The copyright of the cartoon character Popeye expired earlier this year in Europe.
At the beginning of this year, the copyright of the cartoon character Popeye expired in Europe. However, the company King Features still owns the trademark, and intends to “protect its brand aggressively.” Now, imagine that you are a European producer of canned spinach. With Popeye in the public domain, you wish to include an image of Popeye on the label of your product. However, King Features challenges your label as an infringement on their trademark by claiming “likelihood of confusion” and “trademark dilution.” Even though Popeye now is in the public domain, can King Features contest your use of Popeye as an infringement of their trademark? If trademark can be invoked in this way, then how is trademark not just an extension of copyright?
The US Patent and Trademark Office describes the differences between copyright and trademark as follows: copyright “protect[s] works of authorship, such as writings, music, and works of art that have been tangibly expressed”, and trademark “protect[s] words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods.” So sometimes copyright and trademark can overlap in the types of works they protect—the image of Popeye, for instance, is copyrighted as a “work of art” and trademarked as a “symbol” for King Features. However, copyright and trademark were established for very different reasons. The purpose of copyright is to incentivize the production of creative and artistic works, while the purposes of trademark are “to aid the consumer in differentiating among competing products,” and “to protect the producer’s investment in reputation.” But the most significant distinction between copyright and trademark is the difference in their durations. Copyright (typically) expires after 70 years plus the life of the author, while trademark can be renewed indefinitely without limit. The unrestricted duration of trademark makes it more attractive and powerful in protecting works than copyright.
In theory, the distinctions between copyright and trademark seem clear, but in practice, it is difficult to predict how a court will treat one compared to the other. Intellectual property specialist Mark Owen explains “the Segar drawings are out of copyright, so anyone could put those on T-shirts, posters and cards and create a thriving business. If you sold a Popeye toy or Popeye spinach can, you could be infringing the trademark.” The distinction between these two uses—that is, Popeye on a T-shirt rather than on a can of spinach—is not obvious. For the canned spinach example, it seems unlikely that a claim of “likelihood of confusion” would hold up in court, because King Features is in the business of entertainment as opposed to produce. A claim of “trademark dilution” seems more believable because the image of Popeye is extensively “famous” that putting him on a can of spinach might result in brand “blurring” or “tarnishing” side effects. However, I question whether the trademark of Popeye is valid in the first place, because how well do people actually associate King Features with the image of Popeye? We will not know for sure whether the public domain Popeye or the trademark Popeye will prevail over the other until a court makes a ruling.
The case of Popeye reflects a troubling trend in intellectual property: companies invoking trademark as an unlimited extension of copyright. The law clearly defines the purposes and extents of copyright and trademark, so it is unsettling to see when these intents are not followed through in practice. As the first prominent cartoon character to enter the public domain, Popeye will set an important precedent for when his copyright expires in the US in 2024, and for other substantial characters such as Mickey Mouse, who (barring any further successful lobbying by Disney to extend the duration of copyright) is due enter the US public domain in 2023.
Do you think that the overlap between trademark and copyright should be eliminated through a rule amendment that would force owners to select either one or the other at the onset?
Great question… I considered suggesting this as well, but in some ways, I think the law already incorporates this idea. Copyright is the default option because it is granted to all expressed works at the moment they are created. So by applying for a trademark, one effectively is opting out of copyright and into trademark. In this way, the structure of the law already allows owners to select one option over the other.
Although copyright and trademark can be overlapping at times, I think that the combination of the two is not redundant, as each provides protection and incentives for different things. I find it unsettling, however, when trademark is invoked in ways that undercuts and overrides the purposes of copyright (for instance, the unlimited renewable duration of trademark could keep Popeye out of the public domain forever even though its copyright has expired) because that is not what trademark was intended to do.
Trademark implies active or intended use in a particular business area in a particular market, right? Could King Features claim to be a player in every product area in every market for products that have Popeye on it? That would be a struggle. I’m not too sure that they have much of an argument in the case of consumer confusion, either, in the hypothetical situation of Popeye spinach. You can use the same mark in different contexts, without confusion. For example, Peanuts in the context of MetLife versus Peanuts as just entertainment. Nobody’s really confused there in any meaningful way.
I think it would end up being inefficient and/or ineffective to use trademark to achieve a similar effect to copyright. King Features would have a rough argument to make if it took people to trial, and would often lose, I bet. But that doesn’t mean that King won’t try. With enough bullying and confusion on the part of others with respect to their rights, they might succeed in a limited capacity. Cases could be settled, and people and companies might be deterred by use of a suit.
One can still have a trademark *without* registering with the PTO if they use the mark in commerce, so you need not register to have the rights associated with a trademark. Of course it would be up to the trademark holder as to whether they would enforce these rights. But by applying for a trademark, one isn’t opting out of copyright — as discussed, the two doctrines cover two different areas (restriction of unauthorized copying vs. unauthorized use in commerce generally causing a likelihood of confusion).
That said, I do think the issue of lingering and perpetual trademark on works that enter the public domain from the copyright side of things could become a considerable threat to free speech, particularly within the scope of the dilution doctrine. For example, something along the lines of the “Air Pirates” could be potentially infringe and “tarnish” the trademark even after Mickey Mouse enters the public domain from the copyright side of things.
And Mickey Mouse is actually slated to enter the public domain on January 1, 2024, as works enter the public domain on the first day of year following the expiration of the copyright. (January 1 is otherwise known as public domain day in certain circles.) This is all, of course, assuming that works do actually enter the public domain come January 1, 2019. We can only hope.
I wonder if there should be some limit on the length of trademark rights? Or do you think that the genericization principle accounts for this? Really interesting discussion!