Trademark owners should consider applying to register copyright rights in their logo artwork, in addition to trademark registration. A logo may qualify for a copyright registration if it is sufficiently original and creative.
A copyright registration for logo artwork may provide a number of strategic advantages. The owner of a copyright registration may file suit in federal court for infringement of copyright rights in logo artwork, even if the logo is not covered in U.S. trademark registration (e.g., if a trademark application is pending, a trademark registration was declined, or a trademark registration lapses or is deemed abandoned based on 3 years of non-use or other grounds). A U.S. copyright registration (or rejected application) is required before filing suit for copyright infringement.
Remedies for copyright infringement may include:
- A federal injunction;
- An order to impound, destroy, or otherwise dispose of infringing articles;
- Actual damages plus any additional profits of the infringer or, alternatively, statutory damages up to $30,000 per infringed work;
- Enhanced statutory damages up to $150,000 per work infringed willfully;
- An order to pay costs; and
- Attorney fees to the prevailing party
Willful copyright infringement may also result in criminal liability.
Copyright infringement may sometimes be easier to prove than trademark infringement. To prove trademark infringement, the trademark owner must show that there is a reasonable likelihood of confusion, which involves analysis of multiple factors and may be subjective. To prove copyright infringement, the copyright owner must show that copyrightable elements were copied, which may be satisfied by proving access to the infringed work plus “substantial similarity.”
A copyright registrant may record a copyright registration with U.S. Customs and Border Protection (CBP), to enable CBP to monitor and take action to protect against infringing imports and gray market goods.
It is beneficial to promptly apply for copyright registration. If the copyright owner files a copyright application no later than three months after the work is first “published,” the owner may elect statutory damages (up to $30,000 per infringed work or up to $150,000 per willfully infringed work) and receive attorney fees in a copyright infringement action, even if infringement occurred before the application filing date. These remedies are not available to copyright owners who file a copyright application after an act of infringement has occurred outside of the three month grace period.
Trademark rights in a logo may be perpetual as long as the logo remains in use. However, trademark rights and registrations may be abandoned by non-use (3 years of non-use may be deemed an abandonment of trademark rights). Federal trademark rights and “incontestability” status may be abandoned by non-use or by allowing a U.S. trademark registration to lapse. In comparison, copyright rights and registrations are not dependent upon proof of continued use of a logo. A copyright registration does not require periodic registration renewal filings and evidence of continued use, unlike a trademark registration. Copyright rights in a logo created after January 1, 1978 may endure for 70 years after the author’s death (unless the logo was a “work made for hire,” in which case copyright rights may endure until the earlier of 95 years after publication or 120 years after creation).
In summary, the owner of a logo may be able to take advantage of valuable rights and remedies under both trademark and copyright laws. Consultation with an experienced trademark and copyright attorney is advisable.