The Affiliate Marketer's VeryVery Brief Introduction to Intellectual Property

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JerseyGirl

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Disclaimer: This is information only, NOT legal advice.

Breakdown- there are three agents of intellectual property protection (patents, copyrights, trademarks) and "Intellectual Property" basically covers four main areas:
- Patents: how something works (rarely used in Affiliate Marketing/ eCommerce)
- Design: what it looks like (rarely used in context to Affiliate Marketing)
- Trademarks: what you call it; a brand (most frequently used IP in Affiliate Marketing)
- Copyrights: artistic or literary expression (often comes up in Affiliate Marketing).

These are very general descriptions.

The first three can be prosecuted (e.g. applied for and obtained) through the United States Patent & Trademark Office (United States Patent and Trademark Office Home Page). The last operates under it's own power as the US Copyright Office.



Since Affiliate Marketing deals mostly with Copyrights and Trademarks, I'm going to skip describing what patents do and protect. If you would are curious, the USPTO offers a great FAQ section here: General Information Concerning Patents


Here short version of what each protect:

Copyrights: protects original works of authorship including literary, musical, artistic works, novels, music, songs, computer software and architecture. It does not protect facts, ideas, systems or methods of operation... though it might protect the way these things are expressed.

Trademarks: Includes any word, name, symbol, or device, or combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name."


FYI: When you see "TM" it means that someone has applied for a Trademark, but has not yet been granted a Registration. You can apply this to your brand as soon as you apply for the application - but it does not guarantee that you will actually be granted a Registration.


An ® means that the Trademark Application as been applied for and granted by the USPTO. The PTO agrees that the logo, word mark, phrase, etc. represents a novel brand that will not likely be confused with another manufacturer/ service provider in the same industry.

Next post: Copyright Protection- what it covers, when and why you need it, how to get it. {Bonus: It's very DIY-able (no hack $450/hr. IP attorneys necessary).}
 


Copyright Protection

Copyrights

Copyrights can protect online materials, including most website content. For websites this can consist of text, artwork, music, audiovisual material (including any sounds) {e.g. YouTube}, sound recordings, etc. It does not cover ideas, procedures, systems, or methods of operation.


The good news for Affiliate Marketers with big, heavy content-laden sites:

An author does not have to obtain copyright protection for his/her work under the present Copyright Act. It begins automatically upon creation of the work (e.g. when it is fixed in a tangible medium- like a website- for the first time). You don't have to register it with the U.S. Copyright Office or even carry a Copyright Notice.

That said...

The bad news for Affiliate Marketers with big, heavy content-laden sites:

If someone is ripping off the content on your site, you must register with the U.S. Copyright Office before you go after them for copyright infringement. In fact, if you fail to register your copyright before the infringement occurs (or within 3 months of publication), you may not be able to obtain statutory damages or compensation for attorneys fees (you can go after them for "actual" damages, but that may be hard to quantify and are signifigantly lower than statutory damages).



To put this in dollars and cents terms (e.g. terms AM'ers will respond to), in the U.S. basic statutory damages are between $750 and $30k per work, and if you were royally raked over the coals and have a good lawyer... you may be able to get damages up to $150k per work.

Bottom line:

If you have a lot of original, novel content and want to retain control of it- you may want to consider applying for a copyright. It's inexpensive, very quick (compared to getting a trademark), and anyone that can file a 1040EZ is capable of filling out the forms.

Unless you are protecting downloadable .pdfs or do not plan on updating your site (e.g. you have a static body of webpages), you'll want to designate your Copyright for a "Derivative Work". This means:

A. You submit your first Copyright Registration with all the materials your site now has (your deposit- more on that below)

B. You resubmit all of the updated posts/ content in 3 months (which CYAs for statutory damages as described above).

Downside: You need to pay $45 every three months and either print-out (or copy onto a CD) all the materials you've updated.

Upside: If you think you're in danger of getting ripped off, this is the best coverage you can have- and you can go after the maximum amount of damages allowed by law.


