Protecting Logos with Copyrights and Trademarks
Introduction to Copyright Law and Logos
Logos are used to identify a brand or business and can become the sole source for consumers to recognize a good or service. Think Nike Swoosh design. The importance of brand recognition, consumer loyalty, and confidence are the main reasons why businesses choose to protect their logos as trademarks. Some businesses take it a step further to protect their intellectual property and copyright their logos as creative works. However, what exactly does a copyright cover and what are the benefits of a copyright? Do the benefits of copyright encompass trademark or are the benefits different than a trademark? And are there strategic advantages to dual copyright protection and trademark protection for a logo? Answering these questions will help enlight the potential relationship between copyrights and logos.
First, it is necessary to understand the basics of copyright, the scope of protections provided to a copyright holder, and how to enforce those rights if necessary. Second, it is important to consider how copyright law applies to logos and the benefits offered to copyright holders. Next, an overview of the basics of trademark law, how the law protects trademark owners, and what benefits are at the core of trademarks. Finally, exploring the overlap between trademark and copyright, specifically how the benefits differ when enforcing infringement claims under copyright and trademark. Further, the importance of federally registering a mark and creative work and how the protections benefit branding and marketing aspects of business.
Understanding the Basics of Copyright
Copyright law covers many forms of creative works, ranging from literary works to musical compositions, sound recording, and even pictorial and graphic works. 17 U.S.C. § 102. The coverage of federal copyright is extensive, and the bar for receiving the protections is minimal. In order to receive the protection and benefits of copyright law a creative work must be both originally created and fixed in a tangible form. Id. A copyright gives the owner an exclusive bundle of rights. These rights consist of the ability to reproduce, distribute, display, and create derivative works of the original protected work. 17 U.S.C. § 106. A copyright has a limited duration, in most cases, the life of the author plus seventy years. 17 U.S.C. § 302. When a creative work has multiple authors, the duration is based on the last author's death plus seventy years. Id.
The benefits of a copyright allow an owner to assert and dictate how their work will be used, distributed, and performed through licensing agreements. A common misconception is that an owner of a copyrightable work must register the work to receive the protections. This is not the case, as long as a work is original in creation and fixed in a tangible form (PDF, CD, MP3, etc.,) federal law allows for its protection. 17 U.S.C. § 102. Registration of a copyright becomes essential when asserting an infringement claim in court. The registration of a work can be evidence of the validity of the copyrighted work. Additionally, the registration makes the copyright holder eligible for statutory damages and attorney's fees in the process of litigation. The primary purpose of copyright is to protect creativity and foster innovation while ensuring creatives have protectable rights to their creations.
Can a logo be eligible for copyright protection?
A business's logo can fall within the requirements of a copyright and be protected, but it must meet the standard of copyrighted material. This means the logo must have a creative element, a collection of words will most likely not make the cut; however, if the logo is designed or artistic in some way, then copyright protections could apply. A typical example of a copyrightable logo is Disney's Mickey Mouse, Dallas Cowboys iconic star, and Starbucks mermaid. Once the logo has an artistic element and is originally created, it only needs to be in a fixed tangible form, which can be achieved through any medium necessary for the expression.
Benefits of Copyright for logos
When a business employs an artist to create a logo as part of their employment, usually under a work-for-hire contract, the rights to the copyrightable work are assigned to the business in order to ensure no disputes over ownership. Once the rights are assigned to the business, it can fully exercise the rights associated with the copyright. The business, as the sole copyright holder, then has the discretion on how a logo is reproduced, distributed, and whether derivative works can be created. In the sense of a business, this plays a huge role in the branding and marketing of a product, including the packaging, labeling, and advertising. It can be essential to the business to have control over the logo and branding of the product without fear of possible interference from the hired employee, and a work-for-hire contract establishes that, although they may be the creators, they are not the copyright holders.
