Comments on: Trademark is soooo the new Copyright

By: Stuart S

Stuart S — Sat, 18 Apr 2009 19:14:41 +0000

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!

By: Elizabeth Stark

Elizabeth Stark — Thu, 16 Apr 2009 15:20:58 +0000

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.

By: laurenhenry

laurenhenry — Thu, 16 Apr 2009 15:11:44 +0000

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.

By: Danny Silverman

Danny Silverman — Wed, 15 Apr 2009 22:05:40 +0000

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.

By: Carolyn N

Carolyn N — Wed, 15 Apr 2009 18:25:44 +0000

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?