Can a corporation protect its logo by copyright as well as by trademark law?

Traditionally, when one thinks of works protected by the law of copyright, one thinks of substantial works of authorship such as a novel, a song or a painting. And, indeed, among the required elements to establish a copyright in a work is that the work contain a certain degree of originality and creativity.

It has been recognized that a corporate logo used as a trademark is nonetheless copyrightable where the logo qualifies, in and of itself, as pictorial or graphic work that meets the general requirements of the law of copyright. See 1 McCarthy on Trademarks and Unfair Competition § 6:18 (4th ed.). Courts have found that a corporate logo can incorporate a “creative drawing” which is a creative work of the sort at the “core” of those types of works protected by the Copyright Act. Bouchat v. Baltimore Ravens Limited Partnership (4th Cir. 2010) 619 F.3d 301, 311.  Indeed, it has been observed that “pictures and logo designs used as marks are no less pictures and designs merely because they appear on labels and in advertisements.” McCarthy, supra, at § 6:18; see Bleistein v. Donaldson Lithographing Co. (1903) 188 U.S. 239 (a pictorial work is no less a subject of copyright protection because it is used to sell goods).

To be copyrightable as a pictorial, graphic, or sculptural work [pursuant to 17 U.S.C. § 102(a)(5)], a work “must embody some creative authorship in its delineation or form.”  37 C.F.R. § 202.10. The logo must demonstrate “artistic features” above and beyond serving as a mere identifier of the source of goods or services.  See Fabrica Inc. v. El Dorado Corp. (9th Cir. 1983) 697 F.2d 890, 894 (pictorial, graphic, or sculptural works must “stand alone” as “works of art,” with “artistic features” separate and apart from their utilitarian purpose); see also John Muller & Co. v. New York Arrows Soccer Team, Inc. (8th Cir. 1986) 802 F.2d 989, 990 (logo for the New York Arrows soccer team lacked the minimum requisite level of creativity to be considered a “pictorial, graphic or sculptural work”).

Even tradedress can be copyrightable where it rises to the level of a unique, creative work of authorship. See Reader’s Digest Association, Inc. v. Conservative Digest, Inc. (D.C. Cir. 1987) 821 F.2d 800, 806 (Reader’s Digest has combined and arranged common typeface and other elements to create a unique graphic design and layout.)

If your company is ever in a position to have to be thinking about pursuing an infringer where trademark protection of a logo is problematic for some reason or perhaps insufficient to bar the particular infringing use at issue, it may be advantageous to consider other theories such as copyright. At the very least, this is a reminder of the need for “creative” thinking about the nature and source of intellectual property protections that may yield alternative sources of protection in many circumstances.

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