Continuing our primate theme for this month's newsletter, we thought this would be as good a time as any to remind our readers as to the important distinction between copyrighted artistic works, and use of elements from those works as trademarks.

By way of illustration, several years ago a Kansas winery attempted to register the trademark names associated with the Wizard of Oz, for wine – including FLYING MONKEY WINE. Warner Brothers opposed registration based on a number of trademark applications and registrations for marks referencing elements from the Wizard of Oz book, covering merchandise.

The applicant unsuccessfully put forth the argument that since the Warner Brothers' trademarks referenced characters, themes, concepts, and drawings taking directly from the book, which was published in 1899 and is now in the public domain, Warner Brothers should not be able to claim trademark rights in these elements. It appears from the record that FLYING MONKEY WINE never got off the ground.

This case serves an important reminder of the difference between trademarks and copyrights – particularly in the creative context. Even though certain characters, locations, and elements appear within a copyrighted artistic work – such as Disney's iconic Mickey Mouse – the expiration of the copyright in the artistic work does not necessarily mean that the characters within are available for use by others in a trademark sense. In other words, even if the trademark you plan to adopt is adapted from a public domain creative work, do not assume it is available for use and registration as a trademark. The usual search and clearance process should be undertaken to ensure a mark is available for use and registration.