Copyright Deadlock in Trademark Cases

Gökçen Uzer Çengelci,

Did you know that works subject to copyright protection can theoretically also be used as trademark signs? In most countries artistic work, a title of a book, or even a character name, can be used as a trademark - unless it falls under the provision of “descriptiveness and distinctiveness”.

This overlapping function can give rise to disputes between copyright and trademark rights. Disputes sometimes originate from an assertion as to whether these signs are distinctive and non-descriptive enough to indicate the origin in trade. For example, certain characters or titles are so well-established and well-known, they are no longer capable of being able to give any meaning other than that of a particular story. So, the crux of the matter is whether the sign is capable of indicating an origin in trade. For example, in the EUIPO Board of Appeal Decision R 1856/2013-2 dated 25/02/2015, the PINOCCHIO trademark has been accepted as non-distinctive and descriptive for films and printed matter and thus was rejected in class 9 and 16. However, the application was accepted for several merchandising products covered in other classes, namely: 3, 9, 14, 18, 20, 21, 24, 25, 28, 30.

A Powerful Tool for Copyright Owners

TrademarkNow enables copyright owners to understand the level of descriptiveness of your target copyrighted work when it is subjected to an intended application under our platform’s brand strength section. The statistics provided in the report show you the frequency of use of the intended denomination – that is, how many existing trademarks within your searched-for regions and product classes match. This is revealed as either an exact match or as containing the component as a prefix or suffix. The report is very helpful and gives you a sense of the relative uniqueness of your mark.

Spotlight on Parodies: Chewy Vuiton

Another hot topic for trademark vs copyright disputes is the use of copyrighted work as a parody. The balance between freedom of expression and property is a hot debate for almost every country. An example of a parody story from the US is Louis Vuitton Malletier vs Haute Diggity Dog. The Court of Appeals for the Fourth Circuit in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007), held that “Chewy Vuiton” for dog chew toys did not infringe or dilute the trademarks of Louis Vuitton, the high-end handbag manufacturer. Parody aside, these kind of disputes are not funny for the copyright owner at all...

But how serious a risk do copyright claims pose to trademark applications? Although the level of risk may depend on case merits, due to a broad copyright “subject matter” definition, copyright claims may go even broader. Attesting this broad scope, in the US, Alfonso Ribeiro's 'Carlton Dance' legal dispute with Epic Games showcases copyright dilemma again in trademark disputes.

An Epic Battle

To summarize the facts, Epic Games were previously accused of infringing copyright by Alfonso Ribeiro for adding the 'Carlton Dance' to their popular online game Fortnite. However, after it was revealed that the U.S Copyright Office had rejected  Ribeiro’s attempts to copyright the dance move, he decided to drop his legal action.

This decision now poses the question as to whether anyone can have property rights on a dance step. What are the limits of copyright protection - especially when they are involved in trademark disputes? Can a dance move be considered original enough to be protected? Unfortunately, for copyright protection, there is no standard for “international minimum originality”. In this regard, the creation is defined as the author’s own original creation (in other words, the work is not a simple copy) and this is the most commonly used criteria for the majority of countries.

Unregistered Signs

It is always good to bear in mind that unregistered signs that are used in trade (like copyrights or trade names etc.,) may pose a risk to your application. In this regard, a quick NameCheck search returns relevant information, sourced from the Internet, that is related to your intended trademark.  In addition, our industry results also contain many different other types of data, including App Store results, Company Names and much more.

Industry results NameCheck


Starting Point  

The take-home message for today is that copyright protection is the one thing that trademark applicants need to evaluate before any trademark application. This should be examined not only within the scope of registries but also within the broader context of industry results.  Thus the thorough evaluation of any sign to be used in trade is a crucial starting point in your trademark application journey.

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