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So it seems the gun world is up in arms (that’s right, I went there) about the fact that the Spearmint Rhino chain of strip clubs has sued gun manufacturer Chiappa Firearms for using a confusingly similar mark on its RHINO 40DS model .357 magnum (Spearmint Rhino Companies Worldwide Inc. v. Chiappa Firearms Ltd et al., 2:11-cv-05682-R–MAN, Central District of California).  I’ve seen no comment from the strip club community.  Apparently they have what they regard as better things to focus on.

Let me mention at the outset that a good friend and eminent member of the Michigan bar tipped me off to this, uh, tussle.  I appreciate it very much because a) it provides a great opportunity to talk about an enduring public misconception about trademark infringement, and b) nothing drives traffic to a blog like the phrase “strip club” in a post title.

The Spearmint Rhino and Chiappa trademarks at issue in the law suit.

Here’s a good photo showing a comparison of the marks, courtesy of this article on the GUNS.COM site.  (I couldn’t help smiling at the phrase “PLENTY of VIDEO” in the title – another savvy web marketer at work.  Touche, my friend.)

I don’t think it’s unreasonable to observe that, aside from the rhinos facing in different directions, the marks actually do look quite similar.  Spearmint Rhino has registered its rhino-outline-in-a-circle mark for “T-shirts and hats; lingerie, namely panties, g-strings, brassieres and corsets for semi-nude and erotic dancers; golf clothing, namely golf shirts, jackets, vests and caps.”  Chiappa has registered its rhino-outline-in-a-circle mark for firearms, but not clothing.

If you clicked over to the GUNS.COM article (and I hope you did), you’ll notice that both the article itself and the reader comments express some surprise and doubt that Spearmint Rhino’s suit has any merit.  I believe the phrase “snowball’s chance in hell” shows up prominently.  This line of thinking can perhaps be summed up as: no one would ever confuse pistols for panties.  Or maybe: how can you mix up guns and G-strings?  Or how about: one holds bullets, the other holds boobs – case closed!  (Sorry.  Traffic, you understand.)

So, would anyone really go out to buy a gun and come home with a G-string instead?  Okay, I’ll grant that one can imagine situations where that might happen.  But would it happen because of confusion caused by the trademarks involved?

The answer to that question is, probably not – but it doesn’t matter.  This is where the enduring public misperception comes into play.  Trademark infringement is not limited to situations where customers are confused into buying one party’s product thinking they’re buying another’s.  This is the important take-away from this article.

People often don’t realize that trademark infringement also exists when the nature of the marks and goods could cause the public to believe there is some connection (such as license, for instance) between the two companies, when in fact that connection doesn’t exist.  Again, not the undies.  This is the important part.

Looked at in that light, maybe Spearmint Rhino’s legal claims don’t seem so ridiculous after all. 

First of all, while the frilly underwear may be more fun to focus on, hopefully you noticed that Spearmint Rhino’s trademark registration also covers T-shirts, hats, golf shirts, jackets, vests and caps.  It’s not unusual at all for makers of outdoor lifestyle products to use their marks on that kind of clothing.

-          The famous GLOCK gun trademark is registered for firearms, but also for “clothing, namely, footwear; headgear, namely, caps, baseball caps, earmuffs, headbands, and headcloths; T-shirts; polo shirts; fleece sweaters; wind-resistant jackets; track suits; neckerchiefs; neckties.”  Perhaps it bears mentioning that T-shirts (at least the white ones) are also a type of underwear?

-          The famous REMINGTON mark is registered for guns, but also for similar clothing goods.

-          Heck, for that matter, the famous HARLEY-DAVIDSON MOTOR CYCLES trademark is registered for motorcycles, but also for hats and caps, and even for “T-Shirts, Tank Tops, Halters, [and] Panties.”

Second, how are these kinds of lifestyle trademarks commonly used on clothing?  By licensing the trademark to another company that’s already in the clothing business.  For some reason, people who spend all day boring out gun barrels don’t want to spend their evenings with straight pins in their mouths, basting seams. 

So, when we strip away (sorry) all the rhetoric, what do we have here?  Two marks that are pretty darn similar in appearance.  One is used on guns, and one is used on a line of products that often have famous gun trademarks on them, via trademark license. 

Could anyone see the Spearmint Rhino mark on, say, a baseball cap and mistakenly believe that the mark was licensed by the gun maker Chiappa?  You can draw your own conclusions, but hopefully I’ve given you a better legal framework to think the matter through.

