Balancing Mickey Mouse and the Mutant Copyright: To Copyright a Trademark or to Trademark a Copyright, That is the Question

Marquette Intellectual Property Law Review Volume 24 Issue 1 Article 7 Winter 2020 Balancing Mickey Mouse and the Mutant Copyright: To Copyright a Trademark or to Trademark a Copyright, That is the Question Michael A. Forella III Follow this and additional works at: https://scholarship.law.marquette.edu/iplr Part of the Constitutional Law Commons, and the Intellectual Property Law Commons Recommended Citation Michael A. Forella III, Balancing Mickey Mouse and the Mutant Copyright: To Copyright a Trademark or to Trademark a Copyright, That is the Question, 24 Marq. Intellectual Property L. Rev. 1 (2020). This Article is brought to you for free and open access by the Journals at Marquette Law Scholarly Commons. It has been accepted for inclusion in Marquette Intellectual Property Law Review by an authorized editor of Marquette Law Scholarly Commons. For more information, please contact . FORELLA_FINAL_MACROED (DO NOT DELETE) 8/11/20 12:21 PM BALANCING MICKEY MOUSE AND THE MUTANT COPYRIGHT: TO COPYRIGHT A TRADEMARK OR TO TRADEMARK A COPYRIGHT, THAT IS THE QUESTION MICHAEL A. FORELLA III I. INTRODUCTION ............................................................................................ 77 II. THE DIFFERENCES BETWEEN TRADEMARKS AND COPYRIGHTS ............... 78 III. THE RULES FOR COPYRIGHTING TRADEMARKS AND THE ARGUMENTS IN FAVOR THEREOF................................................................................... 79 IV. WHY ARGUING THAT TRADEMARKS FAIL THE COPYRIGHT REQUIREMENT BECAUSE THEY LACK CREATIVITY IS A PROBLEM ............................... 82 V. THE ARGUMENTS AGAINST COPYRIGHTING TRADEMARKS...................... 84 VI. TO TRADEMARK A COPYRIGHT, NOT COPYRIGHT A TRADEMARK, THAT IS THE RULE .............................................................................................. 90 I. INTRODUCTION “Wolde ye bothe eate your cake, and haue your cake?” This proverbial saying dates to mediaeval times, first appearing in 1546.1 Despite the dramatic change in language and spelling, the meaning of this phrase was never lost in translation. One cannot simultaneously eat one’s cake and retain possession of one’s cake. Both trademark owners and the Copyright Office want to have their cake and eat it too. Trademark owners are trying to register their trademarks as copyrights. The Copyright Office wants to deny such marks, but under a weak lack of a creativity argument. Allowing trademarks to be registered as copyrightable works violates the clear doctrines of the boundaries of protection available in each area of intellectual property law. There is no direct rule from Congress or the Supreme Court that a logo or slogan cannot also be a copyrightable work. However, the necessary intellectual property law boundaries are in place for good reason and support the argument presented herein that a clearly demarcated line between copyright and trademark protection must also be drawn. That clear demarcation should 1. Ben Zimmer, ‘Have Your Cake and Eat It Too’, NEW YORK TIMES MAGAZINE, (Feb. 18, 2011), https://www.nytimes.com/2011/02/20/magazine/20FOB-onlanguage-t.html. FORELLA (DO NOT DELETE) 78 8/11/20 12:21 PM MARQ. INTELL. PROP. L. REV. [Vol. 24:1 be that an image originally created, exploited, and that functioned as a copyright may later meet trademark’s requirements and therefore be eligible for concurrent trademark and copyright protection. However, a mark originally created, exploited, and that functioned as a trademark cannot receive copyright protection, concurrent or sequential, regardless of creativity. This is determined by the applicant declaring during their copyright application that the work seeking registration is not a designator of a source of goods under penalty of fraud on the Copyright Office.2 In Section I, this comment discusses the differences between trademarks and copyrights. In Section II, this comment analyzes the rules for copyrighting trademarks and the arguments in favor of copyrighting trademarks. In Section III, this comment addresses the problems of arguing that trademarks fail copyright requirements for a lack of creativity. In Section IV, this comment weighs the arguments against copyrighting trademarks. Section V concludes by proposing a bright line rule for either Congress or the courts to adopt to provide guidance that copyrighting a trademark is prohibited. II. THE DIFFERENCES BETWEEN TRADEMARKS AND COPYRIGHTS A trademark is “any word, name, symbol, or device, or any combination thereof” that is registered with the United States Patent and Trademark Office and is used in commerce “to identify and distinguish” the source of goods and services.3 To be trademarked, the mark must either be distinctive or attain secondary meaning through public association.4 Therefore, trademark law protects the source identifying function of goods and services. Contrarily, a copyright is an original work of authorship, such as a literary, musical, audiovisual, or pictorial work, that is fixed in a tangible medium of expression.5 Therefore, copyright protects the expressive content of works. Copyright protection is granted by the Constitution’s Intellectual Property Clause which grants Congress the authority “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors … the exclusive Right to their [] Writings and Discoveries.”6 Copyright protection is designed to incentivize authors to create creative works. In 1879, the Court distinguished copyright and trademark protection when the Supreme Court 2. 3. 4. 5. 6. 17 U.S.C. § 411(b)(1) (2008); 17 U.S.C. § 506(e) (2008). 15 U.S.C. § 1127 (2006). Id. 17 U.S.C. § 102 (1990). U.S. CONST. art. I, § 8, cl. 8. FORELLA_FINAL_MACROED (DO NOT DELETE) 2020] 8/11/20 12:21 PM MICKEY MOUSE VS. THE MUTANT COPYRIGHT 79 ruled that the Commerce Clause does not give Congress any power to regulate trademarks not used in commerce.7 In contrast, Trademark protection is granted by the Constitution’s Commerce Clause which grants Congress the power “[t]o regulate Commerce … among the several States ….”8 Trademark protection is designed to ensure consumers are informed as to the source of the goods they purchase.9 Moreover, for famous trademarks, protection encompasses the likelihood of harm caused by the blurring or tarnishing caused by a knock-off mark regardless of “likely confusion, [] competition, or [] actual economic injury.”10 Copyright and trademark protection were created for different purposes and therefore have different protections and limitations. Thus, it is no surprise that the boundaries between the two have blurred. III. THE RULES FOR COPYRIGHTING TRADEMARKS AND THE ARGUMENTS IN FAVOR THEREOF What is required for something to be creative? The Compendium, the Copyright Office’s administrative manual, Section 913.1 states “[a] visual art work that is used as a trademark, logo, or label may be registered if it satisfies ‘the requisite qualificati (...truncated)