Overlapping Trademark Protection for Creative Works: Unfitting Policy Justifications and the Rise of the “Just Dessert” Theory

Irene Calboli (Singapore Management University), “Overlapping Trademark Protection for Creative Works: Unfitting Policy Justifications and the Rise of the “Just Dessert” Theory”

In this paper, I criticize the practice of using trademark law in addition to copyright law to protect exclusive rights in creative works. My analysis focuses primarily on U.S. law, but similar consideration are applicable to other jurisdictions including the European Union. Notably, I argue that, regardless of whether creative works can theoretically fit under both sets of copyright and trademark protection, extending trademark protection to creative works may inevitably result in breaching the societal bargain upon which copyright law and policies were originally built.

In particular, I start by highlighting that copyright and trademark law serve different purposes and protect different subject matters: copyright law protects works of authorship while trademark law protects distinctive signs used in the course of trade to signal commercial origin. Because of their different purposes, copyright and trademark law follow different rules on ownership, formality requirements, duration, and infringement. Still, the subject matter protected under copyright and trademark protection may overlap when a work can both be a creative work and a distinctive sign. Areas where the traditional contours of copyright and trademark law can overlap are the protection of logos and other artistic signs or emblems used in the course of trade; the protection of slogan and short sentences also used in the course of trade; the protection of fictional characters used as indicators of commercial origin, sponsorship, or affiliation; the protection of the aesthetic or artistic features of objects of industrial or fashion design; and so on.

When these overlaps occur, however, some unexpected consequence may arise, especially where one form of protection permits to prolong or reinforce the intellectual property monopoly on a specific item—a logo, a character, a slogan, etc.—by exploiting the differences between copyright and trademark protection. Not surprisingly, intellectual property practitioners have been quickly at noticing the “opportunities” created by the possibility of cumulating copyright and trademark protection for the same items. Yet, this opportunistic exploitation of overlapping copyright and trademark protection is problematic. It also may represent a breach of the constitutional copyright bargain enshrined in the U.S. Constitution.

In this paper, I argue against overlapping copyright and trademark protection and support the validity of this overlapping practice hinges on a considerably fragile theoretical framework, at least based on the predominant and so far accepted theories that justify intellectual property rights. In particular, following the structure suggested by William Fisher—who grouped intellectual property theories into four types: utilitarian theory, labor theory, personality theory, and social planning theory—I highlight that overlapping rights are not justified under any of these theories as the exclusive rights granted by overlapping protection ultimately exceed the balance between private and public interest that, even although with variations, still informs each of these theories.