Our video blog on Copyright vs. Trademark:

Lightly-edited version of the transcript on Copyright vs. Trademark:

Hi, I’m Anthony Verna, managing partner Verna law, where our team tackles intellectual property and advertising law.
If you’ve heard my 30 video blogs and 55 episodes of the “Law and Business” podcast right here, you already knew that.

Melissa from Washingtons Crossing, Pennsylvania asked me to do a little comparison about copyright and trademark law.

Let’s take this right back to the beginning and be a little basic, but that’s okay. Not everybody understands IP law.

Copyright law traditionally protects works of art. This means: books, magazines, newspapers, we call those literary works. In modern times, we shove computer programs into literary works because you write code, somehow, like you write a book: at least that’s the fiction we provide.

Trademark law is all about branding. So there has to be a product, goods or services, and there has to be something relatable to that: a slogan, the name of the brand, the name of the business, advertising slogans, sounds, maybe the describe the distinctive shape of the products.

Colors, tastes, touch, motions, all of those could be trademarks, but it’s about the relationship between the brand, however, we want to define the brand, and the product.

Copyright law does require some kind of registration in order to be enforceable.

Trademark law may not require a registration, but federal trademark law certainly does require registration, otherwise you have what we call a common law trademark. There’s no research done to it. There’s no due diligence done for it. It’s there and you will make the claim on the trademark if you walk into court, but you will not be able to receive damages under federal trademark law. You might be able to trick the court under the Lanham act into having what we call a famous trademark. And, therefore there, are some other rights in that famous trademark. But again, it’s very, very tricky.

Copyright law lasts for 70 years after the life of an author or for 120 years if a corporation owns the registration of the copyright.

Trademark law has, after registration, a five or six year requirement for filing and is renewable every 10 years until the company actually stops using the trademark.

But both are business assets and both act very differently.

I hope this little reminder helps you understand: copyright law, traditionally art; trademark, while traditionally brands, and that’s really the big difference between the two.

Again, I’m Anthony Verna. You can visit us on vernalaw.com.

Talk to you again soon.

Do you have questions on Copyright vs. Trademark Law?  Here at Verna Law, P.C., we can answer all your questions.  Just send us an e-mail at anthony@vernalaw.com or call us at 914-908-6757.

Copyright vs. Trademark – What are the Exclusive Rights?

Copyright law and trademark law are different types of intellectual property. Copyright law traditionally protects the exclusive rights of owners of artistic works.  These types of creative works are enumerated in the Copyright Act (see above).

Trademark law traditionally protects the brand name of either goods or of services that a company provides.  This is so the brand identity can be exclusive and that the brand’s reputation is kept at an appropriate level.  Trademark protection is about making sure that similar brands do not exist representing similar goods or services.  For example, “Mercury” has been a registered trademark on boats and on cars.  These legal protections exist for both the owners of the trademark “Mercury” on those different goods.

This shows that the intellectual property protection that is provided by copyright law are different protections than those offered by trademark law.  Copyright law focuses on the work, while trademark law focuses on the economic surroundings of the brand. There are different purposes for the two sets of intellectual property laws

Copyright vs. Trademark – Where to File Them?

​Copyrights are filed in the Copyright Office of the Library of Congress.

Trademarks are filed in the United States Patent and Trademark Office.

The Library of Congress will review the application filed and make sure the technical requirements are met – that the right type of form was filed, that the copyright holder is listed properly, and that if the work is a work made for hire that the author as the creator of the work and the owner are different.  But the U.S. Copyright Office does not determine infringement or if two copyrighted works are similar – that is the work of the court system in a legal action.  There is not much of a copyright registration process.

The U.S. Patent and Trademark Office will review the trademark or service mark and compare it to registered trademarks and issue a refusal to register which we call an “Office Action” that states the legal reasons for refusing to register the mark.  Once those reasons refusing to register the trademark are alleviated then third parties can review the trademark application before the USPTO issues the federal trademark registration.

These are the key differences in the steps to register copyrights and trademarks.

Why register copyrights and trademarks?

Federal registration of a copyright is required when filing a legal action in federal court.  Copyright infringement lawsuits cannot begin without a registration or a preregistration.  Any unauthorized use of a work as defined above is copyright infringement.

