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.

Today’s topic is “tacking” and why you need to have at least some awareness of this important concept in the law of trademark.

Imagine Company A has been using a distinctive and well-known company logo on its product for years. Company A then decides to “refresh” its marketing, including rolling out a shiny, updated logo. Does Company A lose any trademark rights it may have established in the old company logo simply by updating its branding?

That is where “tacking” comes in. This concept allows a trademark owner to “tack on” the period of use of an earlier mark to the owner’s use of a subsequent mark where the “two marks are so similar that consumers generally would regard them as essentially the same.” Hana Financial, Inc. v. Hana Bank (9th Cir. 2013) 735 F.3d 1158, 1163-1164, cert. granted, 134 S. Ct. 2842 (2014) and aff’d, 135 S. Ct. 907 (2015); Hana Financial, Inc. v. Hana Bank (2015) 135 U.S. Ct. 907, 910 (two marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two marks that “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”).

If an owner is allowed to tack on to prior use, updating a trademark (such as a tradename, a product slogan or logo style) does not result in abandonment of or loss of priority in the use of the trademark.

Tacking furthers the policy aims of trademark law because it prevents the loss of valuable trademark rights while still allowing for reasonable innovation in the market. As the Ninth Circuit of Appeals explained in its decision in Hana Financial, Inc. v. Hana Bank, a decision recently affirmed by the United States Supreme Court:

“Tacking” is permitted because “[w]ithout tacking, a trademark owner’s priority in his mark would be reduced each time he made the slightest alteration to the mark, which would discourage him from altering the mark in response to changing consumer preferences, evolving aesthetic developments, or new advertising and marketing styles.” … Moreover, “[g]iving the trademark owner the same rights in the new mark as he has in the old helps to protect source-identifying trademarks from appropriation by competitors and thus furthers the trademark law’s objective of reducing the costs that customers incur in shopping and making purchasing decisions.”

Hana Financial, Inc. v. Hana Bank, supra, 735 F.3d at 1164, quoting Brookfield Communications, Inc. v. West Coast Entertainment Corporation (9th Cir.1999) 174 F.3d 1036, 1048.

However, here is the real lesson for the day—the courts have made it abundantly clear that the doctrine of tacking is “exceptionally narrow” and, therefore, you must tread lightly when you endeavor to alter the look or feel of any existing trademarks, especially things like company logos or product slogans. Brookfield Communications, Inc. v. West Coast Entertainment Corporation, supra, 174 F.3d at 1036, 1047-1048. The standard for tacking has been described as “exceptionally narrow” and “exceedingly strict.” The marks “must create the same, continuing commercial impression” and the later mark should not “materially differ from or alter the character of the mark attempted to be tacked.” Id. at 1048. So when the marketing folks come up with all of those great ideas to jazz up the company branding, make sure to give thought to the impact on trademark rights and confer with trademark counsel if necessary.