Trademarks a Good Copyright Defense

n the last few issues, trade secret, patent, and copyright protection of software were discussed. This issue's column examines trademark protection.

A trademark is anything that identifies the source (origin) of a product (or service) or that signifies sponsorship or approval of the goods. Trademarks include not only names, words, logos and product packaging, but also distinctive nonfunctional visual aspects of the software, such as icons or the user interface design.

Competitors are prevented from capitalizing on a trademark owner's reputation. Unauthorized use of a mark that is the same as or similar to the trademark owner's is precluded if consumers are likely to be misled or confused (a) as to the source of goods or (b) as to sponsorship by, or affiliation with, the trademark owner. In this way, a trademark protects the market value of the trademark owner's reputation and goodwill, and protects investments in advertising and other promotional activities used to develop goodwill.

A strong trademark can be an extremely valuable asset. In today's marketplace, the decision to purchase a product often is made not because of intrinsic value of the product, but because of the sponsorship of the product or the trademark used with the product.

A strong trademark can be a major factor in the marketability of the product. In the mind of a purchaser, there is some special value or status associated with the trademark or sponsorship, or they know they can trust a product coming from or sponsored by the trademark owner.

This intangible value is sometimes referred to as goodwill.

Goodwill accruing to a software producer can be, in effect, a form of protection for its software. If the software producer has a good reputation for support and maintenance, the ability to access that resource is a strong incentive for obtaining an authorized copy of the software; the support would not typically be available to the possessor of an unauthorized copy. This added value tends to stop at least some of the incidental copying that would otherwise occur. Trademarks make the connection between the product and the producer.

At least in the U.S., strategic use of a trademark on software screens can more directly protect against unauthorized copying. Trademark infringement occurs if the unauthorized use of a mark creates a likelihood that consumers will be confused as to the source, origin, or sponsorship of the software. Both consumer and trademark owner are injured. The consumer's expectations

regarding the consistency or quality of

the software are frustrated and false impressions as to quality (or lack thereof) may be created.

The injury to the trademark owner is also clear. While the individual that makes an unauthorized copy of software might not be confused as to its source, another individual seeing the mark depicted or displayed when the unauthorized copy is in use may not know that the copy is unauthorized and thus not subject to the quality control of the trademark owner.

The unauthorized copy may be identical to the original software. However, it differs from an authorized copy in several significant respects:

-The support and maintenance provided by the trademark owner to authorized holders of the software are likely not available to holders of unauthorized copies.

-The use of the unauthorized copy is likely to be without the benefit of reference documentation typically available to authorized users.

-Fixes or updates provided to authorized copyholders would not be provided to unauthorized holders.

Each of these distinctions tend to exacerbate perceived defects or problems encountered in the use of the unauthorized copy of the software and make the software seem of lesser quality and less friendly than it is. The uninformed onlooker would attribute these problems to the trademark owner, and the trademark owner's reputation would be injured. This is the essence of a claim of trademark infringement.

Trademark protection can provide a viable alternative (or, preferably supplement) to copyright protection. Making and distributing unauthorized copies of software is clearly an infringement of the copyright law. However, the registration of a copyright, a prerequisite to an infringement suit and for certain remedies, tends to place the trade secret status of software at risk. In the software industry, registration often is delayed until an infringement situation arises, precluding the use of copyright protection in many

instances.

There is no prerequisite that a trademark be registered to bring suit for trade-

mark infringement and the trademark registration process has no bearing on trade secret status.

Michael A. Lechter, a member of the law firm of Meyer, Hendricks, Victor, Osborn &amp Maledon, P.A., in Phoenix, Arizona, has specialized in intellectual property law for more than 20 years. He can be reached via e-mail at malechte@mhvom.attmail.com.