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Should I Copyright or Trademark My Logo?

Anthony M. Verna, III, Esq.
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Should I Copyright or Trademark My Logo?

Your logo should probably be protected by both copyright law and trademark law.

Protecting your intellectual property is crucial when you’re establishing your brand identity. One of the first decisions you’ll face is whether to copyright or trademark your logo. Understanding the distinct functions of these protections is key to making the right choice for your business, which is why “both” copyright law and trademark law will protect your logo.

Understanding Copyrights and Trademarks

Copyrights primarily protect artistic and literary works. For a logo, copyright safeguards the artistic aspects, such as unique design features. However, copyright protection might not apply if the logo is mass-produced or lacks originality.

Trademarks, on the other hand, protect symbols, names, and slogans used in commerce that distinguish goods or services. Trademarking a logo ensures you hold the exclusive rights to use it in a business context, helping prevent others from confusing your brand with competitors.  

The main difference is that copyright law protects works of art traditionally and trademark law protects brands.  Logos are valuable assets that businesses need to protect in multiple ways.

Which Legal Protection Should You Choose for Your Logo?

Trademark Law is ideal if your logo is a distinctive symbol that represents your brand’s identity in the market. Before applying for a trademark, ensure your logo is unique. Working with a professional designer can help create a logo that meets trademark eligibility requirements. Remember, trademark protection involves more than just registration; it requires ongoing management to maintain the rights.  Trademark law traditionally protects brands.

Copyright Law for a logo is appropriate if your design includes significant artistic elements. It’s important to communicate with your designer about aiming for a copyrightable logo. Also, be aware that if the designer is not your employee, they generally retain the copyright, unless you arrange for a transfer of rights.  Copyright law traditionally protects the expression of artistic works in a tangible medium of expression.  

Examples of Trademarks (Brands):

  • Apple
  • Mattel
  • Hasbro
  • Google
  • MLB
  • NHL
  • FedEx

From a logo design standpoint, most consumers can see a lot of the design elements just by reading the names of the trademarks listed.  Apple’s apple design mark is easy to picture, with a bite taken out of the apple.  The design of the logo is easy to picture with FedEx, especially as an arrow pointing forward comes from the negative space.  These graphic designs matter and are described in a trademark application and then a trademark registration that results a brand is protected by trademark law.

Practical Tips for Logo Protection

  • Evaluate the uniqueness of your logo: Consider if your logo stands out enough to qualify for trademark protection.  A federal trademark registration is for a distinctive trademark that represents goods or services in marketing materials.  It is a visual representation of your brand.
  • Understand the costs: Trademark registration can be costly, but it’s a worthwhile investment if your brand strategy relies heavily on your logo’s uniqueness.  There is a filing fee at both the US Patent and Trademark Office and at the US Copyright Office at the Library of Congress.
  • Consider legal guidance: Navigating intellectual property law can be complex. Consulting with a trademark attorney might provide clarity and direction.  Intellectual property protections are complex.  Copyright law protects original works of authorship, which a logo is.  Trademark law protects brands.  Logos fall under both, which is why a logo can be a valuable business asset.
  • Use it or lose it: A trademark must be actively used in commerce to maintain its protection. Ensure you continue to use your logo in business operations.
  • Register both, if applicable: In some cases, your logo might qualify for both copyright and trademark protection, offering dual layers of security.

What Happens if Someone else Uses the Logo?

Providing that the logo is registered in the Library of Congress’ Copyright Office, the owner of the copyrighted work can file a lawsuit in federal district court.  The copyright registration must be completed before filing a copyright infringement lawsuit.  (And the use of the copyright symbol is optional – no notice of a copyright registration must be given.)  A copyright registration just requires that a copy of the work be filed along with the author’s contact information and the owner’s contact information, if those are different entities or people.

A trademark infringement lawsuit may be filed regardless of the nature of registration.  A common law trademark is not registered in the United States Patent and Trademark Office. A common law trademark may be protected by state laws, but can be protected in federal court under certain circumstances.  Unregistered trademarks may only be enforced with geographic limitations on where it is used at times.  Marks that have passed the federal registration process have more legal rights than common law trademarks.  It is a good idea to register trademarks, because the application process includes a trademark search to avoid a likelihood of confusion with other registered trademarks.  The federal registration process is important because the USPTO has an examining attorney review the application and approve the trademark application.  

A legal action against a party that is infringing both a trademark and a copyright means that more damages could be gained in a positive result.  For example, attorneys’ fees are not easy to win in a trademark infringement lawsuit and are considered a special type of damages for trademark infringement.  As long as the copyright is registered before the infringement happens, attorneys’ fees may be asked in a copyright infringement lawsuit.

Copyright Work Made for Hire – Who Owns the Logo?

In trademark law, the ownership is rather straight forward.  The trademark holder is the one who actually uses the mark in interstate commerce or in commerce Congress can otherwise regulate.  

In copyright law, the answer is not so easy.  The of the work owns the copyright in the work, also.  Unless the work is made for hire.  

In U.S. copyright law, the term “work made for hire” (WFH) refers to specific works eligible for copyright protection that are either created by employees within their employment scope or certain types of works where all parties explicitly agree to classify it as WFH through a written agreement. Not merely dictated by an agreement’s terms, the legal status of a WFH must meet strict statutory criteria defined in 17 U.S.C. § 101. This classification alters the default legal assumption that the work’s actual creator is its author, assigning authorship instead to the employer or commissioning party, known as corporate authorship.

