BALANCING MICKEY MOUSE AND THE MUTANT COPYRIGHT: TO COPYRIGHT A TRADEMARK OR TO TRADEMARK A COPYRIGHT, THAT IS THE QUESTION.

Date01 January 2020
AuthorForella, Michael A., III
  1. INTRODUCTION II. THE DIFFERENCES BETWEEN TRADEMARKS AND COPYRIGHTS III. THE RULES FOR COPYRIGHTING TRADEMARKS AND THE ARGUMENTS IN FAVOR THEREOF IV. WHY ARGUING THAT TRADEMARKS FAIL THE COPYRIGHT REQUIREMENT BECAUSE THEY LACK CREATIVITY IS A PROBLEM V. THE ARGUMENTS AGAINST COPYRIGHTING TRADEMARKS VI. TO TRADEMARK A COPYRIGHT, NOT COPYRIGHT A TRADEMARK, THAT THE RULE I. INTRODUCTION

    "Wolde ye bothe eate your cake, and haue your cake?" This proverbial saying dates to mediaeval times, first appearing in 1546. (1) Despite the dramatic change in language and spelling, the meaning of this phrase was never lost in translation. One cannot simultaneously eat one's cake and retain possession of one's cake. Both trademark owners and the Copyright Office want to have their cake and eat it too. Trademark owners are trying to register their trademarks as copyrights. The Copyright Office wants to deny such marks, but under a weak lack of a creativity argument. Allowing trademarks to be registered as copyrightable works violates the clear doctrines of the boundaries of protection available in each area of intellectual property law.

    There is no direct rule from Congress or the Supreme Court that a logo or slogan cannot also be a copyrightable work. However, the necessary intellectual property law boundaries are in place for good reason and support the argument presented herein that a clearly demarcated line between copyright and trademark protection must also be drawn. That clear demarcation should be that an image originally created, exploited, and that functioned as a copyright may later meet trademark's requirements and therefore be eligible for concurrent trademark and copyright protection. However, a mark originally created, exploited, and that functioned as a trademark cannot receive copyright protection, concurrent or sequential, regardless of creativity. This is determined by the applicant declaring during their copyright application that the work seeking registration is not a designator of a source of goods under penalty of fraud on the Copyright Office. (2)

    In Section I, this comment discusses the differences between trademarks and copyrights. In Section II, this comment analyzes the rules for copyrighting trademarks and the arguments in favor of copyrighting trademarks. In Section III, this comment addresses the problems of arguing that trademarks fail copyright requirements for a lack of creativity. In Section IV, this comment weighs the arguments against copyrighting trademarks. Section V concludes by proposing a bright line rule for either Congress or the courts to adopt to provide guidance that copyrighting a trademark is prohibited.

  2. THE DIFFERENCES BETWEEN TRADEMARKS AND COPYRIGHTS

    A trademark is "any word, name, symbol, or device, or any combination thereof' that is registered with the United States Patent and Trademark Office and is used in commerce "to identify and distinguish" the source of goods and services. (3) To be trademarked, the mark must either be distinctive or attain secondary meaning through public association. (4) Therefore, trademark law protects the source identifying function of goods and services. Contrarily, a copyright is an original work of authorship, such as a literary, musical, audiovisual, or pictorial work, that is fixed in a tangible medium of expression. (5) Therefore, copyright protects the expressive content of works.

    Copyright protection is granted by the Constitution's Intellectual Property Clause which grants Congress the authority "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors ... the exclusive Right to their [] Writings and Discoveries." (6) Copyright protection is designed to incentivize authors to create creative works. In 1879, the Court distinguished copyright and trademark protection when the Supreme Court ruled that the Commerce Clause does not give Congress any power to regulate trademarks not used in commerce. (7)

    In contrast, Trademark protection is granted by the Constitution's Commerce Clause which grants Congress the power "[t]o regulate Commerce ... among the several States...." (8) Trademark protection is designed to ensure consumers are informed as to the source of the goods they purchase. (9) Moreover, for famous trademarks, protection encompasses the likelihood of harm caused by the blurring or tarnishing caused by a knock-off mark regardless of "likely confusion, [] competition, or [] actual economic injury." (10) Copyright and trademark protection were created for different purposes and therefore have different protections and limitations. Thus, it is no surprise that the boundaries between the two have blurred.

