INTA Research

Report Published on Countries That Protect Copyrights in Logos

Published: September 1, 2018

Alicia Morris Groos Norton Rose Fulbright U.S. LLP Austin, Texas, USA Copyright Committee - Logos and Copyrights Subcommittee

In June 2018, INTA’s Copyright Committee’s Logos Subcommittee published a survey of jurisdictions that protect copyright in logos on the INTA website. The Subcommittee considered whether copyright might be an effective means of protecting and enforcing rights in logo trademarks internationally. Working with in-country associates in numerous jurisdictions worldwide, the Subcommittee developed a chart that compiles information helpful to those evaluating all means of protecting and enforcing rights in their logos. Specifically, the chart covers how copyright protection is achieved in each country, the scope of such protection, whether law exists applying copyright protection to logos, how ownership is determined, whether registration is possible, and what the advantages and disadvantages are of using copyright law to protect and enforce rights in logos as compared to trademark law.

The survey was conducted during the 2016‒2017 term in conjunction with other committee work related to the intersection of copyrights and trademarks. For example, INTA’s Board of Directors accepted a resolution on September 12, 2017, sponsored by the Logos Subcommittee, titled “Copyright Protection for Trademarked Material.” The resolution favors the position that copyrights and trademarks are separate disciplines, such that protection of a creative work of art such as a logo under one discipline should not hinder the ability of the artwork to receive protection under the other discipline.

The resolution underscores that “copyright and trademark are two separate legal doctrines with different histories, purposes, and remedies” to support the conclusion that logos should not be denied copyright protection merely because they serve as trademarks, or vice versa. Because the purpose of copyright law is to protect and incentivize the production of original creative works, while the purpose of trademark law is to prevent consumer confusion and unfair competition, the two doctrines are not mutually exclusive. Owners may find value in protecting their logos under both doctrines. Where a logo or other visual work qualifies as an original work of art otherwise deserving copyright protection, it should not be disqualified merely because it also serves as a source identifier.

Nevertheless, at times, original creative works such as logos may be denied copyright protection (and, in the United States, copyright registration) because they also serve as trademarks. Members of the Logos Subcommittee identified instances where logos that would meet the low standard for originality were nonetheless refused registration by the U.S. Copyright Office. Such rejections often mentioned that the applicant should attempt to seek federal trademark protection instead. As a result, the Subcommittee became concerned that because a creative work of art might also function as a trademark, it had a lesser chance of being registered. The resolution discusses the reasons for this differing treatment, but points out that the leading U.S. treatises as well as U.S. courts recognize that logos and other original creative works should not be denied copyright protection simply because they may also function as trademarks.

The position outlined in the resolution is consistent with international law. The resolution highlights the different legal rationales and standards applied to copyright and trademark law in the United States and in certain other jurisdictions, including Brazil, the European Union, France, Germany, India, and Thailand. The concept of treating copyright and trademark as separate doctrines is consistent with the law in these countries.

Further, denying protection for original creative works such as logos places the owner of such creative works at a significant disadvantage in protecting its valuable intellectual property in the United States. Without a copyright registration, the owner of a logo may not be able to file a copyright infringement lawsuit, claim prima facie validity of its copyright, or obtain statutory damages or attorney fees. Additionally, that owner often may face more difficulty in asserting claims under the DMCA (the Digital Millennium Copyright Act, a U.S. statute) than if he or she had a registered copyright. The resolution points out that copyright can also benefit owners of logos around the world, as the Berne Convention for the Protection of Literary and Artistic Works affords copyright holders more cross-border protection than is often available to trademark holders.

The Copyright Committee was formed in 2015. As part of the process of addressing the overlap of copyright and trademark legal issues, the Copyright Committee met with the U.S. Copyright Office to discuss issues of concern, including the issue of logo registration. The Copyright Office was interested in hearing from INTA. Although the Copyright Office did not believe it treated logos less favorably in policy or practice, it agreed to be alert to this issue. Significantly, it also agreed to start publishing Board of Review decisions regarding copyright refusals, to make it easier for lawyers to understand the bases for such actions.

This resolution is INTA’s first on the subject of copyright law. Read the full text of the resolution here.

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. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association