U.S. Copyright Office Shows Reluctance to Register Logos
Published: November 15, 2019
Mark Kaufman Kaufman & Kahn, LLP New York, NY, USA
Tara Vold Pirkey Barber PLLC Tysons, Virginia, USA
David Pacheco Caterpillar, Inc. Peoria, Illinois, USA Copyright Committee - Logos and Copyrights Subcommittee
Alicia Morris Groos Norton Rose Fulbright Austin, Texas, USA Copyright Committee - Logos and Copyrights Subcommittee
In an attempt to maximize available intellectual property (IP) protection for brand assets, many practitioners of U.S. trademark law will seek both trademark and copyright registration for logo artwork. As original creative expressions of ideas can be protected by copyright law, a creative design that is used for a trademark could also be protected by copyright registration.
By a resolution dated September 12, 2017, sponsored by the Logos Subcommittee of the Copyright Committee, INTA resolved “that it is the position of the International Trademark Association that whether an original creative work of art, such as a logo, also acts as a source-identifier worthy of trademark protection, should not hinder the ability of the artwork to receive copyright protection.” As a result of that resolution, the Logos Subcommittee of the Copyright Committee has reviewed the current state of affairs regarding the registration of trademark logos by the U.S. Copyright Office (the Office).
U.S. practitioners have noted that the Office-which is separate from the United States Patent and Trademark Office-often has deemed specific trademark logos ineligible for copyright registration. Within six months of the Office’s issuing a refusal to register, an applicant may request the examiner in the Registration Program at the Office to reconsider a refusal to register. If such reconsideration does not change the result, the applicant may seek further reconsideration by the Review Board of the Office (the Board). The Board’s responses to requests for reconsideration historically have been unavailable to the public.
At INTA’s request, INTA and the Office met in 2016 and again in 2018 to discuss the Office’s policies and procedures for registration of copyrights in works that are also logos. Participants from INTA also sought greater clarity on the types of logos that the Office deemed to be registerable as copyrights. Following the first meeting, the Office kindly responded by providing, for the first time, online access to all of the letters from the Board. The letters set forth the Board’s responses, starting in 2016, to requests for reconsideration of initial refusals to register copyright applications issued by the Office’s Registration Program. The Board’s letters can be found here. The letters addressed herein are all found in the category of “Labels and Logos.”
As of March 2019, the category of “Labels and Logos” consisted of 35 letters. In 31 of those responses, the Board affirmed the Registration Program’s refusal to register (with one of those refusals, the American Airlines “Flight Symbol” logo, being reversed pursuant to a highly unusual reconsideration by the Office’s Review Board).
The authors of this article do not know, and do not have access to, all of the initial, uncategorized applications that were filed for logos. So, this article does not address the applications for the registration of logos that did not reach the Board’s review, either because the Office’s Registration Program approved those applications for registration or because the applicants did not appeal their refusal. Rather, the following addresses the applications that were refused and appealed since the time period identified above. Here, a spreadsheet sets forth, in reverse chronological order, the following: a link to each such letter; the year of the letter; the Board’s categorization of the work that is at issue; an analysis of the Board’s decision; an image of the work at issue; and the cases and other authorities cited by the Board.
In each letter affirming refusal, the Board determined that the work at issue was insufficiently original or creative. The letters indicated some or all of the following additional factors which appeared to contribute to affirming the Registration Program’s refusal to register copyright in the logo: (a) the work was identified as a logo or symbol, sometimes in the work’s title; (b) it consisted of standard geometric shapes; (c) it consisted of letters, numbers, or punctuation; (d) any comparison to prior successful registrations was irrelevant or distinguishable; and/or (e) any assertion of substantial creative effort (“sweat of the brow”) was irrelevant.
To some extent, the data may be skewed because it only includes those response letters that related to designs identified as “Logos and Labels.” Nevertheless, it appears that (at least until December 2018, when the American Airlines logo was reconsidered and refusal was reversed) the Office is unlikely to grant registration for works that it categorizes as “Logos and Labels.” Most of the response letters use virtually the same analysis-sometimes almost verbatim-and cite to many of the same statutory provisions, regulations, cases, and the Office’s Compendium of U.S. Copyright Office Practices, Third Edition.
In at least one letter, the Board noted that in affirming the refusal to register, it was seeking to avoid extending copyright protection to “miniscule variations of familiar symbols” which might put “a weapon of harassment in the hands of mischievous copiers.” See Review Board of the U.S. Copyright Office letter dated January 31, 2018, regarding “LIV Logo.” While such goal is understandable, some of the reasoning espoused by the authors of the Board’s letters is arguably counterintuitive. For example, all of the letters refusing registration cite to the U.S. Supreme Court decision in Feist, noting that although “Only a modicum of creativity is necessary,” some works (such as the alphabetized telephone directory at issue in Feist) fail to meet even this low threshold. See Feist Pub’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). Such reasoning seems misplaced in most of the referenced cases in which the subject works arguably involve much more sophisticated and creative artistic expressions than an alphabetized phone directory. Further, the Board often classified designs with irregular shapes as “mere geometric shapes” that were “typical” in a particular field. A review of the designs themselves arguably should have communicated to the Office a variety of choices made in the course of their creation. See, for example, drawings in the accompanying spreadsheet for the American Airlines “Flight Symbol” logo, the Twitter, Inc. “Periscope Logo with Circle,” the Antti Porkka “Hansel” logo, the NextEra Energy “Meatball (Energy Burst)” logo, and the InnerSea Discoveries LLC “UnCruise Whale Tail Logo.”
