Re: Re: Copyright Vs Trademarks

My followup question to this thread is whether ownership of the trademark is worth anything if the trademark owner can't make any use of the thing trademarked without permission of the copyright owner. If the copyright owner won't license the trademark owner, and vice versa, is there a complete standoff?

Vance

On 4/27/06, Michael Graham <mgraham[_at_]marshallip.com> wrote:
> Jake:
>
> The situation you describe is one of those in which the differences
> between copyright and trademark rights and protection can permit the
> ownership of conflicting rights. Copyright protects the expression of
> the authors -- text and artwork -- as well as derivative works.
> Trademark protects consumers against confusion and enable trademark
> owners to enjoy and utilize the reputation and goodwill of their
> trademarks in the areas of commerce where they have established these
> rights. One basic tenet of publishing copyrigth law is that copyright
> does not protect titles. A second is that the title of a particular
> work is not entitled to trademark rights.
>
> However, if the same title is used for a series of books, then it does
> gain some trademark significance. Now the issue becomes: who can claim
> rights in that trademark, the author of the books or the publisher?
> Usually, contract law should determine these rights. There is also a
> presumption in trademark law that the manufacturer of items owns the
> rights in the trademark used for those items. However, this presumption
> may succumb to exclusive distributors who can claim rights, contract
> provisions, and industry practices.
>
> Presuming the author of the work developed the title and the series of
> works, he or she should be presumed to own trademark rights in
> trademarks used for those works. However, the answer in a particular
> case would depend on the specific facts, publishing agreements,
> correspondence, understanding, and practices in the business.
>
> Sorry to say, the answer seems to be: It depends. Legal research would
> no doubt provide some guidance and answers.
>
> Michael R. Graham
>
> Not a legal opinion.
>
> -----Original Message-----
> From: CNI-COPYRIGHT -- Copyright & Intellectual Property
> [mailto:CNI-COPYRIGHT[_at_]cni.org] On Behalf Of Danceland
> Sent: Thursday, April 27, 2006 5:27 PM
> To: CNI-COPYRIGHT -- Copyright & Intellectual Property
> Subject: [CNI-(C)] Copyright Vs Trademarks
>
>
> Hi Everyone,
>
> I'm hoping that someone has an answer to my question regarding DC comics
> registering the trademark for the name "Superboy" and how this trademark
> can stop its creators from using the title, As I said before surely the
> whole point of copyright is to protect the creator and I do realise that
> you cant copyright a name, however If a trademark can stop a creator
> from using the title of one of his creations then doesn't that make the
> very nature of copyright somewhat Impotent?.
>
> Is there a law that stops companies from applying for a trademark on a
> pre-existing copyright? or is a registering a trademark in relation to
> an already pre-existing copyrighted comic character the way that
> companies get around creators reclaiming their works?
>
> This is important to me as I am involved in a case directly relating to
> this and I don't understand US law in relation to this situation, so if
> someone could help, I would be grateful
>
> Regards
>
> Jake
>
>
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--
Vance R. Koven
Boston, MA USA
vrkoven[_at_]world.std.com