Re: Re: Copyright relating to trademarks.

From: Danceland <Info[_at_]danceland.tv>
Date: Mon, 09 Jan 2006 14:15:55 -0500


Hi Nate, thanks for getting back to me.

I'm in the UK.
My characters has in part the same name as the other company. For example, (hypothetically speaking of course) If there was a company called "Super Comics" that had been trading for years and I owned a predated copyright to a comic character called "Superman", what would your opinion be on this, as the goods are in exactly the same area.
If the character was only registered in the UK how does this affect the fact that the other compnay trades worldwide? This is the best way I can explain it at this point, if you could give me one last piece of advice it world be greatly appreciated

Many thanks

Jake

Jake - What country are you in? The law will vary somewhat from country to country.

With the caveat that I know very little about your character or the company's mark, there are a number of responses that you could have in the U.S. (and perhaps elsewhere), including:

  1. there is no likelihood of confusion because your character is sufficiently different from their mark;
  2. the goods that you are going to use the character on, even if related to theirs, are not sufficiently similar to the goods for which they use their mark;
  3. your use is not trademark use at all; and/or
  4. even if their trademark rights are senior to yours, their use of the character is an infringement of your copyright (this claim, in the U.S., would require a registration of your copyright).

This list is certainly not exhaustive. But even if you have a good position, this does not protect you from suit by the "bully." Unfortunately, your rights are not self-enforcing and the exercise of all of your rights may require the defense of litigation brought by such a company.

The bottom line is that you should, at a minimum, talk to a lawyer about what rights you truly have in relation to the company.

Good luck,
Nate



Nate A. Garhart | Coblentz, Patch, Duffy & Bass LLP | direct 415.772.5714 | fax 415.293.6419 |
One Ferry Building, Suite 200| San Francisco, CA 94111| ngarhart@coblentzlaw.com | http://www.coblentzlaw.com

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-----Original Message-----
From: CNI-COPYRIGHT -- Copyright & Intellectual Property [mailto:CNI-COPYRIGHT[_at_]cni.org] On Behalf Of Danceland Sent: Friday, January 06, 2006 11:55 AM
To: CNI-COPYRIGHT -- Copyright & Intellectual Property Subject: [CNI-(C)] Re: Copyright relating to trademarks.

Thanks for getting back to me David,

Yes they have made threats by stating in a letter that, "unless you give us
your unqualified undertaking that you wont use the title then we will be obliged to seek remedy by proceedings" and that I "must refrain from publishing in any way shape or form or they will place a cease and desist
order against me".

I really don't know what to do as they are a huge global company.

and compared to them legally, I am a "man of straw" if you see what I mean.
However I feel that morally this is unfair, as what's the point owning a pre'dated copyright, if a trademark in the same area can overrule it everytime?
Does this just come down to the size of lawyers?, it doesent seem fair.

Any ideas?

Many thanks

Jake

Jake - have they made any threat against you?

Sounds like you are what's called an "honest concurrent user" which can be a defence against trade mark infringement.

David Stewart
Head of IP/IT - Perth
Minter Ellison
Level 49, Central Park
152-158 St Georges Terrace
Perth, Western Australia 6000

Direct Line: + 61 8 94297494
Mobile: +61 (0)416 357 505
Fax: +61 8 9429 7666
E-mail: david.stewart[_at_]minterellison.com

www.minterellison.com

-----Original Message-----
From: CNI-COPYRIGHT -- Copyright & Intellectual Property [mailto:CNI-COPYRIGHT[_at_]cni.org] On Behalf Of Danceland Sent: Thursday, 5 January 2006 12:41 AM
To: CNI-COPYRIGHT -- Copyright & Intellectual Property Subject: [CNI-(C)] Copyright relating to trademarks.

I have a question that I'm hoping someone could answer. I own a copyrighted character that predates a company who is trading in the UK with the same name but the latter company has the trademark's in the particular area's associated with this property (in this case "printed matter" and "merchandise") Does this mean that even though your characters copyright predates the company who has been trading for some 20 years with the same name by 10 years that you cant trade with your character in any of these area's in any way shape or form?

Many Thanks

Jake Livingston

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