A tale as old as time, a question as controversial as Batman vs. Superman: Should the law allow a title or a character protected under copyright to be protected as a trademark? Should there be a middle ground?
Full article at https://www.inta.org/perspectives/how-pop-culture-is-protected-by-both-copyright-and-trademark-law/
“This article was first published by the International Trademark Association on inta.org”
Copyright and trademark law serve different purposes, protect different subject matter, and have different lifespans. Copyright law protects original artistic and literary expressions (such as books, songs, and various other works) for a single term of protection, usually for the life of the author plus 50 years (the Berne Convention minimum). Once this period is over and the copyright expires, a work will fall into the public domain.
Trademark law, in comparison, serves to protect distinctive and nondescriptive signs (for instance, words or symbols) used to denote and distinguish the commercial origin of the goods or services of one party from those of others in the course of trade. After the initial term of protection elapses, trademarks can be renewed indefinitely as long as the legal requirements are met. Among the most common of these requirements is the genuine use requirement, which is mandatory in most jurisdictions.
Moreover, the rights granted to trademark owners only allow them to “prevent others from using their mark in commerce for identifying similar products or services, which would confuse the public, still permitting any other use” (from Trademark Protection of Public Domain Characters by Asko Metsola). On the other hand, copyright protection entitles the author or rights holder various exclusive rights to protect the original creative expression, “preventing anyone from using, copying, modifying, distributing, performing, or displaying the protected work,” Mr. Metsola stated. Therefore, the scope of trademark protection is narrower than the one granted in copyright law, and it is one of the reasons trademarks have a longer term of protection.
A final important distinction is the originality requirement for copyright protection. If a character is not considered an original creative expression, then it cannot be protected by copyright. However, it may still be eligible for trademark protection if the character is used to identify the single origin of a product or service (despite the lack of originality).
As previously indicated, trademark and copyright serve different purposes and consequently, they have different origins, and follow different rules on ownership, formality requirements, duration, and infringement. Nevertheless, sometimes the two systems can protect the same matter.
Some scholars, such as Irene Calboli, Professor of Law at the Texas A&M University School of Law in Fort Worth, Texas, USA, argue that this overlap may be problematic, as it inhibits society’s creative expressions and hinders access to knowledge. Others, including Professor Yann Basire of the Centre for International Intellectual Property Studies at the University of Strasbourg in France, regard this phenomenon as coexistence and assert that the different finalities of these two intellectual property (IP) rights negate the overlap argument.
The scope of trademark protection is narrower than the one granted in copyright law, and it is one of the reasons why trademarks have a longer term of protection.
On the other hand, Professor Laura A. Heymann of the College of William & Mary–Marshall-Wythe School of Law, Williamsburg, Virginia, USA, proposes a different approach to this controversy: a middle ground.
“The fact that something qualifies for protection under a particular IP doctrine does not mean that, in any particular case, the IP owner is entitled to a particular remedy. The appropriateness of a remedy depends on whether it is tailored to the harm incurred,” she said. “If two forms of protection are both available for a single article, it is not automatically unlawful or duplicitous to assert both.”
This approach could resolve the issues noted by the scholars behind the overlap approach while not hindering the benefits accrued from trademark registrations. Such benefits include allowing movie franchises to brand and merchandise more effectively, which, in turn, would enable the creators of comic book characters to take advantage of the growing popularity of franchise characters.
For the alleged overlap to happen, a copyrighted work must fulfill the requirements for protection as a trademark, including nondescriptiveness, perception as a trademark by the relevant public, distinctiveness, the ability to identify the commercial origin of goods or services, and usually genuine use.
Is a Well-Known Character of a Sign Always Nondistinctive?
Dr. No, the title of a movie from the James Bond family, was central to a decision (Case T-435/05, June 30, 2009) rendered by the European Union Intellectual Property Office (EUIPO) in 2009, in which the gravamen was whether the word mark was able to indicate the commercial origin of the movies. Subsequent to an EU trademark application carrying the name DR. NO by a German company, the producers of the movie filed an opposition contending that the sign is well known.
The EUIPO dismissed this opposition because (i) the producers could not demonstrate the well-known character of the sign; (ii) the DR. NO sign indicated the artistic origin of the movies rather than the commercial one; and (iii) the sign only served to distinguish the movie from other films of the James Bond movie franchise.
The EUIPO also found that the commercial origin of the movie was indicated by other signs affixed to the DVDs of the movie, such as “007” or the “gun symbol.” The DR. NO sign was used only as a reference (that is, descriptive of goods) and not as a trademark in the context of comic books, music recordings, books, posters, model cars, and watches.
In another interesting case, Disney Enterprises, Inc. registered the word mark “Pinocchio” as an EU trademark in 2009. Three years later, in 2012, an application was filed, declaring the invalidity of this mark on the basis of lack of distinctive character and being descriptive.
On appeal from the EUIPO decision, the General Court found (Case 6358 C, July 27, 2013) that, as a consequence of the extremely high recognition of “Pinocchio” with a large array of published versions and adaptions, the name is no longer perceived as a trademark and is thus nondistinctive. It, therefore, declared the mark invalid for classes in which the mark would be regarded as descriptive, including Class 9 (for example, recording discs) and Class 28 (puppets). It dismissed the invalidity action for classes in which the mark would not be descriptive, including Class 3 (cologne) and Class 14 (necklaces).
Similarly, after the popular use of the expression “#jesuischarlie” following the shooting at the Charlie Hebdo newspaper in Paris in 2015, the French National Institute of Industrial Property and the EUIPO proclaimed that the expression could not be registered as a trademark due to its widespread use, which rendered it nondistinctive.