There’s an old comedy bit where the comic offers to teach you “everything you’re going to remember from college, ten years after graduation.”  The crash course is offered at a hefty price, but much less than four years of actual college tuition.  There’s a little of that in what we’re going to discuss here today, except for the hefty price of course.

Once you absorb all the knowledge in this article, people will come from miles around to meet you and marvel at your Giant Trademark Brain. And the Law of Averages says that some percentage of them will buy your product, too.

In more than 20 years of advising business owners in the area of trademark law, I’ve noticed many little tidbits of knowledge that I find myself passing along to client after client.  These are things that most business owners and marketing people either don’t know at all or have enduring misunderstandings about. 

Each of these nuggets of information, standing by itself, is not very impressive – but knowing all of them will really increase your comprehension of the trademark process.  For that reason, I have decided to present them all in one place.  So gird your loins and get ready for a crash course in trademark knowledge.

Thing 1:  Trademark rights are created by use of the mark on your goods or services.  Registration of your mark is an important way to increase and extend those rights.

Thing 2:  There is no functional difference between “trademarks” and “service marks” – trademarks identify goods (for example, BUDWEISER® for beer) and service marks identify… that’s right, services (e.g., HOLIDAY INN® for hotel services.)  So for the rest of this post, let’s simplify things by calling them all trademarks, or just marks.

Thing 3:  You don’t register a trademark for “everything,” you register it for specifically identified goods and/or services that are spelled out in your application.  The more types of “things” you want to cover, the more you’ll pay in filing fees for the application.

Thing 4:  Give a lot of thought to what goods/services you want to cover before filing your trademark application, because once the application is filed you cannot broaden its coverage (you can only narrow it, by taking things out.)

Thing 5:  New trademark applications literally are filed every minute at the U.S. Patent and Trademark Office.  Once you decide on a mark and goods/services, file your application as soon as possible to minimize the chances that someone else will “beat you to the punch.”

Thing 6:  No, you cannot file a trademark application or keep alive a registration for a mark you have no current intention of using, just to “keep people away from it.”

Thing 7:  The designations TM and SM that you see everywhere really have no official significance.  They are used unofficially, to indicate that the user regards the name as proprietary.

Thing 8:  You may not use the ® symbol with your mark until your mark is actually registered (not just filed.)  After the registration issues, you should always use it at least once on every package, advertisement, marketing piece, etc.

Thing 9:  You should always search a new product name (the earlier the better) before committing to it or using it.  Not doing so is a dare to the Trademark Infringement Gods.

Thing 10:  Because trademark rights arise from use (see Thing 1 above), trademark searching is an art and not a science.  When searching for potential users of conflicting marks in the vast universe of information out there, you have to choose some logical place to stop.  Always remember that, for these reasons, no trademark search is perfect – just the best search reasonably feasible at the time it’s conducted.

Thing 11:  Minor differences in spelling and inventive spellings won’t make an otherwise infringing mark “safe” to use or register.

Thing 12:  In a similar vein, you probably attach a much greater significance to small product differences within your industry than the general public (or a judge) will.  This means that when comparing products to determine whether you infringe someone else’s mark, the judge is not going to be swayed by the argument that “no one could be confused because the products are totally different – theirs is a 6-pin device and ours is an 8-pin device!”

Thing 13:  When choosing a new name, remember that the more closely it describes the product (or some feature or function of it), the more likely you are to have problems with availability and/or protection.  I could give you a half hour on why, but just trust me on this.  You’re much better off picking a name that is not descriptive.

Thing 14:  Word mark registrations are inherently more flexible than logo/design marks, because use of a registered word mark as a part of your logo is covered by the registration.  The reverse is not true.

Thing 15:  Because of Thing 14, when first starting down the registration path (and anytime cost/budget is a large factor), it’s usually advisable to register the word form of your mark first and register the logo version when finances allow.

Thing 16:  It can take many months for an application to mature into a trademark registration, but there’s no reason to hold off on using the mark in the meantime.  Quite the opposite, in fact – usually you’re better off starting use as soon as possible.

Thing 17:  The time to think about whether your new name will actually be available for you to use is as soon as possible.  Yesterday, if possible.  A month ago, better yet.  Leaving that issue until the last minute invites bad decision-making and disaster.