To get a Copyright you need:

1. A properly completed application form.

Most websites are text-based. If yours is – you'll want to use Form TX

Short form (when you are the only author and it was not made for hire) http://www.copyright.gov/forms/formtxs.pdf

Long form (all other cases) http://www.copyright.gov/forms/formtxi.pdf

If you have more video on your site than something else- use form PA

Short form (when you are the only author and it was not made for hire)
http://www.copyright.gov/forms/formpas.pdf

Long form (all other cases) http://www.copyright.gov/forms/formpai.pdf

2. A nonrefundable filing fee for each application. ($45 currently- check U.S. Copyright Office - Current Fees before sending it in, though, because fees are updated frequently; and

3. A nonreturnable deposit of the work being registered. (A copy of ALL the materials on your website you want copyright protection on... posts, articles, videos, etc.). Send this in duplicate- if you compile them and print it out, send two copies; if you compile it on cd, send two copies; or- send one on cd and one in print.

4. To send the above three things in the same package to:

Library of Congress
Copyright Office
101 Independence Avenue, SE
Washington, DC 20559-6000

You registration is effective on the day the Copyright Office receives it (your filing date).

For further information concerning Copyrights for Web-based material, checkout: U.S. Copyright Office - Copyright Registration for Online Works (Circular 66)
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While obtaining your own copyright is fairly easy and do-able, if you know of a solid case of infringement against your protected material this is when you should consult a solid Copyright-specializing IP litigation attorney.

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Next Post:
Filing Trademarks: What's DIY-able, What you definitely need an Attorney for...
 
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copyrights are what russian servers were built for. Good luck suing anyone in russia or anywhere else outside of USA for copyright infringement, it just won't stick and in europe/asia you'll just get laughed at.

Not saying i'm for or against IP but we all have our varying degrees of 'naughtiness', so host offshore if you're paranoid..

itch
 
Getting a Trademark

Alright- after a brief hiatus, here is the promised third installment of Intellectual Property for Affiliate Marketers- subject: Trademark Prosecution.

In the first post, I covered what a Trademark is... basically it’s protection of a brand.
In this post- I’m going to briefly cover how to get a Trademark for yourself on your website/ product/ service etc.

Continue reading if you want an abbreviated step-by-step breakdown of events. If you just want a summary of what you might be able to DIY vs. what you should definitely have an attorney for- skip to the next post.

The abbreviated (and approximate) timeline is something like this:

1. Search. You can DIY by doing what is called a “Common Law” search, wherein you query search engines, etc. to make sure that the mark you want to register (or one very similar to it) doesn’t already exist in the same class of goods/ services. After this, conduct a search of the Trademark Register here: http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=1anldf.1.1 Just leave the drop-down menu and fields at their default for the broadest search.

Provided that there is no existing mark out there doing the same thing you are doing, then the next step is to submit an:

2. Application. You choose a service or trade mark (see first post for definitions) and the class of goods or services. For internet related services reference this page: http://tess2.uspto.gov/netacgi/nph-brs?sect2=THESOFF&sect3=PLURON&pg1=ALL&s1=internet&l=MAX&sect1=IDMLICON&sect4=HITOFF&op1=AND&d=TIDM&p=1&u=%2Fnetahtml%2Ftidm.html&r=0&f=S

{Note: if your website is providing information, you need to register whatever class your information is about. From the USPTO: The class for this entry is indicated as 000 because providing databases is a service that is classified in the service class of the subject matter of the database; e.g., providing a database in the field financial information is classified in Class 36. The subject matter should be set forth so that it connects the content to a service for accurate classification.}

If you are running multiple classes, for example, a web based application for finance that also has a forum you may want to choose multiple classes of goods/ services (in this case, 36 and 38). As of this writing, the application fee is $325 per class if you file online, $375 in paper. Online is not as self-explanatory, but there are ample FAQ sections to hold your hand throughout the process. You can search keywords for what your mark is for here (http://www.uspto.gov/web/offices/tac/tmfaq.htm#Application018) to assess what classes you think you should consider. . Be sure you have a good copy of your mark in .jpg or .pdf format if you choose to do it electronically.

Trademarks are most often broken down into either design or word marks. E.g. Jon could register both WickedFire (word mark) and the logo, which would be a design mark. Even though these are both related and represent the same internet forum, they would be separate marks and must be filed for under separate applications.