Na na na na na na na na na na na na na, Batman! The fictional character is the cornerstone of a compelling dispute in the EU at this moment. The applicant for invalidity is seeking the cancellation of an EU trademark (No. 38158) depicting the “bat symbol” of Batman on the basis that consumers associate the contested sign directly with the character of Batman and the character’s costume. Thus, it would not be perceived as an indication of the origin of the goods for which the mark is registered, but merely as an indication of the purpose of the goods, which is “to wear the same costume as Batman.”
On May 21, 2020, following an application for a declaration of invalidity by an Italian company, the Cancellation Division ruled on the validity of the Batman sign and rejected the invalidity application in its entirety.
The EU trademark proprietor, in defending the claim, alleged that the contested sign was used to distinguish the goods from the proprietor’s franchise from goods offered by other companies, which fulfills the key function of a trademark. The EUIPO Cancellation Division (cancellation No. 31 962 C (invalidity), May 21, 2020) asserted that it is reasonable to assume that the relevant public will recognize the “bat symbol” as an identifier of the commercial origin of the goods in light of its numerous adaptations and to the longevity of the character.
According to WIPO Economic Research Working Paper No. 61, Batman has seen the most revivals out of all comic book characters—most namely, in movies and video games. As a consequence, the public will associate the contested EU trademark exclusively with the Batman character from the DC Comics universe and not with any other comics or superhero story or franchise. The EUIPO, therefore, found that the mark is still valid and dismissed the application for invalidity. The Cancellation Division also stressed that the well-known character of a sign cannot always constitute the basis for a claim of nondistinctiveness. The EUIPO decision is currently under appeal.
Taking into account the rise of adaptations from (comic) books to box office sensations, the number of cases will surely increase.
Who could forget the dance scene in Dirty Dancing in which Baby leaps into Johnny’s arms and dances passionately in front of her family? She certainly had the time of her life! In 2015, the movie was at the heart of an interesting dispute.
Lions Gate Entertainment Inc. sought to register the DIRTY DANCING word mark as an EU trademark. The examiner indicated that the word mark could not be registered as an EU trademark because it was descriptive and nondistinctive of services in Class 41 for the English-speaking part of the public. The applicant appealed and argued that the mark acquired distinctiveness through use.
The examiner responded to this claim saying that “dirty dancing” is “a lexical expression in English meaning ‘the action or practice of dancing to popular music in a sexually provocative manner; such a dance itself, especially one in which couples dance very close together,’” and that it “immediately informs the consumers, without further reflection, that the services applied for are various entertainment, training and education-related services having as subject that particular kind of dance.” Accordingly, the examiner contended that the word mark was devoid of distinctive character.
Furthermore, the examiner dismissed the claim of acquisition of distinctiveness through use in view of the fact that the use of the contested sign as an indicator of commercial origin for relevant services in Class 41 could not be proven. The Fourth Board of Appeal (R 2252/2014-4, February 10, 2015) dismissed the applicant’s subsequent appeal in its entirety.
Public Domain vs. Trademark Protection
The famous Vigeland case, adjudicated by the Norwegian Industrial Property Office Board of Appeal in 2017, is also worth mentioning here. In this case, the Oslo Municipality sought trademark protection for several artworks by Gustav Vigeland that were falling in the public domain. The interesting aspect of this case lies within the answers given by the European Free Trade Area (EFTA) Court (EFTA Court – E-5/16). When referred questions on this matter, the EFTA Court followed the opinion by the European Copyright Society and indicated that when certain pieces of art enjoy a particular status as illustrious parts of a nation’s cultural heritage, a trademark registration may even be regarded as misappropriation or desecration of the artist’s work.
This is especially the case when the goods or services of cultural significance for which the trademark application is made are placed in an objectionable context or contradict the values of the artist or the message communicated through the artwork in question. Another example of such application given by the European Copyright Society is attempting to register a sign derived from Pablo Picasso’s famous painting Guernica for the sale of weapons.
In contrast, it is important to note that a sign depicting a work in the public domain may still be eligible for trademark registration. The Frederick Warne & Co., Inc. v. Book Sales Inc., decision (481 F. Supp. 1191 (S.D.N.Y. 1979)) by the U.S. District Court, Southern District of New York, clearly sets out this position. The court noted that for a character in the public domain to be granted trademark protection, the character must have obtained “secondary meaning.” In other words, the public should immediately perceive the source of the character in question.
As a result of this decision, the Walt Disney Company—working to prevent others from using Mickey Mouse freely—has made Mickey the preeminent symbol of the company. It can presumably be said that Mickey Mouse has obtained a secondary meaning, so it will be interesting to see what happens on January 1, 2024—the day that the first published appearance of Mickey Mouse, as Steamboat Willie, enters the public domain.
A final interesting case to note is again by a U.S. court—the U.S. Court of Appeals for the Seventh Circuit Court in Klinger v. Conan Doyle Estate, Ltd., No. 14–1128, decided August 4, 2014. The court concluded that while the character traits and story elements which appeared in the original Sherlock Holmes books and stories would be under public domain, the ones developed in other works (for instance, the BBC show Sherlock) would not. This development would not afford copyright protection to the ones in the public domain.
In summary, courts and scholars have laid an impressive groundwork regarding the intersection of copyright and trademark law. Taking into account the rise of adaptations from (comic) books to box office sensations, the number of cases will surely increase. Legislative action may be necessary to ensure no undesirable consequence from simultaneous protection occurs. This is a very tricky issue, and it will be interesting to see how or if it gets resolved.
