The Story: Part One; Question 1
- In order to receive trademark protection, it is required that the trademark be distinctive. This implies that the mark should be able to clearly distinguish a specific product (good or service) as originating from a certain producer. To this end, consumers and the public should be able to identify the source of the product by just seeing the trademark. Secondly, the trademark to be registered must be in use commercially. Otherwise, the trader must give written evidence that they intend to use the trademark for commercial purposes in the future.
- There are four main types of trademarks, namely; descriptive, arbitrary, generic and suggestive trademarks. Descriptive trademarks describe particular qualities or traits of the product in question, such as color or shape, whereas suggestive marks suggest rather than describe a quality or trait of the underlying product. Put otherwise, a suggestive trademark evokes a thought or imagination about a certain product. While a generic trademark defines the general class to which the product belongs, an arbitrary mark has no direct or logical relationship to the product of concern, but is nonetheless distinctive. John’s is a descriptive trademark because it describes the underlying product—water (Bora Bora Water).
- Upon acquiring trademark protection, John must ensure that he followed the due process in acquiring the protection, and that no errors were involved that can occasion cancellation of the rights. John must also ensure continued use of the trademark lest he loses the protection if three consecutive years of the mark’s abandonment pass. Lastly, he should escape genericity as much as he can by, say, rebranding.
- A competitor cannot enter the market with the trademark “Water from Bora Bora”, because that would likely lead to consumer confusion regarding the product’s source, thereby constituting trademark infringement. If by any chance the competitor secures trademark protection, John may successfully sue the rival by providing evidence of “likelihood of confusion”.
The Story: Part Two; Question 2
- Since the book The Taipan of Bora Bora is John’s own work, he has exclusive rights to publish, perform, reproduce, license its use by another party, display in any applicable form or media, distribute to the public through selling, renting, leasing or lending, and/or make any pieces of derivative works from the copyrighted material. The copyright lasts 70 years in addition to John’s lifetime. John only needs to create his book or register the copyright with the Copyright Office to secure the rights.
- If John hires Billy to draw the Taipan, the result will be a derivative work. John reserves the right to use and distribute the derivative work. This is because the work was based on his original, copyrighted book. What is more, it is John who has exclusive rights to his work that authorized and paid Billy to make the drawing. The resultant character is still protected under the law, and Billy has no right to distribute the work unless he is authorized by John, since it is not his original creation.
- Jill’s intended book The Taipan Moves to Fiji could constitute copyright infringement. This is because she would use characters in John’s book which is copyrighted. The title for Jill’s book uses the word ‘”Taipan” which is also evident in John’s book title. Accordingly, John may stop Jill from publishing the book if he so wishes. John can argue that Jill uses a character which is in his book, as well as borrows from his books title. A court of law may stop Jill from proceeding with her idea based on John’s complaints, because he has rights to the contents of his book.
