Have You Copyrighted Your Trademarks?

In December, Grumpy Cat Limited filed a lawsuit against one of its licensees over whether its license to sell coffee products was limited only to beverages, or whether the license also authorized the licensee to sell coffee beans. Regardless of the outcome, the instructive part of that case is that Grumpy Cat’s legal claims include not only trademark infringement, but also copyright infringement.

The memorable photographic image of a cat with an odd expression (caused by feline dwarfism), that is familiar to many people, is federally registered as a trademark. When a company elects to legally protect an image as a trademark, however, that does not foreclose the possibility of registering the same image with the U.S. Copyright Office, as a work of visual art. The Grumpy Cat image is indeed also protected by copyright registrations.

Why would a company seek both trademark and copyright protection for the artwork of its logos? There are various advantages and disadvantages to the different legal regimes of trademark and copyright. Trademarks are almost always more difficult and expensive to register than copyrights. Also, when a trademark registration is granted, it applies only to the specific products or services registered, so that someone who uses a trademarked image on different products or services is not even committing trademark infringement. The clear disadvantage in enforcement of copyright, however, is that the owner must prove that the other party actually copied the image at issue; this contrasts with trademark rights in an image, which grant a monopoly on use of an image to sell the products or services – regardless of whether the infringer copied or even knew about the registered trademark.

Consider a company that is selling, say, alcoholic beverages that are branded with a distinctive design image, and the company registers the design as a trademark for alcoholic beverages. If another company comes along and sells bartender accessories with a confusingly similar design, it is probably not infringing the registered trademark. If there is evidence that the bartender accessories company copied and modified the beverage company’s design, however, then the accessories company has committed copyright infringement. There are also differences between the two legal regimes with respect to geography. Trademark protection is territorial, so that one must use the trademark and obtain registration in say, Canada, to have trademark legal rights there. In contrast, under international treaty, a copyright is generally enforceable in most countries based on a company’s U.S. copyright registration.

The alcoholic beverages company may indeed never even have the legal right to register its design as a trademark for bartender accessories, or other products or services. Registration of a trademark (and for that matter, even common law rights in unregistered trademarks), require that the company use the design as a brand to sell the other products or services. The company that is selling only beverages will thus likely be precluded from claiming trademark rights outside of the product category of beverages.

Even if the beverages company starts selling some accessories, it would be necessary for it to register the trademark in multiple trademark “classes” – one for glassware, another for clothing, and additional classes for other types of products. Each trademark class sought triggers a $325 filing fee at the U.S.Patent & Trademark Office, and subjects the company’s claim of trademark rights in each category to the scrutiny of a Trademark Examining Attorney.

In contrast, copyright law protects against unauthorized copying of the image for any use. The beverage company that is not yet selling other products or services is thus best advised to obtain trademark registration for the design as applied to beverages, and copyright registration, too.

Does a company really need to register the design with the Copyright Office in order to have legal protection? The answer is that in order to have any meaningful protection, the copyright must be registered. There was a change in U.S. copyright law in 1989 which has been widely misunderstood. Before 1989, an author of a copyrightable work that did not register the work forfeited the right to claim copyright ownership, and the work became part of public domain. That law was changed, so that delay in registration no longer results in loss of the author’s claim to copyright ownership. Many people incorrectly believe that this means that it is not necessary to register one’s copyrights. What has not changed, however, is the following: a copyright owner cannot go to court to enforce legal rights unless and until the copyright is registered. And in light of current backlogs at the Copyright Office, copyrights cannot be registered quickly, such as after infringement has occurred.

Undertaking the process of seeking copyright registration is also useful in that it sometimes exposes oversights in actual ownership of the intellectual property. Companies will sometimes hire an outside design firm to create a design that they plan to use as a trademark. Companies often believe that when they request a design and pay the agreed-upon price, they become the owner of the copyright in the design. In fact, however, if there is not a mutually signed “work for hire” agreement, or a copyright assignment from the design firm, the company probably does not own the copyright in the design. Thus, attending to this as part of the copyright registration process will confirm for the company its ownership of all aspects of its valuable copyrights and trademarks.

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Alan Haus

Alan Haus focuses his practice on employment law, intellectual property protection, licensing and commercial transactions. Mr. Haus represents clients ranging from start-ups to multinational companies. His clients include food and other consumer products companies, and e-commerce, software, educational publishing and entertainment companies. He is the former Chair of the Trademark Committee of the California State Bar’s Intellectual Property Section, and represents companies in almost every industry in multinational branding and trademark protection.
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