Accreditation and Moral Rights

In the U.S., whether a creator is credited for a WFH does not influence its copyright status. However, the creator may still possess moral rights, such as the right to be recognized as the work’s author and to safeguard the work’s integrity. These rights are acknowledged separately by states adhering to the Berne Convention for the Protection of Literary and Artistic Works. For instance, while Microsoft may not credit individual programmers for Windows, Adobe lists the developers of Photoshop. Despite these credits, the employer retains copyright ownership.

Legal Framework in the United States

The 1976 Copyright Act outlines two specific circumstances under which a work qualifies as WFH:

  1. Creation by an employee within their employment duties.
  2. Commissioned works specified under nine categories (e.g., contributions to a collective work or part of a motion picture), provided there’s a written agreement designating the work as WFH.

For employees, the determination hinges on traditional employment relationship markers. The Supreme Court in Community for Creative Non-Violence v. Reid clarified that factors like the employer’s control over work details and the employment benefits offered are essential in this determination.

Implications for Independent Contractors

Works by independent contractors can only be deemed WFH if they meet the designated categories, are specially ordered or commissioned for one of those purposes, and include an explicit written WFH agreement. Notably, any arrangement lacking these elements retains copyright with the creator. Moreover, agreements must be pre-negotiated and cannot retroactively designate a work as WFH.

Challenges and Legal Considerations

The rigidity of WFH agreements can pose challenges, especially in industries like film where multiple creators are involved. Without a WFH agreement, any individual creator may retain rights that could prevent the full use of the work. Conversely, while less beneficial for creators, copyright transfer agreements allow authors to retain certain rights until contract conditions are fulfilled.

In summary, the WFH doctrine and associated legal framework significantly influence copyright ownership, authorship recognition, and the use and control of creative works, highlighting the intricate balance between creators’ rights and the interests of those commissioning or employing creators.

What are Trademark Infringement Examples?

 

Trademark Infringement: Key Examples and Remedies

Trademark infringement can happen in any industry due to insufficient initial research, leading to significant risks and costly outcomes. It typically involves unauthorized use of a trademark, which can be prevented with thorough trademark research.

Examples of Trademark Infringement:

  1. T-Mobile US., Inc v. AIO Wireless LLC

    • Issue: T-Mobile sued AIO for using a similar magenta color in telecom services, claiming it could confuse consumers.
    • Outcome: The court stopped AIO from using the color and ordered the destruction of all related marketing materials.

  2. Adidas America, Inc v. Forever 21 Inc

    • Issue: Adidas alleged that Forever 21’s three-stripe pattern infringed on its trademark.
    • Outcome: The case was settled privately, continuing Adidas’s history of defending its three-stripe design.

  3. Starbucks v. Obsidian Group, Inc

    • Issue: Starbucks claimed Obsidian’s “Freddoccino” was too similar to its “Frappuccino.”
    • Outcome: The case has settled.  While terms are not known and probably confidential, Obsidian changed the product’s name to “Freddo.”

Trademark Infringement Remedies (Lanham Act):

  • Injunctive relief to halt infringement.
  • Seizure and destruction of infringing goods.
  • Monetary damages, potentially including triple damages for willful infringement, and coverage of legal fees in exceptional cases.

Trademark Trial and Appeal Board Proceedings:

  • Oppositions: Allow challenges to trademark applications within a 30-day period after publication.
  • Cancellations: Used to cancel a registered trademark on the Principal Register, similar to oppositions but post-registration.

What are Copyright Infringement Examples?

Copyrights are crucial for any person creating artistic works, especially in the digital age where their work is easily accessible online. Knowing about recent legal battles helps understand the landscape of copyright law.

 

Notable Copyright Cases:

  1. Lynn Goldsmith vs. Andy Warhol Foundation

    • Issue: A U.S. appeals court ruled that Warhol’s transformative use of Goldsmith’s Prince photo did not qualify as fair use.
    • Current Status: The Supreme Court ruled that Fair Use did not apply when there was a license to use a previously-published photograph in a new work.

  2. Gigi Hadid vs. Paparazzi Agency Xclusive-Lee

    • Issue: Hadid posted a photo of herself on Instagram taken by Xclusive-Lee without permission.
    • Outcome: The case was dismissed due to improper copyright registration by Xclusive-Lee.

  3. Gregory Mango vs. BuzzFeed

    • Issue: BuzzFeed used Mango’s photo without permission and altered the copyright information.
    • Outcome: A court found BuzzFeed liable for third-party infringement.

  4. Stephanie Sinclair vs. Mashable

    • Issue: Mashable used Sinclair’s photo via Instagram’s embed feature without her permission.
    • Update: The case was reopened and later settled, emphasizing copyright concerns with embedded images.

  5. Steve Mitchell vs. LeBron James

    • Issue: James posted Mitchell’s photo of him on social media without permission.
    • Outcome: James countersued and a settlement was reached, though terms were undisclosed.

  6. William Greenblatt vs. the McCloskeys

    • Issue: The McCloskeys used Greenblatt’s viral photo without permission and claimed ownership over it.
    • Outcome: The case highlights the ongoing debate over image rights and public domain usage.

Additional Resources

For more detailed guidance, refer to previous discussions on the differences between copyrights and trademarks in my other blog post, “Copyright vs. Trademark”. Understanding these can enhance your decision-making process about protecting your logo.

 

Conclusion

Deciding whether to copyright or trademark your logo depends on how you intend to use it and the level of originality it embodies. Both protections serve different purposes but are equally important in safeguarding your brand’s identity. Consider your business’s specific needs and consult with professionals to ensure you choose the right type of protection.

 

Do you have any questions as to how copyright law or trademark law will protect your logo?  Contact Verna Law, P.C. at anthony@vernalaw.com or at 914-908-6757. Verna Law, P.C. is a law firm focusing on intellectual property (patents, trademarks, and copyrights) and advertising law firm.

 

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