In practicing law for 35 years, I’ve seen some things. Some good things, and some not so good things. Somewhere in the middle is the conflation of two related intellectual properties: the trademark and the copyright. Let’s take a moment to make sure we’re on the same page. Now, I really mean only a moment, since both of these intellectual properties have a complex set of attributes, and each with specific legal nuances. Consider this the elevator speech on the topic. Not as short as it could be, but shorter than it could be.
To start at the beginning, let’s understand a basic premise of “property” law, whether real property, personal property or intellectual property. “Property” is a bundle of rights—legal rights—understanding that we cannot legally “own” what the law does not recognize as a property interest. Ownership of “property” is so ubiquitously presupposed in Western (traditional European) culture that we tend to forget that god (or the gods) might have created a lot of existential stuff, but whether that stuff is “property,” and capable of ownership, and capable of legal enforcement in the courts, is a human-granted socio-politico-economic concept. Native Americans learned the concept along the way. Different “country,” different laws. Different culture, different priorities and beliefs.
Indeed, what this culture recognizes as “property” might not be recognized in another culture. We might claim some sort of “natural right” from god (or the gods) “to own” a thing (be it land, or air, or water, or an image…or a human being), but, alas, the gods are not our democratically elected representatives, sort of…
In the United States, the law of image and publicity “property” rights was different pre-Elvis Presley, who shook up a lot more than his hips—and after his death. Indeed, he shook up the law as the causation for much of “new” post-mortem likeness rights. That is, whether all that personal image money-making power of Elvis should die with him or to be something transferable to heirs.
The “traditional” intellectual properties are copyright, trademark, patent and trade secret. The “newer” intellectual properties are converging with personal image, privacy, identity, and publicity rights, and now perhaps confounded (or made even more interesting) by artificial intelligence.
Therefore, a trademark and a copyright are exactly what “the law” says they are, and so is a patent, a trade secret, privacy, identity, persona rights, etc.
I know, we have this great idea. Well, so did Apple Computer; that is, to use pretty little icons for menus. Sorry, by the federal case of Apple v. Microsoft, the law did not per se recognize the great abstract idea of an icon-oriented interface as a property right: that’s why we have both Microsoft Windows and Apple Computer icon interfaces. The specific implementation can be owned, but not the idea. Why? Because it’s the law.
But back to the conflation I mentioned regarding copyrights and trademarks.
Here’s as straight-forward as it gets: A copyright protects authorship. A trademark protects reputation. A copyright and a trademark protect different legal interests. But, they can both subsist and co-exist in the same creation.
Here’s my go-to seminar panel example:
Let’s say I draw an original Mickey Mouse. As soon as I draw Mickey in some tangible medium of expression (that is, for example, I reduce the idea of him from my mind to paper), I will own the copyright. The copyright protects my right as the creator. (There’s no trademark yet.)
Now let’s say I take that picture of Mickey Mouse and I use it as the masthead on the entry pillars of my amusement park. So, whenever you see Mickey, you are reminded that it’s a product or service of my company. This is (a copyrighted) picture now being used as a trademark; that is, as a brand protecting my reputation.
It might be exactly the same creation, but the law recognizes two distinct property interests. Sort of two different tracks running to the same place.
The applicable copyright law of the United States says that, as creator, I have the exclusive “legal right” to make copies, among other things. Note that the word is “right” not “write.” Indeed, there are “copy writers” (who write copy), which is different than a legal “copy right” (being a legal right to copy). Therefore, a copyrighted work is never conjugated as, “copywritten.”
The law of the Unites States is that you do not need to register a copyright to own a copyright, although registration is a pre-requisite to filing a federal law lawsuit to enforce it. You can even use the © without registering the copyright with the government. A copyright subsists irrespective of governmental registration, unlike a patent that subsists only by the registration.
To infringe upon a copyright, the infringer must make a substantially similar copy of it, often proved circumstantially. Because a “copying” is required to infringe, theoretically, if two people independently wrote the same book and could not have had access to each other’s work, there could be the same duly copyrighted work owned by each author.
A trademark is not so concerned with how the work is created as much as it is concerned with if and how it is used in commerce. A trademark is a “mark” of our trade. Another go-to seminar panel example:
Let’s say that I’m a cattle rancher going to market. I have a bunch of cows. Now, at least to the common eye, one cow looks just like another cow. Sorry, cow. So, what’s a cattleman to do to ensure that his cow is clearly marked as originating from his own ranch, so that buyers can clearly know the difference in the source of the cattle? Right. Boom! A branding. The brand says this cow comes from this particular rancher. The brand identifies the source of the product. And woe to any other rancher who brands his cow with a brand that confuses buyers as to whose cow is whose, as it would just not be fair.