Another benefit for a business when exercising copyright protections is the ability to limit the market from infringing on the copyrighted work. This means that if a logo is copyrighted, a business has the discretion on how it allows the use of its logo for any reason. If a business wishes to grant another use of the copyrighted work, a license will be necessary. A copyright license essentially permits another to use the design for particular purposes and can be as narrow or broad as the agreement between parties wishes. A license allows a business to monetize the use of its logo and facilitate the control of the work.
Another benefit to a copyright holder is that the registration of a copyright can be used as a primary basis for the validity of the copyrighted work if an infringement claim were to arise. The ability to enforce unauthorized uses of a copyrighted logo upholds the creative work's integrity for the business. As described below, this benefit can overlap with trademark protections.
Overall, a business will receive many benefits from copyrighted works. The biggest benefit is having the discretion to reproduce, distribute, display, and create derivative works of the original protected work. Additionally, to obtain a copyright, all that is necessary is for the work to have a creative element, be original, and be in a fixed tangible form. The registration of a work only enhances the protections of copyright by allowing the ability to enforce in court any possible infringement.
Understanding the Basics of Trademark
A trademark is a word, phrase, design, or a combination of both used to identify a good or service and indicates the source of the goods or services. For a trademark to be valid, there are four generally recognized requirements: (i) the mark must be distinctive, (ii) used in commerce, (iii) not likely to cause confusion with consumers, and (iv) a source identifier for the goods or services. 15 U.S.C. § 1051. A trademark protects symbols, names, logos, and other identifiers meant to distinguish goods or services in the marketplace. A trademark lasts as long as it is used in commerce and remains distinctive, meaning a mark could last indefinitely. 15 U.S.C. § 1058.
A service trademark must have an inherent level of distinctiveness to be a protectable mark. The levels of distinctiveness from strongest to weakest are as follows: fanciful, arbitrary, suggestive, descriptive, and generic. First, fanciful is the strongest level of distinctiveness because the mark is entirely made up and has no genuine meaning attached. Typical examples are brands such as Google, Pepsi, and Adidas, all of which had no prior meaning in language but are now recognizable as products and services. Second, arbitrary distinctive marks are words with a common meaning that are not used in relation to the product or service provided by the business. A few examples of arbitrary marks are Apple, Coach, Shell, and Dove. Third, suggestive marks are real words that suggest a quality or characteristic about the product or service provided by the business. Suggestive marks tend to overlap with descriptive marks, which can cause issues during the application process. Examples of suggestive marks include Coppertone, Hot Wheels, and Netflix. Fourth, descriptive marks, which essentially describe the product or service offered, are the lowest afforded level of potential protection. Descriptive marks must have secondary meaning to be protectable under trademark law as it is not considered to be inherently distinctive. Typical example of descriptive marks with secondary meaning are Cartoon Network and Whole Foods. Lastly, there are generic marks, that are common names of products or services, and these marks are not protected by trademark law as there are no distinctive elements.
The primary purpose of trademarks is to help consumers recognize and trust the brands and businesses from which they buy while simultaneously protecting the business owner's rights to branding. This is evident as trademark infringement claims pertain to the unauthorized use of a trademark and focuses on the likelihood of confusion to the consumer regarding the source of goods or services.
How Does a Trademark protect a logo?
A logo is trademarkable so long as it is used as a source identifier for goods or services and is being used in commerce or with the intention of being used in commerce. A logo can be protectable as trademarks (goods) or service marks (services). In some cases, logos are the main source of identification for a brand/business and as a result, trademark law seeks to provide a business an exclusive right to specific words or phrases or images. Essentially, the more distinctive a business's logo is, the higher level of protection it is afforded, and it facilitates obtaining a trademark. Trademark law looks to protect consumers and businesses alike to encourage brand trustworthiness and lessen consumer confusion.
