How Copyright Can Play the Role of Trademark's Robin.

Did he really just use a Batman reference while talking about intellectual property protection? Yes…yes, I did. And while this fact may be a sign that my boys’ recent super hero habit is beginning to rub off on me, it nevertheless allows me to introduce an interesting and not often used intellectual property protection strategy.

To begin, let’s be clear, trademark and copyright are two very different types of intellectual property protection. Trademark protects words, logos, names, sounds, colors, smells and other brand identifiers that are used in connection with the sale of goods or services in commerce. The primary purpose of trademark is to help consumers distinguish goods and services made by one business from another.

Copyright has a very different purpose. The purpose of copyright is to promote the progress of the useful arts and sciences by providing the authors and inventors of copyrightable works with a monopoly over the exclusive rights in and to such works. Copyright helps, for example, artists protect their rights in their paintings and sculptures, authors protect their rights in their books and other literary works, and musicians protect their rights in their compositions and sound recordings.

Although trademark and copyright are two very different animals in the world of IP protection, there is an area where the two can and sometimes do meet. Where a trademark owner uses a mark that contains a sufficient amount of copyrightable subject matter, it is possible that the mark can be protected both as a trademark and as a copyrightable work. But what the heck does that mean and why is that important?

In essence, before a work can qualify for copyright protection, it must contain a sufficient amount (at least of modicum) of original, creative copyrightable material. The exact amount of material that a work must contain is not entirely clear; you just kind of know it when you see it. So, if a mark consists of one very simple, mono-colored image, it likely cannot also be protected by copyright. However, if the mark contains several different and multi-colored design elements, for example, it may very well be copyrightable.

Likely not copyrightable More likely to be copyrightable

Now to the second question, so what? The importance of this point becomes clear when you understand that trademark protection can have its limitations. For example, even with a federal trademark registration, one’s protection in that mark is, at best, nation-wide, but does not extend internationally unless additional international registrations are made. This can put an owner of a successful mark in one country in a difficult position if a potential infringer in another country wishes to use the mark or capitalize off of the success of the mark.

This scenario actually occurs relatively frequently in China, for example. Unlike the United States trademark system, which is a first to use system, China employs a first to register system. Thus, an individual or company can select a mark for a successful product in the United States and if the mark owner has not yet registered the mark in China, the individual or business in China can be the first to register the mark in China and then squat on the rights or use the mark to even sell similar goods in China. As you might imagine, this can cause significant harm to the legitimate trademark owner in a variety of ways.

Additionally, trademark protection only protects the use of a certain mark in connection with similar goods or services. In other words, the mark “Hank”, for example, could be used by two different businesses, provided that the parties use the mark in connection with unrelated goods or services. Thus, it is possible that after spending a great deal of time and money designing a sophisticated and eye-catching mark, another business could use a similar design in connection with dissimilar goods or services and the mark owner would not be able to protect the use of the design in that situation.

Copyright protection can help bolster the protection of the mark owner’s rights in its trademark in both of these scenarios. In the first instance, unlike trademark protection, copyright protection extends to many foreign jurisdictions by virtue of international treaties and conventions, like the Berne Convention. So, for example, if an infringer were to use a mark which was also copyright protected in a foreign territory, often, the mark owner can pursue a claim of copyright infringement against the infringer to stop such infringement, where it would have otherwise had no means of protection.

In the second scenario, the mark owner could also likely stop the use of the substantially similar or identical design by another business in the marketplace, even if such design was not being used in connection with similar goods or services, again, employing a claim under copyright law. This, again, serves to greatly bolster the protection of the mark owner’s rights in its uniquely creative mark.

Given the relatively low cost of copyright protection, the value of this strategy cannot be overstated. However, the point must be made that unlike in the world of trademark where even without a formal registration, mark owners enjoy some common law protection over their rights, copyright holders do not have the ability to fully enforce their rights in their copyrightable works unless a registration is obtained for such works. Thus, if you wish to be able to fully enforce your rights to protect your mark as a copyrightable work as well, a copyright registration will be necessary.

In conclusion, if you own a mark which has a sufficiently complex design, you may want

to consider calling in IP’s version of Robin, which goes by the name of “Copyright”, to help you keep the landscape of your intellectual property portfolio safe from those pesky, lurking intellectual property villains in the world.