Info & Ideas About the First Amendment & Media Law



Some of the most common questions we get when we do workshops and on the Hotline relate to the dangers of publishing information on the internet and social media and publishing information gleaned from the internet. In that area, the biggest risk by far is violating someone’s intellectual property rights. Chief among those are copyrights. A quick overview of intellectual property and related issues can give you a framework for considering these issues.

We see copyright and trademark symbols every day. They appear on almost every product we handle, and we rarely stop to think about what those marks symbolize. But for professionals in advertising, it is essential to know at least the basics of copyright and trademark law, both to protect a newspaper’s rights and to avoid infringing someone else's intellectual property rights.

While there are some similarities between copyright and trademark, it is helpful to understand their differences. Copyright law protects the expression of an idea (although no one can corner the market on the idea itself), while trademark law identifies the source of a product or service. For example, John Lennon could not copyright the idea that Americans should give peace a chance, but he could and did have a copyright in his creative means of expressing that idea through song.

By contrast, the purpose of trademark is to identify the designer, maker or distributor of a product. For example, the words and slogans "Coca-Cola," "Coke" and "The Real Thing" all identify products produced by The Coca-Cola Company.


Think "Blurred Lines"

Copyrights protect the expression of ideas (as opposed to the ideas themselves). Facts cannot be protected through copyright. Titles and short phrases cannot be protected by copyright. ("Just do it" is a trademark, not a copyrighted phrase.) A copyright owner has essentially all rights to distribute, perform, and create derivative works. The mere fact of creating some original work creates a copyright, but unlike in the TM world, you must register to sue for copyright infringement. A few key things to know: Works that are very old likely are in the public domain. Materials that appear online likely are not in the public domain. The biggest and hardest question about a secondary use of material is whether it constitutes fair use (a statutory exception to copyright protection). A transformative use -- creating something entirely new and different -- is likely to tip the scale to fair use. Copyrights have a long but finite duration (generally, life of the author + 70 years).

In deciding whether the use of copyrighted material is a fair use, courts will consider four factors: (1) the nature of the original, copyrighted work; (2) the nature of the secondary, allegedly infringing use of the copyrighted work; (3) the amount of the original work that is used in the secondary use; and (4) the effect on the market of the secondary use.

Any publisher that has an interactive website on which third parties can post material should comply with the requirements of the Digital Millennium Copyright Act. The basics are that anyone who believes his or her copyrighted material has been wrongfully posted on your website knows how to complain about that and that you are responsive to those complaints. (The details are more complicated than that, but that’s the gist.)

Bottom line/takeway: If you didn’t write it, draw it, photograph it, then someone else did. That someone else owns the copyright, and you either must get permission to use it or satisfy yourself (and your publisher and your lawyers) that your use is a fair use.


Think of the name Nike, the Nike “swoosh” and “Just Do It”

Trademarks are all about designating or identifying a point of origin for a product or service. That is why Apple (technology) can exist in the same world as Apple Records (the Beatles). That is why Anhueser-Bush lost their lawsuit against the Florists Association of Greater Cleveland over their use of the phrase "This bud's for you." In both cases, the secondary users have different products with different markets, thus there is no confusion. Trademarks are acquired through use. They can be local, national or global. They can be registered for greater reach and greater monetary protection, but they don't have to be. Trademarks have a potentially infinite duration, but they can be lost through abandonment. Thus, they need to be policed. Aspirin was once a trademark.

There is little risk of trademark infringement by the news department. Use of a mark in news coverage will not lead to a likelihood of confusion, but your ad departments need to be more careful. Use of a trademark that inaccurately implies endorsement can be a violation of the law.

Bottom line/takeaway: The news department doesn’t need to worry much about trademark, but the ad department does.


Think Katie Heigl & Duane Reade

Though not exactly intellectual property, individuals who have value in their name or image have the right both to control the use of their images and to reap the financial benefits of their fame. Duane Reade Tweeted a photo of Katherine Heigl with the message: “Love a quick #DuaneReade run? Even @KatieHeigl can’t resist shopping #NYC‘s favorite drugstore ” The facts were true. The photo was authentic. But she sued for $6 million. They settled.

Bottom line/takeaway: Again, the news department doesn’t need to worry much about this, but the ad department does. News coverage of the rich and famous is fine, but using them to sell someone’s products (without permission) is not.

Patents and trade secrets are not intellectual property issues that are likely to touch any aspect of a news organization but are included here for completeness.


Think Round-Up and Round-Up-Ready Seed

Patentable subject matter is any "new and useful" process, machine, manufacture or composition of matter. Round-Up is a spray-on liquid that kills weeds. Round-Up-Ready seeds are bioengineered seeds that will survive treatment with Round-Up. Both are protected by patents. Patents are acquired through registration and approval by the US Patent Office. It's a lengthy and expensive process, but there is no other way to get a patent. Patents have a finite life, after which anyone is free to create and market the previously patent-protected creation.


Think formula for Coke

Trade secrets are protected entirely by being secret. The essence of a trade secret is that it is something of value that keeps its value by being secret. Coca-Cola expends enormous money and energy to keep secret the formula for Coke. Once the cat is out of the bag, all the value is gone. Trade secrets have a potentially infinite duration -- they last as long as the owner can keep them secret.

Email us with feedback, questions, or topics that interest you: