1. How to Protect
Your Brand
Konrad Gatien
Co-Chair of Brand Development & Content Protection Practice
Stubbs Alderton & Markiles, LLP

2. • Who should be entitled to control and exploit a
work, and for how long?
• Should it be the creator of a work or the public?
Changing Times, Changing
Strategies.

3. • If you are a copyright owner, your intellectual
property will eventually fall into the public
domain
• Must secure additional protections for their
original works, or face extinction
Introduction

4. • Owners are growing their works into wellestablished brands
• Create series around stand-alone properties such
as books, films and special events
 Example: Buffy the Vampire Slayer
◦ Film
◦ Television Series
◦ Spin Offs
Business Perspective

5. • Create cottage industries around separately
copyrightable elements of original works such as
characters, settings and slogans
 Example: Shrek
◦ Movie Franchise
◦ Album Sales
◦ Broadway Musical
• Exploit these original elements in well-run
merchandising campaigns
 Example: Shrek Campaign
◦ McDonald’s Happy Meals
◦ Billboards
◦ TV Commercials
Business Perspective (Con’t)

6. • Brand owners can continue to protect original
works by registering these source identifying
properties and their constituent elements as
trademarks and offering them in commerce as
goods and services.
• Trademark rights are perpetual as long as the
marks are in use.
Legal Perspective

7. • Copyright
• Trademark
• Issues arising from seeking
trademark protection to extend
the benefits lapsing under
copyright law
Road Map

8. • Protects original works of art by prohibiting third
parties from copying an author’s work without
permission.
◦ Found in the Constitution
 Art. 1, §8, cl. 8
◦ “to promote the progress of science and the useful arts,
by securing for limited times to authors and inventors,
the exclusive right to their respective writings and
discoveries.”
• The purpose of Copyright law is to incentivize
authors to create by
◦ ensuring that they will have the exclusive right to exploit their
works for a limited period of time.
Copyright Purpose and Protection

9. • “Bundle of rights,”
◦ right to reproduce,
◦ prepare derivative works,
◦ distribute,
◦ publicly perform live or via digital audio
transmission for sound recordings
◦ publicly display the protected works.
• The period of protection:
◦ 70 years after the death of author for an original
work and
◦ 95 years from publication or 120 years from
creation, whichever expires first, for works made
for hire.
Copyright Purpose and Protection
(Cont’d)

10. • Upon expiration, protected works fall into the
public domain and, the Congressional intent
having been satisfied, are free for public use.
• Does the copyright owner, who has invested
substantial time, effort and money in creating,
developing, and promoting their original works,
lose all rights in favor of unrestricted public use?
◦ this dilemma threatened to eviscerate entire brands built
around copyrighted subject matter and the characters, plots,
settings, themes, and styles appearing in protected works,
• Trend toward broader protection for brand
owners.
What happens when the copyright
grant expires?

11. • Tips the scales unfairly in favor of brand owners, limiting creativity
and circumventing the very purpose of Copyright protection.
• Broad protection inhibits creativity by limiting the choices available to
artists, and that statutory protection is all-too-often accompanied by
over-zealous, heavy-handed and one-sided litigation in which
individual rights are trampled by leviathan business interests.
◦ Example: Christian Louboutin, S.A. v. Yves Saint Laurent
America, Inc., 778 F.Supp.2d 445, 453 (S.D.N.Y. 2011)
“Placing off limit signs on any given chromatic band by allowing one artist or
designer to appropriate an entire shade and hang an ambiguous threatening
cloud over a swath of other neighboring hues, thus delimiting zones where other
imaginations may not veer or wander, would unduly hinder not just commerce
and competition, but art as well.”
◦ Example: Opposition to the Protect IP Act (PIPA), and the Stop
Online Piracy Act (SOPA), on the basis that these bills would censor
the Internet and slow economic growth in the U.S. as a whole.
Critique of Copyright Grants

12. • Copyright protection is not absolute
• Fair use doctrine provides an inroad for
educational, non-commercial and artistically
transformative uses of creative works, including
the right to comment on or criticize the works.
Counterargument of Copyright
Grants

13. • Owners have the highest interest in ensuring
quality control based upon their investment and
maintenance of the work as a brand.
• Strangers to this process are more likely to
create low-quality reproductions or merchandise
which harms brand value and the public.
• Creators and the public are best served when the
owners of the branded content maintain control
over it.
• This is where Trademark law comes in.
Public Interest

14. • Created by the Lanham Act
• Prevent consumer confusion by protecting marks that indicate a
single source of origin
• Certain works can be the subject of both copyright and trademark
protection.
◦ Example: a pictorial work may be protected by copyright, but may also be a
protected mark if it is used in commerce.
◦ Overlapping protection is most often at issue when creative works become the
logo or signature mark for a product.
◦ Examples:
 character names, apparel, furniture design
• Copyright protection on such works is limited in duration
• Trademark protection is perpetual as long as the mark is in use
 Significant means for extending protection of copyrighted works
Trademark law as a means for extending
protection of branded content

15. • End-run around copyright’s durational limits
• Copyright was not intended to be perpetual
• At some point, the public should have free and open access to
work.
Critique of Trademark Law for Protection
of Copyrights

16. • Separate bodies of law, not mutually exclusive
• Expiration of a copyright does not mean that any
parallel trademark or trade dress protection is
moot, or that the work necessarily enters the
public domain
• Underlying policy
◦ Copyright protects an author’s right to exploit a work
◦ Whereas trademark protects the public from confusion
 If a work has fallen into the public domain, but its use will cause confusion as
to the source of origin, trademark is available to protect the work, and
therefore the public.
Counter: Congress and the
courts disagree

17. • Example:
• THREE STOOGES: In 2000, the owner of a short public domain film featuring The
Three Stooges argued that use of a portion of the film in New Line Cinema’s 1996
feature The Long Kiss Goodnight constituted a violation of the Lanham Act,
because the short film was a trademark.
◦ The court held:
 short film did not constitute a protectable trademark
◦ WHY?
 film was appropriately the subject of copyright
 did not meet the secondary meaning requirement to be capable of
trademark protection.
 Trademark protection cannot be used to extend copyright protection
for works that have become public domain.
◦ BUT
 Court suggested that if New Line altered the short film from its no
longer protectable original form, there might have been a different
outcome.
What about the Lanham Act?

18. • WIZARD OF OZ: Eighth Circuit held that the characters from
the MGM classic The Wizard of Oz may still be within the scope
of copyright protection, despite the fact that both the novels on
which the film was based, and many of the publicity stills
featuring the characters, have fallen into the public domain.
◦ T-Shirt manufacturer attempted to use images from public domain
posters as graphics on their apparel, MGM sued
◦ MGM conceded that the posters were in the public domain, argued
the use of the images potentially infringed valid copyrights in
derivative works made by MGM, and based on the original film’s
characters.
◦ Court agreed
 used images from the public domain stills
 altered them so that they would look closer to the depictions in
the actual film which was not public domain
 used the images out of their original context
What about the Lanham Act? (Cont’d)

19. • Given that trademark may provide the best longterm protection, it is important to understand the
limitations of the dual protection scheme.
• First, trademark law can protect only distinctive
works that are source identifiers.
• In addition, where registration of the mark
threatens to limit the public’s ability to participate
in commerce, the mark is unlikely to be capable
of registration.
Limitations of Trademark Law for
Copyright Protection

20. • Intellectual property owners should not rely on a
single body of law to protect their substantial
investments in their brands.
Registering marks for both copyright and
trademark protection ensures the works will be
given the broadest scope of protection.
• Only way to protect a copyrighted work beyond
the limited duration provided by Congress.
How to protect your brand

21. • One means of achieving distinction is for a
company to create a website that has a unique
“look and feel” that sets it apart from the rest.
This overal visual appearance is known as “trade
dress.”
• Trade dress consists of the specific characteristics
or visual appearance of a product or its
packaging.
• Trade dress protection has expanded to include
magazine covers, store interiors, and websites.
What is Trade Dress in the
Electronic Age?

22. • Elements of trade dress with respect to websites
include:
•
•
•
•
•
•
•
•
•
•
Images
Frames
Colors
Highlights
Orientation
Layout
Graphics
Animation
Borders
Sounds
What is Trade Dress in the
Electronic Age? (Cont’d)

23. • Example Website (Distinctive):
What is Trade Dress in the
Electronic Age? (Cont’d)

24. • Example Website (Distinctive):
What is Trade Dress in the
Electronic Age? (Cont’d)

25. • Example Website (Distinctive):
What is Trade Dress in the
Electronic Age? (Cont’d)

26. • Example Website (Distinctive):
What is Trade Dress in the
Electronic Age? (Cont’d)

27. • Example Website (Non-Distinctive):
What is Trade Dress in the
Electronic Age? (Cont’d)

28. • Example Website (Non-Distinctive):
What is Trade Dress in the
Electronic Age? (Cont’d)

29. • The purpose of trade dress protection is to prevent
marketplace confusion by ensuring that a consumer’s
reliance upon the distinctive features associated with
a single source are not copied and associated with
another business and its products.
• Trade dress is protectable once a substantial number
of purchasers associate a particular appearance with a
single source. One this “secondary meaning” has
been established, the trade dress owner may prevents
others from copying it under the Lanham Act, which
prohibits unfair competition.
Purpose of Trade Dress

30. • A person or business seeking protection must be able
to articulate which elements of its website are
distinctive.
• These elements cannot be “functional,” meaning they
cannot be merely essential to the product’s use. (i.e.,
a unique logo or graphic for this feature)
• The purpose of the requirement that trade dress
consist of specific, articulable, non-functional
elements is to give competitors sufficient notice of
what the protected trade dress is, and to protect
legitimate competition by prohibiting the
monopolization of useful product features.
How do I Establish Trade Dress?

31. • Where online trade dress is at issue, a trade
dress owner’s claims may be dismissed if the
appearance of the websites falls under the
protections of the Copyright Act.
• A website owner cannot seek to protect the look
of its website as both a copyrighted work and
trade dress.
• Owner should be careful therefore in selecting
the elements of its trade dress
Preemption by Copyright

32. Konrad Gatien
Co-Chair, Brand Development
& Content Protection Practice
15260 Ventura Blvd., 20th FL
Sherman Oaks, CA 91403
(310) 746-9810 Direct
kgatien@stubbsalderton.com