reputations, increase revenues and reduce costs through effective strategies. The company also serves as an on-site 'bridge' during management or company structure changes, or at times of extraordinary workload for communications executives. Shannon Jost is a shareholder of the Seattle-based law firm Stokes Lawrence, P.S. www.stokeslaw.com. Shannon has a broad range of experience in the acquisition, protection and enforcement of intellectual property; corporate transactions, and litigation of intellectual property and commercial matters in federal civil litigation and contested administrative proceedings before the U.S. Patent and Trademark Office. Shannon is admitted to the bars of New York and Washington States, and is a member of the International Trademark Association and the Intellectual Property Section of the Washington State Bar Association. Shannon frequently speaks and publishes on issues relating to intellectual property law and litigation. She obtained her J.D. from Columbia University School of Law. Copyright © 2007 Jane Baxter Lynn and Shannon Jost. All rights reserved. Re-printed by permission. If you have links, comments or information pertaining to the editorial you would like to share, please feel free to email me at info@workinpr.com. Space permitting, I'll include them in the next newsletter.
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