Copyright Committee Positions INTA as a Leader in Copyright Issues Around the Globe

Copyright rights include the exclusive right to create and publish copies of an original work. In addition to written works, copyright can apply to artistic works, such as drawings, photographs, or graphic designs. These artistic works can be incorporated into trademarks. INTA launched the Copyright Committee in 2016 with the goal of elevating the Association’s voice and influence on important copyright policy issues around the globe.

Dale Cendali (Kirkland & Ellis LLP, USA) was the Founding Chair of the Copyright Committee and the recipient of INTA’s 2022 President’s Award for her work on this front. In an extraordinary achievement, she took the important first steps to help change a U.S. Copyright Office rule that disallowed copyright protection for designs that serve as logos.

In recent years, the Association has established its position on a variety of copyright-related issues through a number of Board Resolutions:

• S. Copyright Law and U.S. Trademark Law Termination of Transfer Rights (November 2021)
• Fair Use in U.S. Copyright Law (November 2019)
• Low Bar to Copyright (May 2019)
• Copyright Registration as a Precondition of Infringement Suit (November 2017)
• Copyright Protection for Trademarked Material (September 2017)

The Copyright Committee also played an instrumental role in INTA’s first U.S. Supreme Court amicus brief on a copyright issue filed in September 2018 in the case of Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC .

In this term, the Copyright Committee is comprised of eight subcommittees, focusing on policy, enforcement, international and legislative issues, fair use/fair dealing, logos and characters, designs, artificial intelligence (AI), and emerging copyright issues. In line with INTA’s 2022–2025 Strategic Plan, the Copyright Committee develops and advocates the Association’s policy on the impact of copyright law and enforcement on trademark rights. The Committee monitors and analyzes copyright cases, legislation, and regulations in various jurisdictions, and proposes policy recommendations to the Board. Committee work includes writing reports and submissions, interacting with copyright organizations, and advocacy in conjunction with relevant committees and staff.

The Copyright Committee also serves as a subject matter resource to other INTA committees and works collaboratively in overlapping areas, such as designs and emerging issues. The Committee also develops educational materials such as webinars, practitioners’ checklists, programming at INTA events, and INTA Bulletin articles on copyright legislation. Recent articles include “Use of Third-Party Brands in Copyrighted Works,” “When Social Media Influencing Goes Wrong,” and “ “Unintended Consequences Part 2: What the Phillie Phanatic Litigation Teaches About Copyright and Trademark Rights in Mascots.”

Some of the Committee’s accomplishments this term included the following:

• Expanded the Sports Mascot Creation and Clearance Practitioners’ Checklist (first published in 2019), which walks the reader through the various steps and considerations involved in adopting a sports (or other) mascot. The update included a number of changes reflecting the copyright reversion issues explored in a recent U.S. federal court litigation involving ownership of the Phillie Phanatic mascot (The Phillies v. Harrison/Erickson, Inc., the subject of the INTA Bulletin article mentioned above);
• Published the report, Enforcement Strategies for Designs as an Applied Art – Europe;
• Conducted a webinar with Monica McCabe, one of the three judges from the newly formed Copyright Claims Board of the U.S. Copyright Office;
• Contributed to INTA’s soon-to-be published white papers on NFTs and Trademarks in the Metaverse;
• Collaborated in the response to the USPTO/U.S. Copyright Office Federal Register Questions and the U.S. Copyright Roundtables; and
• Produced a soon-to-be published survey on the structure and scope of services of 78 copyright offices around the world.

Our continued work focuses on the following:

• Expanding the trademark focus of INTA’s NFT and Trademarks in the Metaverse white papers to a full coverage of copyright issues;
• Completing surveys and related reports on outputs made by (or by means of) AI systems, comparative copyright and trademark fair use and fair dealing exceptions across 17 categories of use, architecture and the freedom of panorama, combating online piracy of live content, and key copyright organizations’ interest groups that will serve as a resource document for identifying and engaging with policy stakeholders;
• Expanding the survey on the civil enforcement of copyright to 44 jurisdictions;
• Updating the Work for Hire Project;
• Leading a panel discussion of copyright officials from intellectual property (IP) offices in Asia at the 2023 Annual Meeting Live+ in Singapore;
• Developing a Practitioners’ Toolkits related to a design enforcement applied to works of applied art, in collaboration with the Design Committee, and dealing with graphic designers; and
• Preparing a report on the challenges of providing for a presumption of irreparable harm in ex parte injunction cases of alleged copyright infringement.

Emerging technologies raise novel IP issues that may create opportunities to improve and revise copyright legislation. Moreover, the products of many leading brand owners are based on copyrights. For those copyright-focused brands, as well as others whose copyright rights are more tangential to their businesses, it is imperative that brand owners understand the rules for copyright creation, protection, and enforcement. The Copyright Committee assists INTA in copyright-focused education and advocacy to support these members.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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