Moderator: Lisa Pearson, Kilpatrick Townsend & Stockton LLP (United States)
John Ashley, U.S. Copyright Office (Chief of Visual Arts Division) (United States)
We tell practitioners that copyright is a companion to your TM, not a substitute, and often is more flexible as a litigator’s tool as well as a product diversification tool.
Elisheva M. Jasie, Coty Inc. (United States)
Coty is a global cosmetic company. We have over 50 brands in our portfolio, some owned by Coty: OPI nail polish, Sally Hansen; but the majority are licensed: Calvin Klein, Beyonce, etc. Brands are the biggest driver of our business, but packaging is part of our product story as well. We look to copyright to supplement/complement our TM portfolio. Sought TM protection for Marc Jacobs bottlecap and also © registration. We’d argue that CKOne man and woman image are also copyrightable.
Jeanene L. Jobst, Turner Broadcasting System, Inc. (manages int’l TM portfolio for all kids’ networks, along with Latin American entertainment and Turner’s domain name portfolio) (United States)
We file © registrations for every episode of a series we own. For kids’ business, we have a lot of licensing and merchandising, e.g. Ben 10 (who?). Style guides for licensees give common poses, etc. Register the style guides, allowing us to protect all the characters in the episodes and distribute the style guides to customs officials worldwide as part of antipiracy efforts.
Pearson: example of copyright and trademark: Kermit the Frog, face of the Jim Henson Co. for years. Like Disney, of which Muppets are now a part.
Ashley on what is copyrightable: Malevich’s white on white painting is copyrightable because a human author had an idea that he expressed in a fixed, tangible medium and was not copied from someone else. No protection for title/name. No protection for squares/rectangles in themselves: anyone else can paint them. Particular colors’ choice is unimportant. Work as a whole must be distinctively his own.
Copyright is secured at fixation, but registration dramatically enhances protection.
Jasie: no shame in belt and suspenders—worth getting overlapping protection. Copyright can also provide distinct benefits.
Jobst: more like a raincoat and umbrella: body v. head. Instances where copyright is the only protection against counterfeiter/infringement.
Pearson: American Eagle sought to register flying eagle logo; ran into problems with TM office in opposition, but were able to secure copyright, and that allowed persuasive demand letters.
Jasie: TM practitioners always have to consider use, but copyright doesn’t require use. May be possible that you don’t have use when an ITU is being perfected.
Jobst: don’t have to worry about particular goods/services—just a work of art; avoids problem of your registration not covering particular goods.
Jasie: test for copyright infringement is much simpler than for TM infringement. It’s access plus copying protected elements (you know it when you see it). TM prongs can be pretty subjective and hard to prove; need experts/market research. See lookalikes that are sophisticated, not copying the product entirely—may call the product something different, but the bottle/packaging look similar. This can create difficult TM case, especially since the package often says “our version of [x]”; the disclaimer undercuts confusion analysis, as does the sophistication of our consumers—these are luxury goods, smells are very personal, consumers take time to make decisions. But if a smellalike looks like our product (Lagy Gaga v. Baby Googoo), if the lookalike has substantial similarity, as is often true, then we are doing very well since they admit access through the disclaimer.
Jobst: we use our copyrights the most in anticounterfeiting. Suitcases with images of Powerpuff Girls characters—nowhere on the bag is the phrase Powerpuff Girls, our registered mark—cost-prohibitive to register every character in every series in every country in every class of goods that might have infringers. Having the style guide allows us to seize the goods without a lot of trouble. Ben 10 is our most popular boy toy especially in Europe. Our CTM was held up in a very long dispute in the EC, so we couldn’t rely on TM rights when they copied Ben 10; copyright was our saving grace. Also wants to plug Community Design as supplement to copyright/TM—filed design registration for some characters as additional tool. Talk with European counsel about this.
Pearson: what about diversion?
