Creatives and entrepreneurs are vulnerable to intellectual property theft but often don’t know how to protect themselves. Sean Lynch is a lawyer that specializes in helping creatives and entrepreneurs protect their intellectual property. As an avid surfer who has helped many in the surf industry, he is known as the surf lawyer. Sean was kind enough to answer questions that all creatives and entrepreneurs need to know about the legal system.
This is a MUST READ if you make art, have a small business, or are thinking of starting one!
What is the difference between a copyright, trademark, and a patent, and how can small businesses or artists use them to protect their work?
This is a common question, and it’s something every entrepreneur should understand. To oversimplify:
- Patents protect ideas and inventions
- Trademarks identify the source of goods or services
- Copyrights protect creative works
Patents are a grant of property rights to an invention. I have helped my clients to file patent applications for inventions ranging from new wave pool technology to videogame mechanics to cybersecurity technologies. If you’ve come up with an invention like a unique new surfboard fin or a new method of shaping a board, you should protect that with a patent.
Patents create immense value for small businesses and inventors because they grant you the right to monopolize your invention for 20 years. No one else can do whatever it is you have issued claims protecting. If you’re ever in a position to sell your company, your patent portfolio will be a major factor in determining your company’s value.
Trademarks protect brands act as source indictors. In other words, trademarks indicate to consumers where a good or service comes from. For example, if you buy something with the Nike swoosh on it, you know you’re getting a (presumably high quality) product from Nike.
Copyrights protect creative works, such as photographs, books, blog posts, sculptures, etc. Copyright ownership encourages people to create artistic, literary, musical, and other works by granting ownership of exclusive rights to their creations for a specified length of time (which. thanks to companies like Disney, is not a simple thing to calculate). Article I, Section 8 of the Constitution (where copyrights find their roots) exists in part “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” This clause has manifested into the body of law we have today governing copyrights.
There are two important aspects to consider when you’re developing a brand: is the proposed mark available, and is the proposed mark registerable?
What are the advantages of registering your copyright?
It’s important to clarify: you own your copyright the moment you create a work. When you take a photograph, when you draft a blog post, when you write a novel – the copyrights in those works belong to the author (except in some circumstances like if it is a work made for hire).
Copyright ownership grants you the following rights:
- to reproduce the work
- to prepare derivative works based upon the work
- to distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending
- to perform the work publicly
- to display the copyrighted work publicly
- in the case of sound recordings, to perform the work publicly by means of digital audio transmission
- in the case of a “work of visual art” the author has certain rights of attribution and integrity
Registration of a copyright entails letting the Copyright Office with the federal government know, “hey, this is my thing!” When you register a copyright, you are afforded the following rights:
- a legal presumption that the copyright is valid
- a legal presumption that you own the copyright
- the ability to recover up to $150,000 in statutory damages
- the ability to recover attorney’s fees
- the ability to prevent importation of counterfeit goods via the U.S. Customs Service
- some jurisdictions require registration before any copyright rights can be enforced
- worldwide recognition (167 countries)
And you cannot bring a lawsuit for copyright infringement without at least filing to register a copyright (this is certainly true in the 9th Circuit where I practice law).
What are some trademark minefields entrepreneurs should be aware of when naming their business?
There are two important aspects to consider when you’re developing a brand: is the proposed mark available, and is the proposed mark registerable?
An availability analysis involves a comparison of the proposed mark and senior marks, and the goods or services offered under the respective marks, to determine whether there is any likelihood of consumer confusion as to the source of the goods/services offered under any senior marks versus the goods/services to be offered under the proposed mark. The primary factors that affect a likelihood of confusion analysis include the sight, sound, and meaning of the mark and similarity of the goods/services offered under the mark.
Registerability, on the other hand, is best described on a spectrum:
What are the basic steps content creators or entrepreneurs should to do protect their intellectual property?
Talk to an intellectual property lawyer! We can help you figure out what you need.
But regardless, if you’re starting a business, you will certainly be considering what to call your brand. That means a trademark. If you’re going to create a logo, that implicates copyright (if you pay someone to create your logo, always get a copyright assignment), and you’ll also want to register your logo as a trademark. As a rule of thumb, if you must pick between registering a word mark and a logo, always register the word mark first. Your brand name will remain the same for much longer than your logo. As far as patents go, if you’re launching a business because you have a terrific new idea, product, design, or invention – you will need to speak with a patent attorney to determine what strategy makes the most sense for you and your business.