Thing 18:  Most trademark infringement disputes are resolved through negotiation before any suit is filed, usually with the “junior user” being provided some time period to shift over to a new name.  But don’t take this as an excuse to go forward with a name you know is questionable, because the first sentence often doesn’t apply where the infringement appears intentional.  In those cases, the aggrieved party may go straight to court.

Thing 19:  Using or registering your new name as a domain name does not create trademark rights, unless you use that domain name in a trademark-like way on your website. 

Thing 20:  Similarly, merely registering your corporate name with your state’s secretary of state does not create any trademark rights or constitute any type of government approval for you to use the name as a trademark.

Thing 21:  In the trademark world, as elsewhere, what goes around comes around.  Don’t try to nestle up to a competitor by using a similar mark.  You wouldn’t want anyone doing that to you.  Don’t make me be your mom on this – Golden Rule, and all that.

This is not, of course, intended as a complete list.  Hopefully it is helpful, though.  If I get good response on this article, I’ll think up some more bits of important knowledge.  And then, dear reader, together we can venture down the uncertain path of the sequel.

What's in the pocket there, chief? Don't let this employee walk away with your trade secret!

The first post in this series discussed what defines a trade secret.  The second post considered what reasonable steps must be taken to guard the secrecy of your trade secret. 

But what happens if, despite your best efforts, your trade secret is discovered?  This post will focus on some specifics you should know if you are thinking of taking action against the “bad guys.”

What is misappropriation of a trade secret?

If someone learns, uses or discloses your trade secret as a result of improper means, that generally constitutes an unlawful taking or “misappropriation” of that trade secret.  So if you want to take action for misappropriation of a trade secret, you must show that it leaked out as a result of “improper means.”  That in turn raises the question of what constitutes “improper means,” in this context.

In the last post in this series which covered maintaining the confidentiality of your trade secret, we learned that if someone learns a trade secret through theft or “spying,” that can be improper means.  Generally, obtaining a trade secret through bribery or misrepresentation will be considered improper means.  The same can be true (though not always) if the secret leaks out the result of a breach of someone’s duty to maintain secrecy.

One common scenario for claims of trade secret misappropriation is when an employee with access to confidential trade secrets leaves to work for a competitor.  Consider, for instance, a salesman with access to a confidential customer list; a marketing person with knowledge about upcoming advertising and marketing plans; a tech employee with extensive knowledge about upstream research and development activities. When these kinds of employees are hired away by a competitor, it’s only natural to assume that they will use and/or disclose the trade secret in the course of their new employment. 

What is not misappropriation?

You should bear in mind, though, that there are ways a competitor can learn your trade secret that are not regarded as misappropriation.  If someone learns your trade secret as a result of your failure to take reasonable precautions to protect its secrecy, that is not improper means and thus not misappropriation.  Similarly, if someone learns your trade secret by purchasing your product and taking it apart to learn how it works (called “reverse engineering”), that is not improper means either, and thus not misappropriation.

Even if your trade secret has been misappropriated by one party, in some cases others who learn the secret from the original “thief” may not have any liability.  This is particularly true of the second parties engaged in no misconduct in learning the secret. 

The problem of Internet posting

This issue of the “innocent” second party is a real problem if, for example, the thief posts your trade secret on the Internet.  There are interesting cases on this subject from California, Virginia and Colorado courts, involving the Internet posting of alleged trade secret materials of the Church of Scientology. 

In the Church of Scientology cases, the courts found that the original posters may have liability, but those who merely downloaded the posted information committed no misconduct.  The courts went on to find that trade secret protection had been lost through the posting, because the information had become “generally known” and thus no longer secret. 

What remedies can I get through a misappropriation lawsuit?

If you are successful in your trade secret misappropriation lawsuit, you can get a permanent injunction that bars the misappropriating party from use or further disclosure of the trade secret.  You may also be able to obtain a temporary restraining order and preliminary injunction while the lawsuit is pending, to prevent a threatened misappropriation or to prevent use of the trade secret until a judgment is rendered.

You also can seek money damages for your actual injury and/or the defendant’s profits from the use of the trade secret.  In the case of willful misappropriation the court may even double the award and/or award you attorneys’ fees.

Get Legal Advice

My comments here are general in nature, of course.  As I noted earlier in this series, there is no preemptive federal statute on the subject and thus trade secret laws vary from state to state. 

If you suspect misappropriation has occurred, you should work with an attorney with experience in the field of trade secrets.  He or she can look closely at the circumstances with reference to your state’s trade secret statute, to determine whether you may have an action for misappropriation.

