how to protect your brand

How to Protect Your Brand

Konrad GatienCo-Chair of Brand Development & Content Protection Practice

Stubbs Alderton & Markiles, LLP

Changing Times, Changing Strategies.

• Who should be entitled to control and exploit a work, and for how long?

• Should it be the creator of a work or the public?

Introduction

• If you are a copyright owner, your intellectual property will eventually fall into the public domain

• Must secure additional protections for their original works, or face extinction

Business Perspective

• Owners are growing their works into well-established brands

• Create series around stand-alone properties such as books, films and special events

Example: Buffy the Vampire Slayer◦Film◦Television Series◦Spin Offs

Business Perspective (Con’t)

• Create cottage industries around separately copyrightable elements of original works such as characters, settings and slogans

Example: Shrek◦Movie Franchise◦Album Sales◦Broadway Musical

• Exploit these original elements in well-run merchandising campaigns

Example: Shrek Campaign◦McDonald’s Happy Meals◦Billboards◦TV Commercials

Legal Perspective

• Brand owners can continue to protect original works by registering these source identifying properties and their constituent elements as trademarks and offering them in commerce as goods and services.

• Trademark rights are perpetual as long as the marks are in use.

Road Map

• Copyright

• Trademark

• Issues arising from seeking trademark protection to extend the benefits lapsing under copyright law

Copyright Purpose and Protection

• Protects original works of art by prohibiting third parties from copying an author’s work without permission. ◦ Found in the Constitution

Art. 1, §8, cl. 8 ◦“to promote the progress of science and the useful arts,

by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries.”

• The purpose of Copyright law is to incentivize authors to create by ◦ ensuring that they will have the exclusive right to exploit their

works for a limited period of time.

Copyright Purpose and Protection (Cont’d)

• “Bundle of rights,” ◦ right to reproduce, ◦prepare derivative works, ◦distribute, ◦publicly perform live or via digital audio transmission

for sound recordings ◦publicly display the protected works.

• The period of protection:◦70 years after the death of author for an original

work and◦95 years from publication or 120 years from creation,

whichever expires first, for works made for hire.

What happens when the copyright grant expires?

• Upon expiration, protected works fall into the public domain and, the Congressional intent having been satisfied, are free for public use.

• Does the copyright owner, who has invested substantial time, effort and money in creating, developing, and promoting their original works, lose all rights in favor of unrestricted public use?◦ this dilemma threatened to eviscerate entire brands built

around copyrighted subject matter and the characters, plots, settings, themes, and styles appearing in protected works,

• Trend toward broader protection for brand owners.

Critique of Copyright Grants

• Tips the scales unfairly in favor of brand owners, limiting creativity and circumventing the very purpose of Copyright protection.

• Broad protection inhibits creativity by limiting the choices available to artists, and that statutory protection is all-too-often accompanied by over-zealous, heavy-handed and one-sided litigation in which individual rights are trampled by leviathan business interests.

◦ Example: Christian Louboutin, S.A. v. Yves Saint Laurent America, Inc., 778 F.Supp.2d 445, 453 (S.D.N.Y. 2011)

“Placing off limit signs on any given chromatic band by allowing one artist or designer to appropriate an entire shade and hang an ambiguous threatening cloud over a swath of other neighboring hues, thus delimiting zones where other imaginations may not veer or wander, would unduly hinder not just commerce and competition, but art as well.”

◦ Example: Opposition to the Protect IP Act (PIPA), and the Stop Online Piracy Act (SOPA), on the basis that these bills would censor the Internet and slow economic growth in the U.S. as a whole.

Counterargument of Copyright Grants

• Copyright protection is not absolute

• Fair use doctrine provides an inroad for educational, non-commercial and artistically transformative uses of creative works, including the right to comment on or criticize the works.

Public Interest

• Owners have the highest interest in ensuring quality control based upon their investment and maintenance of the work as a brand.

• Strangers to this process are more likely to create low-quality reproductions or merchandise which harms brand value and the public.

• Creators and the public are best served when the owners of the branded content maintain control over it.

• This is where Trademark law comes in.

Trademark law as a means for extending protection of branded content

• Created by the Lanham Act

• Prevent consumer confusion by protecting marks that indicate a single source of origin

• Certain works can be the subject of both copyright and trademark protection.

◦ Example: a pictorial work may be protected by copyright, but may also be a protected mark if it is used in commerce.

◦ Overlapping protection is most often at issue when creative works become the logo or signature mark for a product.

