Copyright and trade marks are two types of intellectual property rights which can apply to creative works. While these rights can overlap, and are often confused, there are differences in the scope of each range of rights.
However, in some cases, trade mark registration is used to extend copyright protection.
In this article we set out some basics about each of these intellectual property rights and explore whether trade mark registration is an effective way to extend copyright.
What is copyright?
Put most simply, copyright is an inherent right in an original creative work[1] which provides the creator with means to stop others from copying their work. Copyright exists for a set period of time. Once copyright in a creative work expires, that work is considered to be available for use in the public domain.
Having a finite period for copyright in an original work benefits the growth of artistic expression and the creative industries. As each work reaches the end of its copyright term, the field of creative works available in the public domain increases. This in turn increases the field of creative works that can be incorporated into, or used as a basis for, new creative works, unhindered by worries about whether the original author might sue for breach of their copyright.
But expiration of copyright is not necessarily an unfettered freedom for the general public to start using every word, character, note, frame or image from an original work.
While copyright is always a right to stop someone copying an original creative work, it is not always clear who owns it and how long it lasts. The answers to these questions depend on several factors including the type of original creative work, the country where it was created, and whether there are licences or ownership transfer. But as a general rule, copyright is attached to the original author, and will eventually finish, creating opportunities for others to freely use the creative work.
However, the freedom to use work in the public domain may be limited by other rights that have been secured for various aspects of creative works previously protected by copyright. These rights might include copyright attached to new renditions of the original work such as films, republications of original books, or registered trade marks held by trading entities for various elements in the original creative work.
What does it mean for something to be a trade mark?
The term “trade mark” refers to a sign that operates as a badge of origin for the source of products or services.
Using a t-shirt as an example, the tag inside the neck operates as a badge of origin and shows the consumer who made the t-shirt. The print on the front of the t-shirt, however, may not provide any information about the item. The print could be a fanciful image or words that do not relate in any way to the source or origin of the t-shirt.
Trade marks can be registered in one or more of 45 different classes or areas, which group together similar goods or services. The owner of a registered trade mark has the exclusive right to use their trade mark word or image for the goods and services described in their trade mark registration. Trade mark registrations can be renewed indefinitely and thus the registration has the potential to never end, resulting in an ongoing and exclusive right to use the trade mark on the goods and services described.
But it is important to bear in mind that if a sign does not operate to connect a product or services to their source, chances are, it is not being properly used as a trade mark.
Intention to use as a trade mark is a requirement for a valid registration
In New Zealand there is no requirement to show that a sign is used as a trade mark to secure a trade mark registration[2]. However, the Trade Marks Act requires that an applicant for registration of a sign should have a genuine intent to use the trade mark on the goods and services described for the registration to be valid[3].
As well as looking at how a sign is used, the breadth of goods and services described is a key consideration in assessing whether or not the sign is being properly used as a trade mark.
For example, if a registered trade mark owner is using a trade mark on shoes, it should rightly have rights to prevent other parties using the same or similar trade mark on the same or similar goods. But it does not necessarily follow that the trade mark owner should also be able to stop someone using the same or similar mark on dissimilar goods, for example, animal food, if there is no commercial conflict.
Claiming an excessively broad range of goods and services may help the registered owner deter other traders, but such a broad claim may mean the owner has no genuine intention to use the sign as a trade mark on any or all of the terms covered.
Is a lack of intent really an issue?
A claim to a broad range of goods and services can be an indication that there is no genuine intent from the registered owner to use the trade mark on all items covered by an application for trade mark registration. That application may then be successfully opposed on the basis that the owner has no genuine intention to use the sign as a trade mark on the goods and services claimed.
Further, any registration secured without an intention to use the sign as a trade mark at the time of filing will be immediately vulnerable to an application for declaration of invalidity. The flaw in filing with a lack of intention cannot be remedied, and the resulting registration can be found invalid many years later.
Therefore, while trade mark registrations can look like a good tool to extend copyright in creative works, it is by no means a foregone conclusion that these trade mark registrations are valid and enforceable.
Consider WINNIE THE POOH
The works of AA Milne are a good example of how rights in creative works can result in different copyright terms and separate registered trade marks:
AA Milne died in 1956. Under New Zealand law, inherent copyright expires 50 years after death of the author[4]. On the face of it, this would include Winnie the Pooh.
But, the book Winnie the Pooh published in 1926 would have its own copyright period attached to the typographical arrangement and images – the copyright in these elements expire at the end of 25 years from the end of first year of publication[5]. Copyright in other works by AA Milne published or re-published at later times would expire on different dates.
Adaptations of AA Milne characters created by other authors (for example, Disney’s red-shirted version of Winnie the Pooh) attract separate copyright with different expiry terms.
In addition to these different copyright terms, variations and adaptations of AA Milne’s works and character representations are protected by trade mark registrations. Of particular note, Disney Enterprises, Inc holds a portfolio of trade mark registrations covering various characters for a range of goods and services. As long as Disney Enterprises, Inc is providing the goods and services described under each registered trade mark, then those registrations should be considered valid and enforceable, and a potential barrier to any future use of elements from AA Milne’s original works regardless of whether copyright has expired.
Any person wishing to use AA Milne’s work now will need to understand and work around the network of existing intellectual property rights to avoid facing a legal objection.
How can I safely use a creative work in which copyright has expired?
The key to knowing if you can use a creative work is to conduct proper due diligence on the underlying rights.
The nature of the original work should be properly reviewed with an eye to republications or updated versions and variations that may attract a new and longer period of copyright. To properly understand the term of copyright protection, you will need to review the term of copyright in each country as well as any limitations or extensions to those terms.
You should also check the trade mark registers in the relevant countries and complete a proper assessment of any registrations found to assess whether they are valid and enforceable.
Any existing use or reputation for a trading entity under each creative work should also be considered to avoid conflict that may result in breach of fair trading legislation or passing off.
The first step in every case should be to review with your IP advisor. More questions? Talk to us.
[1] Section 14(1) of the Copyright Act 1994 provides for copyright in original works that are described as literary, dramatic, musical, or artistic works, sound recordings, films, communication works and typographical arrangements of published editions. For ease of this article, we refer to these works as “creative works”.
[2] This differs from countries like the US where a sign must be proven in use as a trade mark, with samples of use and a declaration, in order to secure and maintain a registration.
[3] Section 32(2) of the Trade Marks Act 2002 provides that the Commissioner must not register a trade mark unless the description of goods and services is “justified by the use or intended use”. An application where the description for goods or services is not within the use or intended use of the subject trade mark should therefore not be registered.
[4] Section 22(1) of the Copyright Act 1994
[5] Section 25 of the Copyright Act 1994