Having not read this blog post, Smedley and Popoff thought they were about to get rich by stealing a competitor's trade secret.

The first post in this series discussed exactly what defines a trade secret.  In many states any piece of information you possess, which has value to your business because it is unknown to the general public and to your competitors, can potentially be a trade secret.

But in order to qualify for protection for your trade secret, you must also take reasonable steps to guard the secrecy of that information.  This post will examine how that is accomplished.  We also will explore the circumstances under which trade secret protection may be preferable to seeking a patent. 

If I Have A Trade Secret, How Do I Protect It?

By its very definition, a trade secret must remain a secret.  That means that, as noted above, you must take reasonable steps to maintain the actual secrecy of your trade secret. 

What kinds of steps are recommended?  To some extent, it depends on the nature of the secret.  In every case, you should limit access to and disclosures of the trade secret to those with a need to know, requiring your employees and contractors to sign non-disclosure agreements if they may be exposed to a trade secret. 

You also should keep all trade secret materials in a secure place.  In the case of secrets that encompass paperwork, the papers should be locked up and marked “CONFIDENTIAL.”  If your trade secret is a manufacturing technique or process, you should carefully restrict access to/visibility of the production areas where that method is used.

How Far Must I Go To Maintain Secrecy?

To what lengths must you go to protect the secrecy of your trade secret?  Generally speaking, the key word here is reasonableness.  You don’t need to take wildly expensive measures to defeat even the most imaginative forms of industrial espionage.  The courts usually find such spying constitutes trade secret misappropriation.

In duPont v. Christopher, a famous case arising in Texas, a competitor chartered a plane and flew over the plaintiff trade secret owner’s factory while it was under construction.  By taking aerial pictures of the plant in this way, the competitor was able to figure out duPont’s trade secret.  duPont sued, and the court held that the trade secret owner need not have taken the extraordinary precaution of preventing airborne espionage while its factory was built – the competitor’s actions were misappropriation of the trade secret. 

On the other hand, if your measures are effective in avoiding discovery of your trade secret, you won’t have to go to the expense of litigating to protect it.  How extensive your confidentiality measures should be boils down to a judgement call, based on the level of competition your industry. 

Why Not Just Get A Patent?

With all the precautions necessary to maintain a trade secret it is reasonable to ask, “Why not just get a patent instead of bothering with all of that?”  There are at least two good reasons to use trade secret protection instead of seeking a patent, under the right set of circumstances.

First, patents are expensive and difficult to register.  Not everything that might be useful in the competitive arena would qualify for patent protection – in fact, most things would not.

And second, put very simply, patents expire.  A patent provides a window of time during which the patent owner has a complete monopoly over the manufacture and use of the patented invention.  Once the patent expires, the invention falls into the public domain and anyone can make or use that invention.  So a patent is basically a trade-off – you’re trading long-term exclusivity for the absoluteness of the patent monopoly.

Trade secret protection, by contrast, is easier to arrange.  And, if you take the proper precautions, you may be able to exploit your trade secret forever – it has no automatic expiration date, in any event. 

Get Legal Advice

If you think you may have a trade secret and want to protect it, it is a very good idea to consult an attorney with experience in trade secret law.  That attorney can help you set up the appropriate safeguards and precautions in order to maintain the secrecy of your trade secret.

The alleged infringing "Hell's Four Finger" Ring marketed by Alexander McQueen Trading Limited.

Someone didn’t do their homework, and it’s going to be a costly and embarrassing lesson.

The Hells Angels Motorcycle Club has sued the Alexander McQueen fashion house for trademark infringement.  The suit was filed October 25, 2010 in U.S. District Court in Los Angeles.  The club also named the Saks retail chain and Internet retailer Zappos.com as defendants for their roles in selling the allegedly infringing products. 

In its complaint, the Hells Angels club requests findings that the defendants infringed its trademarks and committed unfair competition and trademark dilution.  The club seeks an injunction preventing additional sales of the alleged infringing products as well as a recall of the alleged infringing inventory.  The Hells Angels ask that the inventory be delivered to a third party for destruction.  Finally, the club seeks money damages which it asks be multiplied because of the blatant and “exemplary” nature of the infringement, along with the club’s attorney fees for the action.

The alleged infringing "Hell's Knuckle Duster" Clutch marketed by Alexander McQueen Trading Limited.