The Board’s letters often state that:
Copyright Office registration specialists (and the Board) do not make aesthetic judgments in evaluating the copyrightability of particular works. The attractiveness of a design, the espoused intentions of the author, the design’s visual effect or its symbolism, the time and effort it took to create, or the design’s commercial success in the marketplace are not factors in determining whether a design is copyrightable.
See Review Board of the U.S. Copyright Office letter dated January 31, 2018, regarding Id Software, LLC’s “UAC Triangle Design.” However, it seems that the determination that many of these works do not have sufficient “creativity” to warrant copyright protection is, at least in part, a subjective and aesthetic decision.
A work that consists entirely of typeface variations or basic geometric shapes might justifiably be refused registration-for fear that the registrant could, for example, claim that anyone else who used a triangle was infringing on the registered work. That being said, it is sometimes difficult to understand how a sophisticated design could be deemed to lack sufficient creativity just because it is “simple.”
These decisions by the Office are especially relevant to owners of logo designs because simplicity is one of the hallmarks of an effective trademark logo. Consider also a Rothko painting consisting of simple rectangles and often a single color with minor variations. No one would say a Rothko lacks creativity. Yet, the Office’s strict application of rules around simple, common shapes would seem to lead to the untenable result that an innovative Rothko production would be deemed to lack sufficient creativity to be registrable by the Office.
The American Airlines Logo: A Sea Change or an Exception?
On October 15, 2018, American Airlines sued (but never served) the Registrar of the Copyright Office over the Office’s refusal, as affirmed by the Board, to register the American Airlines “Flight Symbol.” American Airlines, Inc. v. Temple, 4:18-cv-00843. In its complaint, American Airlines requested the U.S. District Court for the Northern District of Texas to overrule the Board’s decision, which American Airlines called “arbitrary, capricious . . . and an abuse of discretion.”
Taking issue with the Board’s conclusion that the Flight Symbol was “comprised of basic geometric shapes” which “fall below the threshold for creativity” under Feist, American Airlines highlighted in its complaint the subtleties of the Flight Symbol design and the awards and accolades received, ultimately asserting the subject design “easily possesses the modicum of creativity necessary to qualify for copyright protection.” American Airlines further noted “the Copyright Office has registered multiple designs that do not approach the creativity and uniqueness embodied in the Flight Symbol.”
Shortly after it was filed, the lawsuit was withdrawn (without prejudice to bringing the lawsuit again) when the Board agreed to use its discretionary authority to reconsider the “rather anomalous” matter.
The Board conducted what amounted to a third review, based primarily on supplementary materials provided by American Airlines (namely a higher resolution copy of the Flight Symbol design), which “illustrated additional creative choices and details that were not viewable in the original deposit material.” Most important to the Board, it appears, were the 3D elements of the Flight Symbol logo, which became more apparent through the shading elements in the higher resolution image. See Registration Decision Regarding American Airlines Flight Symbol; Correspondence ID 1-28H4ZFK; SR 1-3537494381 (Dec. 7, 2018). (A hyperlink to the Board’s final decision, allowing registration of the American Airlines logo, is available in the accompanying spreadsheet, along with hyperlinks to each of the other Board letters.) Specifically, the Board noted that the shading elements transformed the simple shapes, causing “the bird-head element to appear to be above and separated from the aircraft tail.”
Brand owners seeking copyright registration for their logos should take note of the American Airlines strategy and resulting decision, including the fact that ultimately the higher resolution deposit material was given credit for tipping the scales in favor of registrability. The decision presents many interesting issues for practitioners seeking to advise their clients on whether to pursue copyright registrations for logos. To that end, we note the following takeaways for practitioners:
- Variations of font or typeface-alone or even in combination with other elements-will virtually never be deemed registrable.
- Do not expect the Board to undertake discretionary reconsiderations of its decisions with any regularity. The Board made it very clear in the additional American Airlines reconsideration that it is not adding an additional level to its strict two-tier appeal procedure.
- If the applied-for work includes basic shapes, make sure to submit a deposit which consists of the highest resolution quality so that any creative choices made in connection with those shapes are clear to the examiner.
- Marketing awards (like time and effort, attractiveness, symbolism, intention of the author, and commercial success) are irrelevant to the Office. The Board emphasized that it reached its conclusion without any regard to the work’s public reception (such as American Airline’s receiving awards for creative advertising).
- For works containing common colors and shapes, the resulting protection is quite thin, protecting only the work’s original and creative elements “against only virtually identical copying.”
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2019 International Trademark Association
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