Lesson 3: Understanding Trademarks
By Terri Hopkin (2005 ©Terri Hopkin)

The legal definition of a trademark is:-

“A trademark is a distinctive name, phrase, symbol, design, picture, or style used by a business to identify itself and its products to consumers.”

Think of McDonald’s and the Golden Arches, recognized throughout the world, it doesn't matter if you are in Times Square, beside the Eiffel Tower, or at the Pyramids in Egypt, the Golden Arches are instantly recognizable! There are many symbols like that, think of Coca-Cola; Kodak; Mickey Mouse; Forever Friends Bear; Harry Potter; Star Wars, etc., the list is endless.

Trademarks have to be applied for and registered with the necessary authorities. However unlike copyrights, once a trademark is registered it MUST be actively used and defended! The law is very clear:-

• If a company does not use it, they lose it.
• If a company does not prosecute for misuse, they are in danger of losing the actual trademark!
• If the company is selective in whom they prosecute, then that too can cause them to lose the trademark.

Put it another way, if companies do not prosecute each and every abuse that they see, regardless of whether the offender is just using the trademark for fun, and not making a profit, then their very business is under threat. Stop and think for a moment, what would happen to the Disney Corporation if they lost the right to their trademarks? Would they still have a business?

We are all familiar with the copyright sign - ©, but what about the two trademark signs - ™ and ® do you recognize them both and know what they each mean?  When you see the sign ® it means the owners of the trademark have fully registered the trademark and it has been approved by the legal authorities.  The ™ sign means the registration is pending.  Both are totally legal and both are enforceable by law.

So how do you register a Trademark, what is the Process?

In “common law” countries such as US, Canada, Australia, the UK and the other countries of the European Union, a trademark must first be adopted before it can be registered. This means that the public must be familiar with the brand and able to recognize it before the law will allow the company to officially register it.

A brand name that is recognized everywhere is Johnson & Johnson ®, their products are on every pharmacist and supermarket shelves across the globe. The Company obviously has the name Johnson & Johnson ® trademarked, but they go one stage further and trademark each of their individual products too.

When a new product is launched, you will find it on the shelves carrying the ™ sign – last year the company launched a new product called Holiday Skin™. The simple ™ sign allows Johnson’s to trade and establish the brand while making the public aware of their new product. Through time, the authorities will grant Johnson’s a fully registered trademark and they will be able to change the ™ to a ® sign.

Whether a product displays the ® or the ™ mark, the law recognizes both marks as being legal, and breach of either trademark is an offence.

So what does this have to do with you and your creating?

Stop for a minute and think of the number of letters or tubes you have seen, perhaps you have even had them in your own collections,  of movie stars, movies, rock stars, Disney or Warner Brothers characters – I am sure you will agree the online graphics community is awash with such images. Unless a license has been issued, all of these images are an infringement on the owner’s trademark.

The movie industry as well as being about entertainment is about making money.... BIG, BIG, BUCKS! Nothing new there then, lol! The whole process is surrounded in red tape and contracts, nothing moves without the legal teams making sure that all possible avenues are covered. It is an area where copyright laws and trademark laws merge and intertwine with one another.

The Harry Potter novel “Harry Potter and the Half Blood Prince” was already under contract for movie production before the actual book hit the shelves. While the actual literary work is governed by copyright law, the “Harry Potter” trademark is owned by Warner Bros. WB have the trademarks filed for everything from pencils to greeting cards; from t-shirts to computer games; the list is endless. If you use one of the promotional posters or online graphics that people have “snagged” or "tubed" you are not only Breaching Copyright, but Infringing WB’s Trademark too.

The same rule applies to actors and actresses that appear in movies. The studios know that a big part of their advertising campaigns will be driven by the leading actors dressed in their character roles. Think of your favourite movie, think of the trailers you seen, promotional posters etc., I would bet the majority of the publicity focused on the central character. To ensure the maximum income is derived from every movie, the studios file for the trademarks as standard practice. The actor and actresses personal contracts will be worded in such a way that they are prevented by law from making any money or for granting permission for use of their own “faces” while in the character role. LOL! It might be a photograph of them, it might be their face staring back at them …….. but while in character or on set, the studios own their image. It is part of their “contract”.

Is Breach of Copyright and / or Trademark a criminal offence or is it a civil matter?

The answer is that all too often it can be a Criminal Offence and punishable under criminal law. The law in this area is tightening all the time. It is always a Civil Offence and there are strict fines and penalties attached.

Okay, enough of the legal “stuff” I want to show you how the law applies and how you can have a great hobby …..Legally!

Trademarks

Just as in lesson 2, I need you to get back into character as our famous artist …lol! 

A world famous Movie Production Company approaches you, they have seen your work and they want to commission you to paint a series of six new images to accompany the new movie they are producing!! They own the trademarks and the copyrights of the original characters, but they want you to produce a Limited Edition Collection of prints to accompany the movies release (fictional I know …lol)

Their lawyers work with your lawyers and a Contract is drawn up, you will not be allowed to sell the finished paintings yourself, you agree to be bound by their copyright and trademark restrictions.

In this example the Movie Production Company owns all the rights, you have been paid to produce to their specifications, and the characters were never your property to begin with. You are allowed to keep prints and copies of the originals to add to your Portfolio or Resume. You are allowed to display the images on your own website as proof of the standard do your work.  But under NO circumstances can you produce your own copies, authorize distribution or sell the images yourself.

This lesson is the property and copyright of Terri Hopkin and Cathy Poage; ©2005. All Rights Reserved!