The motorcycle club claims that Alexander McQueen Trading Limited, the fashion house founded by designer Alexander McQueen (who committed suicide earlier this year), infringed its winged skull design mark by using it in a multi-finger “Hell’s Four Finger” ring and “Hell’s Knuckle Duster” clutch handbag (see pictures.)  The suit also claims that the defendants infringed by marketing a jacquard dress and a pashmina scarf using the word mark HELLS ANGELS, without authorization by the club.

The Hells Angels club registered a winged skull design (which the club calls the “HAMC Death Head design”) in 2009 as U.S. Trademark Registration No. 3666916 for goods including “jewelry, jewelry pins, clocks and watches, earrings, key rings made of precious metal, badges made of precious metal, and chains made of precious metal.”  An image of the registered design appears at right, below.  In its complaint, the club claims use of the design since 1948.

An image of the "HAMC Death Head design" mark registered for various goods, including jewelry, by the Hells Angels Motorcycle Club.

The same design is registered separately (U.S. Reg. No. 3311550, issued in 2007) for “clocks; pins being jewelry; rings being jewelry.” In that registration the Hells Angels claim use of the mark on those goods since 1966.

What Happened Here?

This is, by all appearances, a tremendous blunder by Alexander McQueen Trading Limited, as well as Saks and Zappos.com.  You’re welcome to judge for yourself, of course, but to this observer the designs used by the defendants unquestionably are confusingly similar with the design registered by the Hells Angels.  The use of the words “HELL’S” and “HELL’S ANGELS” merely completed the effect, making it a virtual certainty that consumers would perceive some connection with the infamous motorcycle club.

Here, boys and girls, we have a perfect example of why marketers should always consult an experienced trademark practitioner well in advance of introducing a new product line.  It frankly seems hard to believe that marketers as savvy as those at the House of McQueen, Saks and Zappos.com could have failed to recognize the potential trademark implications of their actions here.  Perhaps they did. 

In any event, it’s highly unlikely that these product ideas would have survived a review by an attorney experienced in trademark law.  Right about now, it probably seems to the good people at the House of McQueen, Saks and Zappos that a review by their trademark attorneys would have been money well spent.

RING AND HANDBAG IMAGES COURTESY OF STYLITE.COM.

If you want your trade secrets to be enforceable, you have to keep them locked away from prying eyes.

Trade secrets are in use all around you, and yet you may not be aware of them.  Granted, the term “trade secret” doesn’t exactly trip off the tongue.  Nevertheless, trade secrets are a valuable form of intellectual property.  In fact, some of the largest and most profitable companies in America base their entire competitive positions on the use of closely-guarded trade secrets. 

Don’t believe me?  Consider these famous trade secrets that you may encounter, without realizing until now, on a day-to-day basis:

Ÿ  The formula for the soft drink COCA-COLA;

Ÿ  The exact composition of Colonel Sander’s famous “11 herbs and spices” recipe for making KFC fried chicken;

Ÿ  The formula for WD-40 lubricant;

Ÿ  The source code for MICROSOFT WORD software; and 

Ÿ  The recipe for KRISPY KREME doughnuts.

These are just a few of the higher-profile examples.  There are a great many more out there, of course – including some that you yourself may unknowingly own. 

What is a trade secret?

So, what exactly is a trade secret?  To some extent the answer varies from state to state, because state law defines trade secrets.  There is no overall federal statute governing the subject, though there is a “uniform” trade secret law proposed by scholars in the field.  Many states have used all or part of that Uniform Trade Secrets Act in their own statutes.

In Illinois, where I live and practice law, the state trade secrets act is almost identical to the uniform act I mentioned earlier.  Here in Illinois, any piece of information you possess that has value because it is unknown to the general public and to your competitors potentially can be a trade secret.  But there is a condition: you must have taken (and continue to take) reasonable steps to ensure that the information remains secret. 

This means that if you have any information that gives you a competitive edge because your competitors don’t know it, you may have a trade secret – provided you take the necessary steps to maintain its secrecy.  From the list above, it should be clear that things like customer lists, product formulas, recipes, production techniques or methods and the like, can all potentially be trade secrets. 

In some cases, even the knowledge of what doesn’t work can be a form of trade secret, since you may get a competitive edge by having that information when your competitor does not.  This is especially true if your competitors would have to go to significant expense to learn it through trial and error.

Get Legal Advice

 If you think you may have a trade secret and want to protect it, it is a very good idea to consult an attorney with experience in trade secret law.  That attorney can help you set up the appropriate safeguards, precautions, employee agreements, and other steps that will help maintain the all-important confidentiality of your trade secret.