Jasie: © provides some help there too. Wiley in 2d Circuit held that unauthorized import of genuine copyrighted goods is infringing, in stark opposition to TM first sale. We manufacture in France, import higher end goods & sell in specific venues, not Costco. Horrible for brand image to be in those places. Genuine product bought in France shipped to the US: under TM, so long as it’s genuine, there’s no TM recourse. Not good for us. Under copyright law, can get a completely different result. Not authorized by owner = infringement. (Sounds like an admission of © misuse to me.)
Pearson: waiting for a SCt ruling on this.
Ashley: Costco v. Omega is something we see a lot with utilitarian objects filed in the Copyright Office. Owner of watch knows that the watch itself is likely to be refused registration—a useful article. Cleverly, you add somewhere on the body of the noncopyrightable object a design that is copyrightable. If that is imported, your copyright for the element on the underside of the watch allows you to prevent unauthorized import—happening on flower boxes, handbags, and other things that themselves wouldn’t qualify for © protection.
Jobst: internet infringement—can be the fastest way to get an infringing website down, by sending a takedown notice. Properly worded notice triggers safe harbor obligations. We make sure to carefully word notices and consider First Amendment considerations. DMCA is US, but would encourage sending such notices (without reference to DMCA) outside the US too, because that can’t hurt and occasionally helps. A fake CNN page using the CNN logo: often a problem with hot news. Used to spread malware. Needed it down fast, and copyright can do that.
Jasie: can get money remedies more easily under copyright. Attorneys’ fees also. Little downside if you win copyright infringement because you qualify for statutory damages and fees. (I find this description a tad misleading, especially as to fees. Also, little downside if you win = potential downside if you fail. A prevailing copyright defendant is also entitled to fees on the same terms as the plaintiff, per the Supreme Court. So think about that; the defendant will be.)
Pearson: a good threat to aid settlement. Duration: can be hard to tell which will have longer duration, since TMs are potentially forever but you may stop use. Kermit is no longer the logo for the Jim Henson Company, but the copyright is still there.
Ashley: many logos can be copyrighted: Hot Wheels logo, Mighty Ducks, X-Men, Mighty Morphin Power Rangers, Starbucks: combination of words and graphic elements can be copyrightable. Nauti Girl: no copyright because it’s a name alone in simple script. Brooklyn with a heart for the y: also no. The heart by itself is too simple/common and familiar. I believe in famU Today Tomorrow Forever: also denied. Registered a logo where all elements were borrowed from clip art and assembled into a new graphic, and the application appropriately disclaimed the source of the individual elements. Registered: graffiti style lettering—even if uncopyrightable on its own, combination may be copyrightable if original. Would not register the McDonald’s logo: representation of arches belong to us all, and combination to M doesn’t help because lettering/font doesn’t get copyright. Examples: Only thing he thinks registrable is Coca-Cola logo with bottle; not FedEx logo, Yahoo! logo, Google logo, CNN logo, and Nike swoosh.
Jasie: would assert rights in unique bottles, packaging. Givenchy Amarige package found copyrightable.
Ashley: text (not short quippy phrases, but narrative describing/advertising the product) can be copyrighted, as long as it’s more than the standard list of product ingredients, cautions, etc. 5-Hour Energy shot product copy is copyrightable. Can anchor a registration for label in addition to pictorial/graphic elements.
Pearson: oftentimes also useful for product inserts—copyist may tweak artwork, but get lazy on package inserts.
Jasie: copyright doesn’t protect functional features. Jennifer Love and Glamour bottle: separable odalisque/sculptural work under Mazer v. Stein.
Ashley: call it a non-useful sculptural design. You want to avoid what many filers of applied designs do: pitfall of too broadly referring to the useful article itself rather than to a sculpted interpretation that just happens to be used as a useful article. Conceptual separability: what did the artist have in mind? If s/he was trying to create an artwork, there is conceptual separability. Universal Furniture: overall shape of bed not copyrightable; only the decorative artwork that lines the edges and the surface that is copyrightable. Circuits have tweaked the basic principle—examples of fights over chairs and high heeled shoes.