Federal registration of a trademark allows the trademark holder to have its mark catalogued with a starting date and the goods or services that the mark represents.  This way, any junior users of the trademark will have issues trying to register when a registration is already solidified.  While trademarks can be enforced under state laws, federal judges are used to trademarks much more than state judges and the damages can be higher in federal court.

Copyright vs. Trademark – Fair Use?

The Copyright Act has a concept called Fair Use built into it. The legal consequences of Fair Use is that a copyrighted work can be used within certain sliding guidelines.

Trademarks have a different sense of “fair use” as the concept itself only exists for nominative use when a trademark is not able to be named otherwise.

Copyright vs. Trademark – Public Domain?

​In Copyright Law, the public domain is the set of works that do not qualify for copyright protection.  Usually, it is because the work is too old.  The most recent popular example is “Steamboat Willie,” the first short starring Mickey Mouse.

There is no public domain in trademark law.  However, there are generic words that do not quality for trademark protection.  For example, an apple is still an apple and can be called an apple.

Copyright vs. Trademark – Symbols?

The copyright registration logo is not required after countries signed the treaty called the Berne Convention.  The copyright symbol may provide copyright notice – that a work is registered and the owner is asserting copyright ownership, but this is not necessary.

The trademark symbol is required to be used to notify the public that a trademark is registered.

Copyright vs. Trademark – Common Law Rights?

There is no such thing as copyright common law rights or a “poor man’s copyright.”  In order to assert the copyright of a work of authorship in a tangible form, the work must be registered.

Trademark rights begin when there is use of the mark on goods or services in commerce.  This is the definition of the common law rights in trademark law.  However, registration provides benefits such as being active in all states and territories of the United States.

Copyright: Dean v. Cameron, 53 F. Supp. 3d 641 (S.D.N.Y. 2014)

Here’s an example of a copyright infringement lawsuit. Notice the references to art.

William Roger Dean, a British artist renowned for his fantastical landscape paintings, notably for prog rock bands like Yes, Uriah Heep, and Asia, filed a lawsuit against James Cameron and 20th Century Fox. Dean alleged that the visual design of the planet Pandora in Cameron’s film “Avatar,” specifically the floating islands and certain creatures, were copied from his artworks. He sought over $50 million in damages, claiming substantial similarities between his works and the film that ruled out any chance of accidental copying or common genre scenes​.

The lawsuit was eventually dismissed by the U.S. District Court for the Southern District of New York. The court found no substantial similarity between the copyrightable elements of Dean’s artwork and the film, concluding that Dean did not have a monopoly on the idea of floating or airborne land, an idea present in literature and art long before “Avatar” was made. The judge characterized Dean’s claims as “plainly misguided.”

Trademark: Hermès Int’l v. Rothschild, 22-cv-384 (JSR) (S.D.N.Y. Jun. 23, 2023)

Here’s an example of a trademark infringement lawsuit.  Notice the references to brands and products.

The case centers around a lawsuit filed by Hermès against Mason Rothschild, an artist who created and sold NFTs of the famous Hermès Birkin bags, dubbed “MetaBirkins.” Hermès argued that Rothschild’s use of the “Birkin” name and the likeness of their iconic bags in the NFT space constituted trademark infringement, dilution, and cybersquatting.

Hermès, a luxury fashion brand well-known for its leather goods, including the highly coveted Birkin bag, claimed that Rothschild’s MetaBirkins infringed on their trademark rights. They argued that the digital representations of the Birkin bags could confuse consumers and dilute the brand’s exclusivity and value. Rothschild defended his work on the grounds of artistic expression and the First Amendment, positing that the MetaBirkins were art and should be protected as such.

This case is particularly significant because it highlights the legal challenges and questions emerging from the intersection of traditional intellectual property rights and new digital and virtual goods. The outcome of the case could set a precedent for how trademarks are enforced in the digital realm, especially in relation to NFTs and virtual products that mimic or evoke real-world luxury goods.

Do you need an experienced intellectual property attorney to help you with any questions you have on copyrights or trademarks?  Contact us at Verna Law, P.C. at anthony@vernalaw.com or 914-908-6757 to ask.