Trademarks are applied for either before the mark is in use (called an ITU or “Intent to Use”) or once it has already been in use (known as a “use-based” application). If you are considering prosecuting a trademark, the difference is: An ITU will cyoa earlier, allowing you to possibly go after maximal statutory damages in an infringement case, but it will cost you more to prosecute because you have to go through an extra step in the application process (called the “Statement of Use”) where you provide a sample (“a specimen”) of your mark being used in commerce. If you are reasonably sure that you are going to launch your service/ site/ product within 6-8 months, this is probably the best strategy. If you do not know how long it will be before you use your mark, however, you will have to file for extensions of time every six months post Allowance... at a few hundred a pop. A ‘use-based’ application, on the other hand, is cheaper and- so long as the mark is not opposed (once the Trademark examiner has given your mark the ‘okay’). More on this in a second.

3. Office Actions. The trademark examiner will conduct a search of the federal register themselves to determine whether or not your mark in the classes you selected are actually novel. They will issue you, almost certainly, a rejection and give you six months to fix whatever is wrong. This is normal. Assuming it’s something procedural, e.g. they want you to omit a few services/ goods in your chosen class descriptions, then it’s possible to just reply yourself. If you receive what is called a 2(d) rejection, however, (e.g. a rejection for descriptiveness, similarity) at this point you should consult a trademark attorney if you have filed on your own. It’s hard to overcome these without an extensive knowledge of the law and/or ability to conduct legal research.

4. Publication. You’ve overcome the Examiner’s rejection, they agree with you, so the mark is published for all the world to see. Great. There are 30 days from the date of publication for someone to oppose your mark, meaning, if someone either reviews the register or, more likely, has what is called a “watch service” reviewing the register for them, sees your mark and believes it’s conflicting- then they can file a Notice of Opposition. This is a gigantic pain in the ass, and is best farmed off to an attorney. Assuming no one opposes your mark, then....

5. For Intent to Use applications only, Use-based skip to 6- You are issued a Notice of Allowance. Send the TM office a copy of your mark in use (for a trademark on an internet site, for example, you can send them a screenshot) and pay a fee ($100 per class). Then...

6. Registration. You are issued a “Certificate of Registration” and can apply the ® adjacent your mark. Now you can go after anyone ripping you off like billy bad ass.
 
Getting a Trademark, Pt. 2

Summary:

(Again, this is for information only, not to be considered advice. Do with it what you will.)

DIY-able vs. Attorney TM steps:

-Search, esp. on the USPTO website and common law. This is not comprehensive, but it’s a pretty safe bet.
-Application. If you are reasonably sure what class of goods your mark falls under (look here: http://tess2.uspto.gov/netahtml/tidm.html ). Doing this on the internet will save you $50 per class.
-Office Action Responses. If you get a very general rejection around something procedural, or semantics, etc. you can probably respond yourself. Use common sense- if it’s over your head, or if you get a 2(d) refusal, consult a trademark attorney. (Not your estate, criminal, or tax attorney).
- Your mark gets opposed after publication. Consult an attorney. I’ve seen one guy successfully defend his mark solo and negotiate his own settlement terms, but I’ve been doing this for five years now- and I can’t think of any others. If you think you’re a hot shot, go for it, but it’s probably more trouble than it’s worth and the might-end-up-screwing-yourself factor is pretty high.
-Statements of Use. If you haven’t had to consult an attorney yet, don’t do it now. This is a fill-in-the-blanks kind of form and you can sign it yourself (since you’re the applicant) and provide your own specimen. You’re only cost is the government fee.
-An exhaustive trademark FAQ section can be found here: http://www.uspto.gov/web/offices/tac/doc/basic/

Reasonable cost difference of:
DIY vs. trademark boutique (all the law office does is IP) vs. a trademark attorney at a large conglomerate firm (like DLA Piper, Morgan Lewis, Dechert, etc.):

Given: best-case scenario, one class, you’re already using the mark, it’s not opposed and you don’t take any extensions of time and the filing is done online:

Solo: $525-600 for government fees.
Trademark Boutique: $1500 – 1800
Large Firm: $2500 – 3000

Bottom line for AM’ers:
If you’re making X,XXX per day already, outsourcing it is the best ROI and probably the fastest way to obtaining a ®.

If you are under this, it’s a coin toss as to which the more cost-effective measure is going to be. Then again, if you’re doing < $400, protecting your intellectual property may not matter too much.

