A Comparison of Copyrights and Trademarks in the Enforcement Landscape

Deborah Greaves
Partner, Withersworldwide.com

Copyrights can be a very effective enforcement tool for brand owners seeking to protect their products from infringements. While brand owners typically rely on their trademark registrations for enforcement purposes, sometimes the brand owner does not have a registered trademark in a country where enforcement is necessary.  

Registration of a trademark is a core requirement for enforcement in every country. However, trademark applicants may encounter obstacles when trying to register their marks. For example, the mark or a confusingly similar mark may already be issued in the country at issue. Or perhaps the mark has not yet registered due to the trademark prosecution timeline, which in some countries can last for several years.  If there is a contested proceeding—such as an Office Action, Opposition or Invalidation Proceeding, or an appeal on any of the foregoing—the prosecution timeline can be significantly extended. And then there are situations where applicants find that their mark is not registrable in a desired country due to nuances in that country’s trademark laws. Examples are marks that the country may find offensive or contrary to public policy, such as marks that promote hostilities, adversity, divisiveness, cults or religious beliefs, and even politically oriented marks.  

While a mark may not be registrable in a country due to the local trademark regulations, this unfortunately does not prevent use of the mark on counterfeit and other infringing product. In such situations, the brand owner is faced with a dilemma: a country may be a hotbed of counterfeit activity for a particular brand, but unless the trademark is registered, the brand owner will not be able to avail itself of the enforcement remedies afforded by local law.

A copyright registration of a brand’s logo may be used as an enforcement tool. However, there are a number of caveats to consider, the most important being that copyright registration and enforcement are vastly different from trademark registration enforcement and registration, and these differences start at the inception, namely, that the purposes of trademarks and copyrights are not the same.  

Function of Trademarks

Fundamentally, a trademark is a source identifier, the purpose of which is to protect consumers. Trademarks perform the following four elemental functions that have been held to be deserving of protection by the courts:

  • to identify and distinguish the goods and services of one seller from those of other sellers;
  • to indicate that all goods and services bearing a trademark come from or are controlled by a single source;
  • to indicate that goods and services bearing a trademark have a particular level of value and quality;
  • for use in advertising related to the sale of the trademarked goods and services (McCarty on Trademarks and Unfair Competition, Fifth Edition, §3:2. What a Trademark Does)

A trademark is also an indicator of the goodwill and reputation that a business has created in a product or service. In Matal v. Tam, the Supreme Court noted that trademark protection “helps consumers identify goods and services that they wish to purchase, as well as those they want to avoid.” 

Thus, trademarks are, in general, a consumer-oriented form of intellectual property.

Function of Copyrights

Copyright is a form of protection provided by the laws of the United States (and other countries) for original works of authorship, including literary, dramatic, musical, architectural, cartographic, choreographic, pantomimic, pictorial, graphic, sculptural, and audiovisual creations (U.S. Copyright Office Circular 1a). The term “copyright” is derived from the word “copy” and means that the owner of a copyright has the exclusive right to control the production, distribution and public performance and displays of the protected work, amongst other rights that have been added over the years to reflect the advancements of expression in artistic works. 

The U.S. has a long history in copyright. The framers of the U.S. Constitution empowered Congress to establish the copyright system, and the first federal copyright law was enacted in 1790. In 1897, the Copyright Office became a department of the Library of Congress. Since the enactment of the first copyright law, the Copyright Act has been revised numerous times to add new categories of works and to change other aspects of the law. For example, in 1802, prints were added to protected works. Music was added in 1831 and the initial term of a copyright registration was extended to 28 years. Dramatic compositions were added to protected works in 1856, and photographs were added in 1865 (U.S. Copyright Office Circular 1a).

Thus, the fundamental principle of copyright protection is to allow an author or artist to reap the fruits of his/her creative work for a period of time, thus incentivizing authors and artists to continue to create.

Differences in Registration Procedures and Timelines

A trademark application is filed with the U.S. Patent and Trademark Office (“USPTO”). The application must include a description of the goods and/or services upon which the applicant is using or intends to use the mark. The filing fee for a single class of goods or services is $250.00 (TEAS Plus). At present, it takes the USPTO approximately 9 months to assign a new application to an Examining Attorney.  Whether the mark is in use at the time the application is filed, or whether the application is filed as an intent to use application will determine the overall prosecution timeline, however, a reasonable assessment is that a registration will be issued in 15 months to three-and-a-half years after the application is filed, depending on various other prosecution factors.

An application to register a copyright is filed with the Copyright Office. The filing fee for a single work is $55.00. The prosecution timeline will vary depending on Copyright Office staffing and other changes to the Copyright Act, including additions to the description of protected works. But in general, a registration is issued within three to 6 months after submission of the application. In addition, applicants may pay an extra fee to expedite the issuance of a registration under certain circumstances, i.e. prospective litigation.