For a trademark, it is an associative reputational interest. See Golden Arches, think McDonalds Corp. See Hoover, think Hoover vacuum cleaners. Unlike a copyright, even if two people independently create a trademarks, if they are used in a manner to create confusion or to suggest an untrue association, it is an infringement. Alas, Apple Records (The Beatles) sued Apple Computer in Apple Corps v. Apple Computer.
This distinction between creation and commercial brand usage is the bane of the existence of logo developers. That is, the logo developers create an original copyrighted logo and can protect it and convey it as such, but, if it looks like the logo of the client’s competitor, the client cannot use it as a trademark. I’ve had clients come to me with the problem that, eg, $50,000 was spent with a creative company to develop a logo that cannot be used as a trademark. How does it resolve? It often depends upon the service contract and the representations and warranties, perhaps implied.
Now we get to this issue of the symbols. Symbols do what symbols do; that is, to notify others of something. It is too frequent that we observe even the most sophisticated branding people conflate usage of the ©, the ® and the ™. So, let’s get these symbols briefly explained while we’re here on the subject.
The © is the copyright symbol, by U.S. law, in the statutory form of © [year of first publication] [owner]; eg, © 2023 by Gregg Zegarelli. Under current law, the notice is not required to own a copyright, but be aware that copyright law has a lot of different historical implementations that affect and effect rights for works created in the respective years.
The ® and the ™ are trademark symbols, and they are also not required to be used. For example, “We represent the Entrepreneurial Spirit®” being the slogan of my law firm. In the United States, the difference is that the ™ can always be used, but the ® can only be used with a federal registration. Sometimes we will see a “sm” instead of the “tm”, which is technically a more precise symbol for the sale of services (a service mark) versus the sale of products (a trademark) (and noting the intended two-word/compound word difference). However, when in doubt, the “tm” is still the traditional symbol for an unregistered brand for a service or a product.
Even with a federal registration of a trademark that allows usage of the ®, the ™ can still be used, but that ® denotes something special; that is, that the brand was vetted by a United States Patent and Trademark Office highly trained Examining Attorney, using a very sophisticated process of review. Use of the ® is more than a legal notice, it tends to denote brand power, sophistication, and panache.
For more information, consider the following
The Federal Trademark ® Process-How It Works! [#GRZ_10]
Branding: 8 Common Questions About Trademarks! [#GRZ_9]
Protecting Your Brand / Trademark with Automated Monitoring [#GRZ_8]
The USPTO Proof of Use Trademark Audit – There’s a New Sheriff in Town. [#GRZ_96]
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* Gregg Zegarelli, Esq., earned both his Bachelor of Arts Degree and his Juris Doctorate from Duquesne University, Pittsburgh, Pennsylvania. His dual major areas of study were History from the College of Liberal Arts and Accounting from the Business School (qualified to sit for the CPA examination), with dual minors in Philosophy and Political Science. He has enjoyed Adjunct Professorships in the Duquesne University Graduate Leadership Master Degree Program (The Leader as Entrepreneur; Developing Leadership Character Through Adversity) and the University of Pittsburgh Law School (The Anatomy of a Deal). He is admitted to various courts throughout the United States of America.
Gregg Zegarelli, Esq., is Managing Shareholder of Technology & Entrepreneurial Ventures Law Group, PC. Gregg is nationally rated as “superb” and has more than 35 years of experience working with entrepreneurs and companies of all sizes, including startups, INC. 500, and publicly traded companies. He is author of One: The Unified Gospel of Jesus, and The Business of Aesop™ article series, and co-author with his father, Arnold Zegarelli, of The Essential Aesop: For Business, Managers, Writers and Professional Speakers. Gregg is a frequent lecturer, speaker and faculty for a variety of educational and other institutions.
© 2023 Gregg Zegarelli, Esq. Gregg can be contacted through LinkedIn.
The statements or opinions made in this article are solely the author’s own and not representative of any institution regarding which the author is affiliated. Nothing in this article is legal advice or purports to set forth the law applicable to any particular context, each person is exclusively responsible to determine the law and how it may apply to each person’s own context.
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