◦Examples: character names, apparel, furniture design

• Copyright protection on such works is limited in duration

• Trademark protection is perpetual as long as the mark is in use Significant means for extending protection of copyrighted works

Critique of Trademark Law for Protection of Copyrights

• End-run around copyright’s durational limits

• Copyright was not intended to be perpetual

• At some point, the public should have free and open access to work.

Counter: Congress and the courts disagree

• Separate bodies of law, not mutually exclusive

• Expiration of a copyright does not mean that any parallel trademark or trade dress protection is moot, or that the work necessarily enters the public domain

• Underlying policy◦ Copyright protects an author’s right to exploit a work◦ Whereas trademark protects the public from confusion

If a work has fallen into the public domain, but its use will cause confusion as to the source of origin, trademark is available to protect the work, and therefore the public.

What about the Lanham Act?

• Example: • THREE STOOGES: In 2000, the owner of a short public domain film featuring The Three

Stooges argued that use of a portion of the film in New Line Cinema’s 1996 feature The Long Kiss Goodnight constituted a violation of the Lanham Act, because the short film was a trademark.

◦ The court held: short film did not constitute a protectable trademark

◦ WHY? film was appropriately the subject of copyright did not meet the secondary meaning requirement to be capable of

trademark protection. Trademark protection cannot be used to extend copyright protection for

works that have become public domain.◦ BUT

Court suggested that if New Line altered the short film from its no longer protectable original form, there might have been a different outcome.

What about the Lanham Act? (Cont’d)

• WIZARD OF OZ: Eighth Circuit held that the characters from the MGM classic The Wizard of Oz may still be within the scope of copyright protection, despite the fact that both the novels on which the film was based, and many of the publicity stills featuring the characters, have fallen into the public domain.

◦ T-Shirt manufacturer attempted to use images from public domain posters as graphics on their apparel, MGM sued

◦ MGM conceded that the posters were in the public domain, argued the use of the images potentially infringed valid copyrights in derivative works made by MGM, and based on the original film’s characters.

◦ Court agreed used images from the public domain stills altered them so that they would look closer to the depictions in the

actual film which was not public domain used the images out of their original context

Limitations of Trademark Law for Copyright Protection

• Given that trademark may provide the best long-term protection, it is important to understand the limitations of the dual protection scheme.

• First, trademark law can protect only distinctive works that are source identifiers.

• In addition, where registration of the mark threatens to limit the public’s ability to participate in commerce, the mark is unlikely to be capable of registration.

How to protect your brand

• Intellectual property owners should not rely on a single body of law to protect their substantial investments in their brands. Registering marks for both copyright and trademark protection ensures the works will be given the broadest scope of protection.

• Only way to protect a copyrighted work beyond the limited duration provided by Congress.

What is Trade Dress in the Electronic Age?

• One means of achieving distinction is for a company to create a website that has a unique “look and feel” that sets it apart from the rest. This overal visual appearance is known as “trade dress.”

• Trade dress consists of the specific characteristics or visual appearance of a product or its packaging.

• Trade dress protection has expanded to include magazine covers, store interiors, and websites.

What is Trade Dress in the Electronic Age? (Cont’d)

• Elements of trade dress with respect to websites include:

• Images

• Frames

• Colors

• Highlights

• Orientation

• Layout

• Graphics

• Animation

• Borders

• Sounds


• Example Website (Distinctive):


• Example Website (Non-Distinctive):

Purpose of Trade Dress

• The purpose of trade dress protection is to prevent marketplace confusion by ensuring that a consumer’s reliance upon the distinctive features associated with a single source are not copied and associated with another business and its products.

• Trade dress is protectable once a substantial number of purchasers associate a particular appearance with a single source. One this “secondary meaning” has been established, the trade dress owner may prevents others from copying it under the Lanham Act, which prohibits unfair competition.

How do I Establish Trade Dress?

• A person or business seeking protection must be able to articulate which elements of its website are distinctive.

• These elements cannot be “functional,” meaning they cannot be merely essential to the product’s use. (i.e., a unique logo or graphic for this feature)

• The purpose of the requirement that trade dress consist of specific, articulable, non-functional elements is to give competitors sufficient notice of what the protected trade dress is, and to protect legitimate competition by prohibiting the monopolization of useful product features.

Preemption by Copyright

• Where online trade dress is at issue, a trade dress owner’s claims may be dismissed if the appearance of the websites falls under the protections of the Copyright Act.

• A website owner cannot seek to protect the look of its website as both a copyrighted work and trade dress.

• Owner should be careful therefore in selecting the elements of its trade dress

Konrad GatienCo-Chair, Brand Development & Content Protection Practice

15260 Ventura Blvd., 20th FL

Sherman Oaks, CA 91403

(310) 746-9810 Direct

[email protected]

mailto:[email protected]