Copyright And Trademark Law For The School Lawyer

Carol Simpson, Ed.D., J.D.P l a n o , T e x a sc s i m p s o n @ e d l a w . c o m

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C o l l e e n U h l e n k a m p , J . D . , L L M .M a d i s o n , W i s c o n s i nc u h l e n k a m p @ d k a t t o r n e y s . c o m

S c h o o l L a w P r a c t i c e S e m i n a r 2 0 1 5O c t o b e r 2 3 , 2 0 1 5

Copyright © 2015 National School Boards Association. All rights reserved.

Trademark Basics

Trademark: word, phrase, logo, sound, color, smell, device, product packaging, or design that functions to identify the source of the goods on which the trademark is affixed.

Service Mark: word, name, symbol, or device (or any combination thereof) that services to identify and distinguish services from those of another person or firm.

Copyright Basics

Promote the progress of science and useful arts. Original works of authorship fixed in any tangible

medium of expression. Copyrights do not have to be registered to be

protectable.

Scenario 1 - Image infringement

Tech instructional specialist maintains MS web site. Finds image of calculator in a private school online

newsletter. Makes screen print of the image and manipulates it

before posting it for three weeks next to announcement regarding technology assessment.

The district maintains an acceptable use policy for the electronic communications system.

QUERY: How should the district respond to a cease-and-desist notice from a company that manages licensing for the artist who created the calculator image?

Image Issues Photos & Video All likely are protected by copyright except older.

Fixed after 1-1-1978. 17 U.S.C. § 101

Questions to ask:1. Is the use statutory?2. Is the use fair? 17 U.S.C. § 107

Collateral questions: Derivative work? 17 U.S.C. § 106

Scenario 2 – Implied relationship

Private football prep academy meets at the campus of community college.

At meeting announcements and on its website, academy directed participants to register for courses at the college.

Practice led some participants to believe that the college endorsed the academy’s programs; others believed that there was a formal affiliation.

QUERY: Must the college take formal action and direct the football prep academy to post a disclaimer on its web site stating that it was not affiliated with or endorsed by the college?

Trademark use issues

Trademark usage? Dilution Likelihood of confusion

Community college’s use of facilities policy?

Scenario 3 – Unlicensed use of mark

A candidate for constable featured a cartoon animal logo in her campaign advertisements.

At a parade, a district administrator saw the campaign materials and recognized the logo as a school mascot.

QUERY: What can or should the district do?

Implied relationship issues

Trademark identification and/or distinguishing characteristics – how unique is it?

Registration? Dilution/Likelihood of confusion? Licensing of logo? Cease and desist?

Scenario 4 – Logo infringement

School district wants to sell clothing, sporting goods, and office supplies featuring school logos and names.

District approached by licensing company that specializes in this service by licensing logos and names to retailers and promoting the retail merchandise on its web site.

District negotiated and entered into a contract with the company.

In exchange for royalties, district also negotiated and entered into licensing agreements with the individual merchants.

QUERY: In the course of negotiations, company noticed that one district logo resembled the mascot of a university. What should the district do?

Logo issues

Registration? Trademark bounty hunters CLC

Cease and desist? Likelihood of confusion.

Registration

How long have you been using your mascot? Has someone else registered it? Federal or state? Are they a prior user? Do you want to go to court to challenge? Do they want you to cease and desist?

Worst case – cease & desist

You are using a registered mascot Can you license it back?

Ga Tech - $1/yr Texas State – hell no

Design your own?

Mascot similarity?

Woodrow Wilson HS – Dallas Two logos – Univ of AZ and Kansas State

Fight Standards

Likelihood of confusion Dilution

Scenario 5 – protected ideas

To celebrate its 75th anniversary, district contracted with a manufacturer to develop a commemorative board game.

The property trading game is called “Districtopoly” and involves colored squares, chance cards, currency, and game pieces shaped like the mascots at district schools.

The manufacturer required the district to submit original art for the board design and write original history for the cards.

QUERY: What liability may the District face if it sells hundreds of copies of Districtopoly, mostly at local businesses that are featured in the board game?

Copyright v. Trademark

Hasbro owns “Monopoly” wordmark.

Merger analysis

To determine the scope of copyright protection in a close case, a court may have to filter out ideas, processes, facts, idea/expression mergers, and other unprotectable elements of plaintiff's copyrighted materials to ascertain whether the defendant infringed protectable elements of those materials.

Comparison of literal language or expression provides strong evidence.

Ideas or expressions?

Heart shaped photo of Earth? IDEA Meade v. U.S.

Bee pin? IDEA Herbert Rosenthal Jewelry Corp. v. Kalpakian

Cake decorating book? EXPRESSION

Marcus v. Rowley

Marcus v. Rowley (9th Cir. 1983)

Teacher (Marcus) taught food service. Left school, then wrote booklet. Used booklet to teach adults.

Current teacher (Rowley) took class, then used 11 of 35 pages of booklet for “Learning Activity Packet” she used in her classes. 60 students got the LAPs.

Rowley gave no credit, had no permission.

Marcus v. Rowley (9th Cir. 1983)

Rowley’s student took Marcus’s class and accused Marcus of plagiarizing Rowley’s work.

Marcus sued Rowley & district. Both claimed fair use.

Marcus v. Rowley (9th Cir. 1983)

1. Purpose & Character – put to same use as original, no citation or permission

2. Nature of work – work was both informational and creative

3. Amount used – ≈ 50%, most all of substantive content

4. Effect of use – one student refused to buy because of Rowley’s use.

NOT FAIR

NOT FAIR

NOT FAIR

NEUTRAL

Scenario 6 – copyright ownership

An educational institution and a course content provider entered into a hosting and services agreement.

Agreement treated the instructor as the owner of “independently created academic content” while reserving the right to make “content enhancements” to the course content provider.

QUERY: How will the district distinguish “independently created academic content” and “content enhancements” in case of a dispute?

Issues - ownership

Five rights of copyright owner are separate and distinct; grant of one does not necessarily waive the rest. Columbia Pictures Industries, Inc. v. Redd Horne; 17 U.S.C. §

201(d)(2).

Copyright owner has exclusive right to prepare derivative works. 17 U.S.C. § 106

Who is the copyright owner by law? 17 U.S.C. § 201(b)

District owns IF: Prepared by employee within scope of job OR Work was specially commissioned as either:

Contribution to collective work Part of motion picture or other AV work Translation Supplementary work Compilation Instructional text Test Answer material for a test Atlas

MORE work for hire

Issues Is creator an “employee”?

Common law agency will work – does not have to be salaried and regular EE

BUT beware of independent contractors ICs will own copyright in their work –

get a transfer Is work “within the scope”?

E.g. curriculum guides

Questions

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Contact Us

Carol Simpson, Ed.D., J.D. csimpson@edlaw.com 972-377-7900

Colleen Uhlenkamp, J.D., L.L.M. cuhlenkamp@dkattorneys.com 608-770-9318