Physical separability: all we’re trying to do is separate design/design patent from copyright. Doctrine in statute is separability. Shoe with buckle that can be easily removed = physically separable from shoe, but not copyrightable because it’s a pure rectangle and thus de minimis. Wouldn’t register that buckle. Another very elaborate shoe—does it have any separable elements? If you can’t separate the straps or the sole, the overall look and feel of the shoe is the shoe and it fails physical and conceptual separability.
Chairs: claim that center pieces in the back of chairs can be removed, and would remain intact as a work of art. But Copyright Office considered the back to be an essential part of a chair. You could design the back a different way, but our stock response is that you didn’t. It’s irrelevant that you had other choices. Our thinking is that the centerpieces, though arguably copyrightable at least in some instances, are not separable.
Pearson: Rolling Stone logo: TM and copyright. But created by a guy for the band for not very much money.
Trap for unwary: copyright vests initially in the creator, except for works for hire: Rolling Stone logo creator was not an employee.
Jasie: Need a WFH agreement that is explicit, specific, and preferably signed before the work begins. Only available for 9 statutory categories; if your work doesn’t fit in, then your WFH agreement is invalid. Call it a WFH but make sure you have language saying that in any event it’s an assignment just in case. WFH is much better because assignment creates reversionary rights after 35 years—happening with recording industry.
Jobst: also something to consider when doing due diligence: look who developed the mark—was it an employee?
Copyright notice is not required by law if the work was published on or after Mar. 1, 1989. However, our business clients are required to put it on the package, hang tag, or product itself.
Having a registration/notice is a really useful tool for enforcers in other countries, and it’s inexpensive.
Pearson: is the Campbell’s soup can copyrightable? What about the Andy Warhol painting?
Ashley: anything Warhol painted is copyrightable—traditional art form not enough, but here we have an artist interpreting/representing a real life object with color, lines, perspective (2D representation of 3D object). (Are these anything other than completely conventional choices, including the head-on perspective?) Assuming the can were brought forward today, the medallion might be enough to secure a copyright. The red atop white color and the left to right and top down spatial presentation of names, simple words, soup type etc; those formatting choices would not be covered. Essential/basic design motif for graphic design, not just for soup.
Q: is there any scenario in which you could double dip on damages?
Jobst: not an expert, but thinks yes, though would be surprised to get double fee award. Two different types of harm. (For the record, I think the cases are to the contrary. Rarely will the harm actually be separate.)
Pearson: easier to get fees in copyright than in exceptional TM case.
Ashley: don’t have to elect. Good practitioners plead every possible cause of action and leave it to the court to figure out what’s duplicative. (This is what we teach our students, but it’s a terrible definition of “good practitioners.”) Yes, double dipping is possible, especially with statutory damages.
Q: many clients failed to register copyright, then want to sue. Application on file – is that enough? Can you file a complaint without even an application? (The panelists didn’t give a crystalline answer to this last question, but it has one: No, you can’t, not with a US work.)
Pearson: Can expedite application to get into court with a registration. Registration requiremen is only for US works. If the work was created in a country that doesn’t require registration under Berne, don’t need prefiling registration. But because there’s no registration there will be no statutory damages/attorneys’ fees.
Ashley: yes, if you pay enough money, you can get expedited registration. The Office thinks the statute is clear on its face: you need either an issued registration or a refusal before you knock on the court’s door, but not all circuits agree. In some courts, as long as you can get leave to amend by attaching a certificate of registration, you can sue if you can prove you’ve begun the process.
Pearson: even if your registration is refused, you can still go to court and have a court rule on copyrightability.
Ashley: we have an appeals process internally too. Is there an exhaustion requirement? His opinion is probably no. The statute provides an affirmative right to use the letter of refusal to go ahead in court.