united-states copyright corporate-law spain
Is there a geographic legal limit on copyright infringement?
<p>Does anyone know if there's a geographic legal limit on copyright infringement? There's a Spanish company &quot;S&quot; using as a corporate image, a downloadable logo from a global provider of graphic resources, &quot;P&quot;, which is situated in the United States. On P's sales page, this logo is listed as having no sales, while the Spanish company hired a branding company &quot;B&quot; (also in Spain) to get the same logo as a result, perhaps assuming no one would discover it. What steps must be followed as a complaint?</p>

<p>The question mentions copyright, but corporate logos are more often protected by trademark law. There are significant differences in the protections afforded, and in where actions can be brought.</p>
<h2>Copyright</h2>
<p>Simple logos may not be subject to copyright protection at all. Individual words and short phrases, such as business names and slogans, are generally not protected.</p>
<p>But let us assume that the logo in question is a graphic design of sufficient complexity and originality to be protected by copyright. Copyright offers essentially international protection, and the Berne Convention and the TRIPS agreement ensure that the rules are in many ways similar in almost all countries. One can sue in the copyright owner's jurisdiction, or in any jurisdiction where infringement occurred. If the defendant has a presence in the selected jurisdiction, collection of any damages will be significantly easier.</p>
<h3>Scenario from the Question</h3>
<p>If I have understood the question, the logo was originally created by P (or more likely by a designer hired or contracted by P) and P holds the copyright on the logo. But S has obtained the logo via B, presumably at a lower price than P would charge. Neither B nor S, I assume, has permission from P to use the logo.</p>
<p>B's action in selling the logo to S would be copyright infringement (unless B independently created an identical or similar logo). S's action in using the logo without permission from P is also copyright infringement. P could sue S, or B, or both in Spain, or in its home jurisdiction (perhaps the US), or in other jurisdictions where the pirated logo had appeared.</p>
<p>Actual damages, however, will be limited to the value of the logo (say what P would have charged) plus profits made <strong>from the use of the logo</strong>. But since S is not selling the logo, it will be hard to determine what part, if any, of its profits derived from the use of that particular logo. That is, how much smaller would its profits have been if it had used a different, non-infringing logo.</p>
<p>In the US statutory damages are available, which can be as high as $150,000 per work infringed, if the infringement is proved to be &quot;wilful&quot;. But that is the upper limit of statutory damages, and the judge has wide discretion to set the amount of the award between the upper and lower limits. (The lower limit is $750.)</p>
<h3>Modified Scenario</h3>
<p>Suppose that P had sold an exclusive license to U. U is a US-based firm that is actually using the logo to identify its goods, which are distributed world-wide. The actions of B and S have infringed U's licensed rights in the logo, and U could bring suit for copyright infringement, either in the US or in Spain, or perhaps in other countries. But U would have much the same problem as P, it will be hard to prove sizable damages. Which brings us to trademark issues.</p>
<h2>Trademark Claims</h2>
<p>Trademark law is usually used to protect words, symbols, and images used to identify products and services being sold or advertised for sale or rental. Unlike copyright, trademark protection does not expire if the mark remains in use. Also, unlike copyright, single words or simple images can be protected.  For example, the &quot;red dot in a circle&quot; logo of the Target stores is too simple for copyright protection. But it has strong protection as a trademark.</p>
<p>Trademark protection applies in any case where a reasonable person might be confused as to what the source of the goods (or services) really is. It also applies when the mark's use falsely gives an impression of approval or sponsorship by the trademark holder. Unauthorized use of a mark to benefit from the goodwill or reputation associated with the original product or its makers is infringement.</p>
<p>Trademark protection, however, is national. A mark protected in one country may be totally free for use in another country. It is also usually limited to a particular category of use If, say &quot;Scarlet O'Hara's&quot; is used as a trademark for a restaurant chain, the use of  &quot;Scarlet O'Hara's&quot;  for an anti-virus program is not likely to constitute infringement. Copyright has no such limitations.</p>
<p>In some countries there is no protection for a trademark unless it is registered. In other countries, use alone can establish a trademark. The US allows protection without registration, although registration brings stronger protection.</p>
<p>Also, trademarks can only be protected when they are actually being used &quot;in trade&quot;, that is, to identify or advertise goods or services, or for a limited time while a product is being developed and there is a declared intent to use the mark in the near future. Lack of use or cessation of previous use can cause a mark to lose protection.</p>
<h3>Scenario from the Question</h3>
<p>P is selling logos, not using them to identify or market products. Thus it is not using the logo in trade, and has no trademark claim. It cannot sue anyone for trademark infringement, because it has no trademark rights.</p>
<h3>Modified Scenario (<em>see above</em>)</h3>
<p>U is using the logo as a trademark world-wide. If it has registered the logo in Spain, or taken such other steps as Spanish law requires, it can perhaps sue S for trademark infringement. It has no trademark claim against B, because B did not use the trademark to identify any goods or services. For a successful suit agaisnt S, U would need to show that confusion between U's products and those of S had actually occurred, or was likely. It would need to show that the products where the logo was used were of a sufficiently similar nature. But if it prevailed, damages could be based on the value of the trade identified by the logo.</p>
<p>If S did not sell or market its products outside of Spain, it could only be sued for trademark infringement in Spain. If U did not sell in the Spanish market (or perhaps the wider EU market) it would have no trademark claim.  If S started importing its products using the logo into the US, U would have a claim under US trademark law.</p>
<p>Thus the details of what logo is used, where and how, and on what products would matter to any trademark claim.</p>
