An Administrator's Guide to California Private School Law

Chapter 20 - Intellectual Property

Once a trademark owner becomes aware that another person or entity is using its trademark without permission, it should take prompt action to notify the infringer of its rights and to demand that the infringer “cease and desist” using the trademark. If trademark rights are not promptly enforced, the infringer may argue the trademark owner waived its rights to the marks. Remedies for trademark infringement may include disgorgement of profits, costs, attorney’s fees, damages sustained by trademark owner, and treble damages or statutory damages (where appropriate) for counterfeit use. 2568 The school or owner of the mark may also seek injunctive relief, including a temporary restraining order or a preliminary injunction, to prevent future infringement. 2569 B. C OPYRIGHTS A copyright protects an original artistic or literary work. 2570 The author of a work is generally the owner of a copyright. An author has a copyright in an expression of original authorship which is fixed in a tangible medium of expression. 2571 Original expressions typically created at schools may include poetry, computer programs, artwork, stories/fiction, video footage, photography, musical notation, recorded music, essays, songs, and drawings. The federal Copyright Act provides the copyright owner with exclusive rights to reproduce, create derivative works, distribute, sell or otherwise, publicly perform, and display the work. 2572 Copyright arises at the time of creation of the work. An individual does not need to register his or her work for copyright protection. As with trademark rights, copyright registration is a legal formality to provide public notice of copyright ownership. 2573 Again, however, registration provides several distinct advantages. For example, registration is necessary before an owner may bring an infringement lawsuit in court. 2574 If registration occurs before or within five years of publication, it will establish positive evidence of the validity of the copyright until proven otherwise. 2575 LCW Practice Advisor Remedies under the Copyright Act include attorneys’ fees (if the work has been registered within three months of the first publication), 2577 actual damages resulting from the infringing activity, or statutory damages where the actual damages are difficult to calculate or are not great (if, for example, the work has been registered within three months of first publication). 2578 If monetary damages are not adequate, a copyright owner may also seek a preliminary injunction to prevent future infringement. 2579 A question that school administrations often face is whether it is the school, i.e., the employer, or the employee who created a work that is considered the owner of the copyright. The determining factor concerning who owns material created in an employment situation is whether If a school learns of infringement of its copyrights on the Internet, it may send a notice to the online service provider under Section 512(c) of the Digital Millennium Copyright Act (DMCA) demanding removal of the infringing material. 2576

An Administrator’s Guide to California Private School Law ©2019 Liebert Cassidy Whitmore 614