If you’re a content creator and you, for example, create YouTube videos to collect ad revenue through YouTube’s monetization system, you need to take copyright law seriously.
Here’s an example of an issue I helped a client with:
My client is a YouTube content creator. He made a video that someone else re-uploaded to their own channel. This bad dude then got 8 million views on the video, getting him a decent amount of cash from YouTube. My client, naturally, was not happy. Because my client could register his copyright (the theft occurred within 3 months of initial publication – normally you must register your copyright before infringement), I was able to help my client go after the bad dude for statutory damages. That means even if my client were harmed for only $50 worth of lost profits, we could still go after the thief for up to $150,000 (the statutory damages maximum). Still hard at work on that one!
What should an artist do if their work is being shared without their permission?
Talk to a lawyer. If the infringement occurred within three months of initial publication, you can still register your copyright and go after the infringer for statutory damages along with attorneys’ fees and costs. If the infringement occurred after that, a lawyer can help you assess whether it is worth going after the infringer.
I’ve been surfing for about 9 years now, and I’ll probably never stop.
Artists and small business owners often don’t have the resources to mount a large legal challenge, and thus they can feel powerless when faced with copyright infringement or theft. How can someone with fewer resources fight back?
There are a few things that work in favor of artists and content creators when it comes to copyright infringement. First, if you register your copyright and someone infringes it, just about any lawyer will take the case on contingency. That puts you in a very strong position over the infringing party since you will not be required to prove damages. Instead, you can just point to your copyright registration and make demands for a settlement (up to $150,000 can be recovered at trial if the infringement was willful).
Second, if the copyright is not registered prior to the infringement, you can still go after the other party. Settling a lawsuit is a hell of a lot cheaper than litigating it, and it is not uncommon for a settlement offer to come onto the table when the specter of litigation is present. An intellectual property lawyer can help you assess the strengths and weaknesses of your case.
Listen to my indie band Lonely Singles on Spotify and Apple Music!
In this post you mentioned that professional surfers should consider trademarking their names. Should artists, writers, or entrepreneurs consider doing the same? What if you have a common name?
Not necessarily. With everything in law, there is a lot of nuance that isn’t always discussed (for example, in blog posts I leave out a lot of finer points in favor of getting a larger point across clearly). Professional surfers (and other professional athletes) are essentially making themselves into public figures. Their name is everything, and if they want to, for example, launch a line of surfboards using their name as the branding, then they should absolutely apply to register their name as a trademark for use in association with surfboards. Remember: trademarks are indicators of source. So if you buy a SEAN LYNCH surfboard, you know where it came from.
The same isn’t necessarily true for artists, writers, and other entrepreneurs. An author, for example, is selling a book, so their name on the cover of the book is merely identifying authorship. But if your name is used to identify a series (a la Tom Clancy), then you could potentially register your name for use in association with a series of literary works. These same concepts apply to other kinds of artists.
How did you get into surfing?
I lived in Santa Barbara, California until I was 8 years old, but then grew up outside of Atlanta. After I finished undergraduate at Georgia Tech, I moved back to the west coast for graduate school at UCLA. I bought a board and just went every single day until I could do it. I’ve been surfing for about 9 years now, and I’ll probably never stop.
Do you have any tips for someone new to the sport?
Be persistent! It takes a ton of time, but once you build the endurance and basic skills, you will improve quickly. Just keep going!
What is the most interesting or fun legal case you have been involved in?
I helped a pair of artists that painted an amazing mural in Venice beach go after a major record label for copyright infringement. The artists’ mural was used as the album artwork for a single that gained massive popularity, and their artwork was plastered all over the marketing materials – without their permission. That’s textbook copyright infringement, and their case ultimately settled.
Any other tips for artists and entrepreneurs looking to protect their work?
Focus your resources. Talk to your attorney about the entire universe of possible protections, and the develop a strategy together that fits into your budget and your business goals. There’s no silver bullet here, so be sure to find someone that will take the time to step into your shoes and be mindful of your limitations.
What’s next for Sean Lynch?
I’m currently building my practice and book of business. I’d love to get to a point where I need to hire another attorney to keep up with the workload, but I’m not quite there yet. For now, just enjoying my life. This year I’m planning to travel to Belgium for a week and a half, backpack through Yosemite, go camping in Big Sur, and spend a weekend four wheeling in Death Valley. Lots of fun stuff coming up!
Visit Sean Lynch at The Surf Lawyer homepage and on Twitter!