  3. THE RULES FOR COPYRIGHTING TRADEMARKS AND THE ARGUMENTS IN FAVOR THEREOF

    What is required for something to be creative? The Compendium, the Copyright Office's administrative manual, Section 913.1 states "[a] visual art work that is used as a trademark, logo, or label may be registered if it satisfies 'the requisite qualifications for copyright.'" (11) The Copyright Act's enumerated categories of works of authorships is broad enough to cover most trademarks. Also, fixation is not a barrier for trademarks seeking copyright protection so long as the trademark has been drawn, recorded, or computer generated Therefore, to copyright a trademark, copyright's originality requirement is the last element. Copyright's originality standard requires a minimally creative work that is not copied. However, creativity is never defined in the Copyright Act. (12) Given the difficulty in defining and recognizing creativity, over a century ago, Justice Oliver Wendell Holmes warned that "[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits." (13) Therefore, today, copyright's creativity requirements remain minimal.

    In Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., the Court ruled that a work need only an "extremely low" amount of creativity. (14) In fact, Feist held that "[t]he vast majority of works make [copyright] grade quite easily." (15) Moreover, elements of a work that are not copyrightable in themselves, may be copyrightable if arranged in an original way. (16) Therefore, copyright's creativity requirements are generally not a barrier for marks seeking copyright registration.

    However, an arrangement of individually, not copyrightable elements cannot be "so commonplace that it has come to be expected," such as listing something in alphabetical order. (17) Moreover, the Compendium Section 906.01 reads "a work that merely consists of common geometric shapes [is not registrable] unless the author's use of those shapes results in a work that, as a whole, is sufficiently creative." (18) There are examples in Section 906.01 of common geometric shapes arranged in an insufficiently creative manner. (19) However, these examples are not insightful as these are clearly uncreative marks. (20) Additionally, Section 913.1, which states that trademarks may be copyrighted, further states that the Copyright Office "typically refuses to register trademarks, logos, or labels that consist of only ... [w]ording ... [m]ere spatial placement or format of trademark, logo, or label elements; [or] [u]ncopyrightable use of color, frames, borders, or differently sized font . either standing alone or in combination." (21)

    Therefore, given the Compendium's language, the Compendium's creativity standards for trademarks and logos, especially those consisting of geometric shapes, (geometric trademarks) are much more difficult than the standard proscribed in Feist. Despite this inconsistency between the federal courts and the Copyright Office, trademarks owners have still been trying to register their trademarks with the Copyright Office. In trademark owners' view, trademarks are original works of authorship fixed in a tangible medium of expression. Thus, trademarks should be copyrightable, especially if the counterargument is a lack of an extremely low amount of creativity. Moreover, proponents of copyrighting trademarks will likely point to the current overlap between copyright and trademark protection.

    In 1934, the court found that the Frank Merriwell character "[was] closely identified in the public mind with the work of a particular author, [and was protectable]. ... even after the expiration of the copyright, unless adequate explanation is given to guard against mistake." (22) In 1962, in Planters Nut & Chocolate Co. v. Crown Nut Co., the Court of Customs and Patent Appeals declared that copyright and trademark protection is available for a fanciful picture of a humanized peanut used as a design mark to identify and distinguish the source of peanuts. (23)

    In Frederick Warne & Co., Inc. v. Book Sales, Inc., the publisher of the "Peter Rabbit" books sued a competitor publishing versions of Peter Rabbit that were in the public domain, and thus, no longer protected by copyright law. (24) However, plaintiff brought trademark infringement claims for the cover illustrations and eight drawings of characters from the "Peter Rabbit" books. (25) Despite being sequential, rather than overlapping protection, the court held that "[t]he fact that a copyrightable character or design has fallen into the public domain should not preclude protection under the trademark laws so long as it is shown to have acquired independent trademark significance, identifying in some way the source or sponsorship of the goods."...

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