Because the difference in the prosecution timelines is significant, it is possible for an applicant to receive a copyright registration much sooner than a trademark registration. If there are enforcement needs while the trademark application is pending, assuming that the product or service to be enforced includes an image of the protected copyright (i.e. a copyrighted logo), a brand owner has another means to enforce while it is waiting for the issuance of its trademark registration.  

Suitable Copyrightable Subject Matter for Enforcement Purposes

Because the intention of this article is to describe how a brand owner may leverage the intellectual property rights offered through copyright registration for enforcement purposes, it is important to understand what is registrable subject matter:  

“Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise, communicated. . . . Works of authorship include the following categories:  

. . . . 

(5) pictorial, graphic, and sculptural works . . . .” 

(17 U.S. Code §102)

The key is “original work of authorship,” which means that the subject matter must have been created independently and contain a sufficient amount of creativity (U.S. Copyright Office Circular 33). Copyright law does not protect typeface, fonts, and lettering; nor does it protect familiar symbols and designs (U.S. Copyright Office Circular 33).  Thus, it is not sufficient for a brand owner to try to register a copyright that is primarily a version of its trademark in a stylized font. The subject matter of the logo must truly be original and artistic in order to meet the threshold of originality. Nevertheless, aside from the foregoing, the benchmark for originality is not that high.

Many brand owners already have this type of logo art. Such logo art can usually be registered both as a copyright and a trademark, but the remedies for each will differ. If the brand owner has procured both a copyright and a trademark registration for the logo art, this can be a powerful tool.  However, as previously mentioned, the copyright registration will likely issue more quickly and will give the brand owner leverage while the trademark application is pending.  

International Recognition

By virtue of a number of international treaties to which the U.S. is a party, a U.S. copyright registration may be recognized in multiple international countries (U.S. Copyright Office Circular 38A). For example, the Berne Convention for the Protection of Literary and Artistic Works was first accepted in 1886. Notable revisions have been made to the treaty since it was first accepted. The U.S. date for adherence to the Bern Convention is March 1, 1989. There are presently 181 member countries (U.S. Copyright Office Circular 38A).

Another notable treaty for 2D works of art is the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The World Trade Organization (WTO) administers TRIPS, which includes substantive obligations for the protection of copyright and other intellectual property rights as well as their enforcement. The WTO has 164 member countries. The U.S. became a member of WTO in 1995.

There are many other international treaties related to recognition of foreign copyright registrations, many of which deal with other types of creative content, such as phonographic recordings, signals transmitted by satellite, and the Marrakesh Treaty to Facilitate Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled. However, the two treaties that are most relevant to enforcement of copyrights in the form of graphic art are the Berne Convention and TRIPS (U.S. Copyright Office Circular 38A).  

Caveats About International Recognition of Copyrights and Enforcement Thereof

Brand owners should not assume that they can take a U.S. copyright registration to an enforcement agency in a foreign country and expect that action on infringement will be taken. The rules around recognition of foreign copyrights are very complex and vary by country in numerous aspects, including, but not limited to:

  • Duration of the copyright registration 
  • Where the work is first published
  • Whether the creator is a national or domiciliary of the country where recognition of the registration is sought, or of a treaty party
  • The type of work to which the registration applies
  • Whether the international country has other bilateral agreements with the U.S. that include language related to recognition and enforcement of the others’ copyright registrations, and what that language provides (U.S. Copyright Office Circular 38A

Enforcement Strategies

The remedies for copyright infringement in the U.S. can be quite substantial.  Statutory damages for willful infringement can be as high as $150,000 for each infringement, which means for each unlawful reproduction or copying of the registered copyright (17 U.S. Code §504).

Although there is international recognition of foreign copyrights, enforcing those rights will vary substantially. Attempts to enforce a U.S. registration in a foreign country may be met with resistance for a variety of reasons, but primarily because the enforcement agencies in the foreign country cannot be expected to understand the intricacies of the local laws governing enforcement of foreign copyright registrations. Moreover, there are a number of other complexities than can enter into the equation as discussed above.  

Rather than trying to educate a foreign enforcement agency about treaties or conventions that govern the enforcement of foreign copyright registrations in their country, it is far more prudent to register the copyright in the country where the brand owner is having enforcement issues. An enforcement agency is far more likely to take enforcement action quickly and repeatedly on a domestically issued registration.

When applying for the foreign copyright registration, the brand owner should already have a U.S. issued registration for the work that it seeks to register (or a registration from the country where the brand owner is domiciled) and should use qualified counsel in the foreign country to procure the registration on the brand owner’s behalf.