Okay, first let me start by saying I'm fairly familiar with the law. I've had to be at my numerous positions over the years. Saying that, the law can be tricky so I want to get some opinions. Not necessarily legal advice, unless someone can point me to something that handles this type of situation. Situation follows:
The situation:
Lets say Nike (I don't think this is Nike's but I'm using them as an example) has created and printed the above design. Now obviously this has a few licensed marks within the design. The phrases 'Big Ten' and 'Ohio State Buckeyes' are both registered trademarks as well as the logos beginning used for both the Big Ten and Ohio State. Does Nike have the ability to claim copyright on the design as a whole to avoid other companies from printing the exact same design or is that not possible due to the inclusion of these trademarked phrases/logos?
The arguments:
I personally feel that Nike can/should be able to claim copyright to the design as a whole in order to protect their motif/design. They would not be able to print this without it being licensed thru the university, however they could be able to go after anyone who printed this since they claim copyright.
On the flip side, my employer says that Nike cannot claim copyright on this because it includes these trademarks. Therefore our company sees nothing wrong in duplicating anything anyone else has done as long as it has licensed trademarks within the design and we get it licensed thru the university. I'm not sure how the law handles this but I personally see it as wrong.
The law:
Currently section 202.10 of Title 37 of copyright law states the following:
Title 37, 202.10 said:202.10 - Pictorial, graphic, and sculptural works. (a) In order to be acceptable as a pictorial, graphic, or sculptural work, the work must embody some creative authorship in its delineation or form. The registrability of such a work is not affected by the intention of the author as to the use of the work or the number of copies reproduced. The availability of protection or grant of protection under the law for a utility or design patent will not affect the registrability of a claim in an original work of pictorial, graphic, or sculptural authorship. (b) A claim to copyright cannot be registered in a print or label consisting solely of trademark subject matter and lacking copyrightable matter. While the Copyright Office will not investigate whether the matter has been or can be registered at the Patent and Trademark Office, it will register a properly filed copyright claim in a print or label that contains the requisite qualifications for copyright even though there is a trademark on it. However, registration of a claim to copyright does not give the claimant rights available by trademark registrations at the Patent and Trademark Office.
(a) In order to be acceptable as a pictorial, graphic, or sculptural work, the work must embody some creative authorship in its delineation or form. The registrability of such a work is not affected by the intention of the author as to the use of the work or the number of copies reproduced. The availability of protection or grant of protection under the law for a utility or design patent will not affect the registrability of a claim in an original work of pictorial, graphic, or sculptural authorship.
(b) A claim to copyright cannot be registered in a print or label consisting solely of trademark subject matter and lacking copyrightable matter. While the Copyright Office will not investigate whether the matter has been or can be registered at the Patent and Trademark Office, it will register a properly filed copyright claim in a print or label that contains the requisite qualifications for copyright even though there is a trademark on it. However, registration of a claim to copyright does not give the claimant rights available by trademark registrations at the Patent and Trademark Office.
As you see that 'A claim to copyright cannot be registered in a print or label consisting solely of trademark subject matter and lacking copyrightable matter.' in the first line of (b).
What are your thoughts on this interpretation of this line?
'A claim to copyright CAN be registered in a print or label consisting of SOME trademark subject matter and CONTAINING copyrightable matter.'
This would basically cover the design above as being able to be claimed as copyright, right? Since it contains some trademark subject matter however also contains more graphics/design elements that could be claimed as copyright on their own.
What are some thoughts on this and if anyone could help clarify this, that would be great. Maybe some of you have ran into this type of situation in your careers and would love to hear what might be the legal solution to the situation.
Until then I'm the one designer here that refuses to exactly duplicate anyone else's printed designs. I'd love to say I'm correct on this, if not legally, at least morally.
Thanks guys.
Hi Andru,
I agree with you completely. The key words for me are bolded below:
(a) In order to be acceptable as a pictorial, graphic, or sculptural work, the work must embody some creative authorship in its delineation or form......
(b) A claim to copyright cannot be registered in a print or label consisting solely of trademark subject matter and lacking copyrightable matter.
The t-shirt does include creative authorship (your design) and does not solely consist of trademark subject matter, once again...it consists of your design work too, which represents the copyrightable matter.
It would seem the intention of (b) is that you cannot simply get permission from say Coca-Cola and place a Coke bottle on a t-shirt and then say no-one else is allowed to do the same. If they obtain permission from Coca-Cola, they too can place a bottle in a t-shirt. However, if you incorpotate the Coke bottle into your own design work in which you own the copyright, they cannot copy your design as well and put that on a t-shirt, unless, of course, they enter an agreement with you for that permission. If they did use your design, naturally you have no claim against them for using a Coke bottle, but you have a claim against them for copying your design without permission.
This is just my interpretation of course and I do not work in a legal field. I did work in insurance for 13½ years.
Best regards,Brian.
With this said use of a copy protected logo without permission is always a no go.
Muhammad Ali sued a local company for using his trademark on a T Shirt as did the candy bar on the shirt. The artist was absolved because the ownership of the design was claimed by those who issues the commission.
I'd be worried about treading on Nike's foot. Most copyright suits are predatory, with no intention of ever getting to court. Sad but true, but if you can't afford an equivalent army of attack lawyers, you'll be forced to settle just to avoid further antagonism.
Legally, the work IS copyrightable, according to Section 103, paragraph b
http://www.copyright.gov/title17/92chap1.html#103
(b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.
Makes sense to me, there are some legit on line sites that distribute free to use corporate logos.
David Milisock said: With this said use of a copy protected logo without permission is always a no go.
Absolutely!! That's why in my response where I gave the Coca-Cola bottle example...I used the words get permission from Coca-Cola......