My personal opinion from having worked in this industry, I’ll say if you're going to outsource the best bang for your buck is to go to a Patent & Trademark boutique. These firms are like application sweatshops; it’s all the do, all day, everyday... and while it sucks to work at one (my first job post-graduation) it’s cheaper, often faster, and - from my experience- often of better quality. The pitfall of doing this stuff with a large firm is that they don’t specialize, and their IP practices are often just to bring in clients that may give them more lucrative work in the future- like litigation. Sometimes stuff gets missed because they are concentrating too heavily on their bigger money clients or cases, or they have staff that doesn't really know anything about intellecutal property (which is a highly niche field in law... even among attorneys).

Next post: Quick case study of registering Jon’s WickedFire Design mark.
 
Registering the WickedFire mark.

Theoretical scenario ... so Jon wants to register the WickedFire mark.

zGrxe.jpg



This is a design mark, so it’s a little harder to search for other marks out there than just words. I’m not going to go through the time-intensive task of conducting a TM search on Jon’s behalf... but, as I think most people on the board are aware, there is at least one mark in commerce that is similar.

The Spitfire Skateboard Company mark:

spitfire_logo.jpg

http://endemicskatestore.com/store/images/spitfire_logo.jpg
Again, not an exhaustive search of the Spitfire Skateboard Company logo trademarks, but one of their registrations (for stickers) is here: http://tess2.uspto.gov/bin/showfield?f=doc&state=rtluf4.5.49

So what does this mean for Jon and applying for a design mark?

1. He’ll probably pay to do an exhaustive search (outsourcing to someone like Thomson, either through his TM attorney or directly, unless he has an attorney who does this in-house (very few do)) so that whatever classes he applies for, he’s not overlapping with Spitfire (aka S.F. Deluxe Productions, Inc.).

The marks are pretty similar, so there is a likelihood of confusion. That said- since they conduct totally different businesses, as long as WickedFire takes care not to overlap in the classification of goods, it may be registerable. The Spitfire attorneys may, however, take issue with Jon saying that he’s going to register the WickedFire logo in class 25 (all clothing and headgear) for which they already have a known trademark registration.

For this reason alone, it’d be a good idea to outsource applying for this mark to an attorney. Responding to oppositions is dicey and negotiating settlement agreements can get ugly.

(Also, a note: TMs for brands in commerce. Distributing WickedFire t-shirts for free probably wouldn't constitute infringement, as Jon's corp isn't making any money on it. Of course... if there was already a settlement agreement pre-existing prohibiting any distribution, that's another thing.)

2. Assuming he gets the go-ahead from search results and his attorney (who is looking to make sure there is no ‘likelihood of confusion’) he files an application in as many classes as the mark is used in business in. Since WickedFire is an internet-based forum/ chatroom, his attorney will probably apply in Class 38 (internet forums for transmission of messages among users...). If he wanted to branch out and expand the scope of the services WickedFire offers (say, for example, web design services) he could apply for multiple classes in the same application. (If after the fact, he can amend his original application to include new, expanded classes and just pay a surcharge on government fees.) We’ll assume he’s sticking to one class now, so that’s $375.

As soon as he applies for the Trademark, Jon can add a “TM” next to the logo if he wants.

3. Prosecution. His attorney is likely handling office actions, as well as any potential oppositions once his application is published. Assuming all goes well, and that he’s filed a use-based application (since he’s already using the mark in commerce), he pays some more bucks (< $500, but it’s situational) in government fees for publication and obtaining his Certificate of Registration.

The average length of time for a trademark application (with no oppositions from existing marks) is about 10 – 12 months.

4. Registration. Once registered, he can apply the ® to the WickedFire Logo/ Design mark.

To keep it in force, Jon will pay small government fees at the 8 & 15 year points and file a document to demonstrate continued use (e.g. WickedFire is still around and the logo is still a part of it).

During this time, if he encounters someone who, say, uses something very similar to his design for another forum elsewhere... like wickedfire.info or some trash, he can go after them for not just “real” damages (e.g. how much business they may have taken away) but also statutory. Likewise if someone takes the logo and recolors it to Blue, or Green, or whatever and uses it in a different internet forum on affiliate marketing. All of these constitute infringement because they dilute the WickedFire logo in commerce.

Remember the word dilute – it’ll come up again in the next post on steering clear of infringing on other peoples/ corps/ networks/ advertisers trademarks.
 
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