PHOTO COURTESY OF FLICKR USER TAKOMABIBELOT, UNDER THIS CREATIVE COMMONS LICENSE.

Copyright infringement is an elusive concept for some.  The matter is complicated further by some enduring popular myths about what steps can be taken to avoid infringement.

I should point out that my intent here is to discuss “good old-fashioned” copyright infringement – there are exemptions and “safe harbors” against infringement created by things like the Digital Millennium Copyright Act that are beyond the scope of this discussion.  Watch this space for a discussion of the DMCA at some point in the future. 

"DON'T think about 'He's So Fine,' DON'T think about 'He's So Fine,' DON'T think about 'He's So Fine'..."

What Rights Come from Copyright?

Before we can discuss what constitutes copyright infringement, it’s probably a good idea to lay out what specifically are the rights that are granted by the U.S. copyright laws.  Stated briefly, U.S. copyright law provides a copyright owner with a bundle of rights in a work: he/she has the exclusive right to reproduce, distribute, perform, display, or license his or her work, and to authorize others to do any or all of these things.  The copyright owner also has the exclusive right to create or authorize the creation of derivatives of that work.

So, since the copyright owner has the exclusive right to do all of those things (or to permit others to do them), infringement can happen when someone does any of them without the copyright owner’s permission.  From a practical standpoint, however, the majority of copyright infringement suits involve reproduction (as in copying a work) and/or distributing (as in unauthorized copies of the work). 

Substantial Similarity + Access = Copyright Infringement

Courts find copyright infringement when an accused work is “substantially similar” to a preexisting work, as a result of copying by an infringer.  Often it is difficult for a plaintiff to prove actual copying, since there often are no witnesses to the actual act of copying.  In those cases, in order to show copying the plaintiff must be able to demonstrate that the accused party had “access” to the earlier work – in other words, an opportunity to see, hear or otherwise experience the infringed work. 

So a finding of copyright infringement requires both of these elements: substantial similarity and access/copying.  It stands to reason that mere access, without any substantial similarity, is not infringement.  After all, you certainly are exposed to many copyrighted works every day, and you probably create potentially copyrightable works of your own every day – provided none of “yours” are substantially similar to the any of “theirs,” there is no infringement.  They’re just your own works.

Likewise, the defendant’s access to the prior work is a critical element, and without it there will be no infringement.  This means that (at least theoretically) it is possible for two people to create identical works without infringement.  For example, two photographers could take identical photographs and, if the second photographer created the work solely from his own artistic sense and had never seen the first photographer’s image, there would be no copyright infringement despite the substantial similarity of the works.

There are times when “substantial similarity” is not an issue.  Think, for example, of a case involving the reproduction of a digital image or a recording in digital format.  A digital copy is about as identical as something can get, so in those cases the only real issue is whether the defendant had access to the original work so that copying could occur.

Perhaps a more familiar example would be two songwriters who have written the same melody.  Some may remember that a court found ex-Beatle George Harrison had infringed the copyright in the song “He’s So Fine” with his song “My Sweet Lord.”  The melodies in the two songs are indeed substantially similar, and the court found access based on the fact that that “He’s So Fine” was a popular hit in Britain in 1963, a time when George Harrison was quite active in the music business (in fact, “He’s So Fine” was number 12 on the English charts at a time when a Beatles song was at number 1.)  So, reasoned the court, “Harrison was aware of ‘He’s So Fine.’” 

Don’t Buy Into the “Some Little Change” Myth

One of the most common and enduring popular misunderstandings about copyright infringement goes along these lines:  “As long as I make some little change in the work, I can avoid copyright infringement.”  Some versions of the myth even apply numeric criteria to the formula:  “As long as I don’t use more than X% of the original work, I’m fine.”  The numbers vary according to the version.

These beliefs about how one can avoid committing copyright infringement are completely incorrect and probably result from a misunderstanding of the “substantially similar” requirement.  The courts have developed a number of tests for substantial similarity, but none of them are as simplistic as “Did the defendant make some little change in the original work?” or “Did the defendant use more than X% of the plaintiff’s work?”

In fact, in both of those versions of what we’ll call the “some little change test,” the defendant started with a work owned by another party and sought to create new work free of infringement risk by adding some elements of his/her own creativity.  What the defendant actually has done is to create an unauthorized derivative work – which is in itself another form of copyright infringement.

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