Trademark Benefits for Logos
First, a major benefit from registering a trademark is that the protection afforded is federal instead of merely a local protection, which is provided under common law. A federally registered trademark offers the presumption of ownership and diminishes the burden of proof needed to prove trademark infringement. In comparison, when a trademark is unregistered, it is protected by common law and the protections provided are typically limited to the geographic area in which the mark is being used plus potentially a zone of foreseeable expansion. Secondly, the purpose of registering a trademark is to verify that the trademark is unlike other previously registered trademarks. Running a check of the federally trademarked logos will be helpful to avoid accidentally infringing on another's trademark. Registration also benefits the business that owns the trademark because it essentially puts other businesses on notice of the trademark throughout the nation. Third, having a federally registered trademark allows for an easier transition to filing for a foreign trademark request when seeking expansion on a global level. Fourth, the duration of a trademark is dependent on the business consistently using the mark in commerce. This effectively means that a trademark could last indefinitely if a business continuously uses the mark in commerce.
Further, registering a trademark gives the holder additional benefits when enforcing the trademark against possible infringers. In cases of counterfeiting, a trademark holder can recover statutory damages instead of proving up actual damages, which tend to be more difficult and could be lower. Additionally, having a registered trademark in infringement cases is more beneficial as it establishes a presumption of ownership. Owners of a federal trademark registration have the power to record the mark with U.S. Customs and Border Protection in order to block imports that infringe the mark or are counterfeits.
Overall, trademark registration is highly beneficial to businesses because it protects the branding of products or services.
Protections and Benefits of Copyright and Trademark
The protections provided by copyright and trademark regarding logos have many similarities and differences. Specifically, there is a distinct overlap in the infringement claims and registration requirements.
The requirements for registration for copyright and trademark vary drastically. Copyright is concerned with the protection of creative works and has a lower bar of "minimal level of creativity." Meanwhile trademarks are meant to cover words, phrases, and designs used to identify a good or service used in commerce. The bar for trademarks is a bit higher than copyrights because of the need to have an inherently distinctive mark. Under copyright law, a work must be 1) original, 2) have the minimum level of creativity, and 3) be in a fixed tangible form to qualify for copyright registration. 17 U.S.C. § 102. Even if a work is not registered, many of the same rights are afforded to the copyright holder of the work, but the enforcement becomes difficult. In comparison, for trademarks, the bar for registration is higher in the sense that there are additional requirements. A trademark must 1) either be used in commerce or the owner must have a bona fide intention to use the mark in commerce, 2) the mark is used as a source identifier for goods or services, and 3) the mark must have a distinctive element. 15 U.S.C. § 1051.
Like copyright, trademarks do not necessarily need to be registered, but there are many more benefits to obtaining a registered trademark rather than a non-registered trademark. First, copyrights do require registration to be able to sue for infringement and enforce the protections granted in court. A trademark infringement claim is meant to remedy and deter the likelihood of confusion for consumers. A copyright infringement claim is focused on enforcing the rights violated against the copyright holder by remedying the financial harm caused to the copyright holder for not being able to profit exclusively from their creative work. The elements of copyright infringement are simple: 1) plaintiff owns a valid copyright, and 2) defendant in some way infringed on the owner's copyright. Further, in a copyright infringement claim, "the court may...award a reasonable attorney's fee to the prevailing party as part of the costs." 17 U.S.C. § 505. However, this permissive language does not mean that a court will always award attorney's fees, but it is more likely. In contrast, in the trademark statute, a plaintiff may "...recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action." 15 U.S.C § 1117(a). Additionally, "the court in exceptional cases may award reasonable attorney fees to the prevailing party. Id. In trademark infringement claims, the likelihood of recovering attorney's fees can be lower due to the "exceptional cases" standard. 15 U.S.C § 1117(a); 17 U.S.C. § 505.
If a logo meets the requirements of copyright and trademark, the owner/holder of the rights will be afforded the protection and tools of each.
Final Thoughts on Copyright and Logos
While the benefits of copyright are not entirely encompassing as the benefits provided in trademark law, there is some overlap. The two bodies of law are complementary and can be used to benefit each other. Business owners can take full advantage of the intellectual property protection of their logos and ensure the enforcement of their rights to have more pathways to success.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
