Copyright Extension Through Branding - Pain Is Temporary, Film Is Forever

March, 2012
Thomson Reuters / Thomson Compumark Raines Feldman

On 8 March 2011 the European Commission published the ‘Study on the Overall Functioning of the European Trade Mark System’ (the Study) by the Max Planck Institute for Intellectual Property and Competition Law (MPI).

Introduction

As between the creator of a work and the public, who should be entitled to control and exploit the work, and for how long? As copyright owners’ properties fall into the public domain, they must secure additional protections for their original works, or face extinction. From a business vantage, owners are growing their works into well-established brands. They create series around stand-alone properties such as books, films and special events. They create cottage industries around separately copyrightable elements of original works such as characters, settings and slogans. And they exploit these original elements in well-run merchandising campaigns. From a legal vantage, these brand owners are thus able to continue to protect original works through registration of these source identifying properties and their constituent elements as trademarks and offering them in commerce as goods and services. This is a major boon to such owners, because unlike copyright law, trademark rights are perpetual so long as the marks are in use. This article focuses on the issues arising from seeking trademark protection to extend the benefits lapsing under copyright law through the lens of legislative intent and recent case law.

Copyright purpose and protection

Copyright law protects original works of art by prohibiting third parties from copying an author’s work without permission. Arising in the Constitution, 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. Under the Copyright Act, the six protections afforded to copyright owners, also known as their “bundle of rights,” include the exclusive right to reproduce, prepare derivative works, distribute, publicly perform live or via digital audio transmission for sound recordings, and publicly display the protected works. The period of protection for these rights is, for recently published works, 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. Upon expiration, protected works fall into the public domain and, the Congressional intent having been satisfied, are free for public use.

Faced with this dilemma, which threatened to eviscerate entire brands built around copyrighted subject matter and the characters, plots, settings, themes, and styles appearing in protected works, there has been a trend toward broader protection for brand owners. Critics argue that this trend tips the scales unfairly in favor of brand owners, limiting creativity and circumventing the very purpose of Copyright protection. The arguments goes that 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. The most recent, and dynamic, outcry against aggressive protections for branded content occurred on January 18, 2012, when millions of Americans showed their opposition to the Protect IP Act (PIPA) which was before the Senate, and the Stop Online Piracy Act (SOPA), which was before the House, on the basis that these bills would censor the Internet and slow economic growth in the U.S. as a whole.

Brand owners, on the other hand, contend that Copyright protection is not absolute and that the fair use doctrine provides an ample inroad for educational, non-commercial and artistically transformative uses of creative works, including the right to comment on or criticize the works.

Brand owners argue that the fair use doctrine equitably addresses the concern that broad protection will stifle creativity by creating a statutory exception for legitimate uses of protected works without impairing their ability to effectively combat piracy. Piracy is a serious social concern, which potentially costs U.S. businesses hundreds of billions of dollars annually.

As between the owners of creative works and third parties, the owners are arguably best suited to maintain the quality of the works because they have the highest interest in ensuring quality control based upon their investment and maintenance of the work as a brand. Strangers to this process, who have no skin in the game, have no such incentive, so they are more likely to create lowquality reproductions or merchandise which harms brand value and the public.

Therefore, the creators and the public are best served when the owners of the branded content maintain control over it.

One way to maintain such control is under trademark law.

Trademark Law as a means for extending protection of branded content

Trademark protection is a creature of statute, created by the Lanham Act, and intended to 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. For example, a pictorial work may be protected by copyright, but may also be a protected mark if it is used in commerce. Such overlapping protection is most often at issue when creative works become the logo or signature mark for a product. Examples of overlapping protection may be found in character names, apparel1, and furniture design. While the copyright protection on such works is limited in duration, trademark protection is perpetual so long as the mark is in use. Trademark law has, therefore, become a significant means for extending protection of copyrighted works. Critics argue that allowing trademark law to protect works that have lost their copyright protection essentially creates an end-run around copyright’s durational limits. This argument articulates that Copyright was not intended to be perpetual, and at some point, the public should have free and open access to work.

Congress and the Courts largely disagree.

Although copyright and trademark are separate bodies of law, the subject matter of each is not mutually exclusive. Courts have routinely held that the 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. Legislative debate surrounding various amendments to both acts further indicates that a lapse in copyright protection in no way means that all trademark protection is necessarily lost. The reasoning behind allowing overlapping protection stems from the underlying policy behind each source of protection. Copyright protects an author’s right to exploit a work, whereas trademark protects the public from confusion. Therefore, 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.

However, some courts have been wary of applying the Lanham Act to copyrighted works. For example, in a 2000 case, 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, arguing that the short film was a trademark. The court held that the short film did not constitute a protectable trademark, and therefore there was no violation. The court reasoned that the film was appropriately the subject of copyright, but did not meet the secondary meaning requirement to be capable of trademark protection. The court took great pains to articulate that trademark protection cannot be used to extend copyright protection for works that have become public domain.

It is important to note that in The Three Stooges case, the court suggested that, had New Line altered the short film at issue from its no longer protectable original form, there might have been a different outcome.

This distinction is illustrated in the Eighth Circuit’s holding 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. When T-Shirt manufacturer AVELA attempted to use images from public domain posters as graphics on their apparel, MGM sued. Although MGM conceded that the posters were in the public domain, they argued that the use of the images potentially infringed valid copyrights in derivative works made by MGM, and based on the original film’s characters. Surprisingly, the court agreed, reasoning that AVELA had used images from the public domain stills, but had altered them so that they would look closer to the depictions in the actual film. Note that in this case, AVELA used the images out of their original context, an important distinction from The Three Stooges case above.

Limitations

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.

In sum, 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 and is the only way to protect a copyrighted work beyond the limited duration provided by Congress.

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