Copyright, trademarks and industrial designs: how they intersect and protect your rights

Kevin Sartorio  00:08

I'm Kevin Sartorio, I'm a partner at Gowling WLG, and our intellectual property group. And I'm going to offer you some thoughts today about when to consider seeking industrial design protection or trademark protection, as opposed to copyright protection. These thoughts arise because of an intersection between copyright trademarks and industrial design that you may not appreciate. So I'll begin with some basics about these three IP rights. And then go on to explain how there is an inner section. And then give you my thoughts on when you should be looking for trademarks and dress heroes designs as opposed to copyright. So there are primarily five types of IP rights that we think about when we talk about intellectual property regimes. Two of them are not relevant to my discussion today, patents and trade secrets. But the three that are gonna intersect and overlap a little bit are copyrights, trademarks, and industrial designs. So let's start some basics about each of these. It's important to understand that each of these IP rights protects a different thing. Copyright is governed by the Copyright Act, and it protects the expression of ideas. And it does this by conferring the right to control who reproduces on original work. And an original work can be a literary work can be an artistic work can be a musical work can be a dramatic work. But that's what it's doing. It is tends to come out of a theory of authorship, and conferring on the author, or the author's assignees. The right to deal with these works of human imagination. A trademark is something different. A trademark is a thing which can be a word, it can be a slogan, it can be a sound, it can be a smell, it can be a logo, it's something that is associated with a good or service for the purpose of communicating to consumers, the trade source of the good or service, so that consumers can receive a consistent quality and character of good or service and trust that the symbol that's associated with it, is indicating the same commercial sources last time for the good or service that was purchased. Now in contrast to both of these, an industrial design protects the esthetic look, the shaping of a product of a useful article, put another way, it protects the non utilitarian features of a useful article that appeal to the eye. Now, that's a bit hard to understand in the abstract. So let me give you a visual presentation of something that will help explain these things.

Kevin Sartorio  03:04

So you see here presented a fanciful corkscrew. A corkscrew is a useful article, it accomplishes something. And in the corkscrew that I presented here, you have the utilitarian portion, the bottom half, and the non utilitarian portion on the top half. Overall, this useful article could have been shaped any conceivable number of ways but I have chosen year to propose manufacturing the corkscrew with a three dimensional head figure on top. And it is that head figure that would give this useful article something that appeals to the eye. And you would expect that the courts for like this would have a brand name associated with it and would come with some instructions for use. So if you were looking at copyright, we might say, well, copyright could be protecting the instructions themselves, but it can also protect the artistic work. That is this three dimensional head figure. If we were looking at trademarks, the trademark could protect the brand name, the sort Horio corkscrew, but it can also protect the three dimensional image as well. Three dimensional things can be a trademark, just like McDonald's golden arches, for example. But the point is that within the one industrial design, you have potentials for copyright, and trademarks overlapping with the industrial design itself. And it can be a bit confusing as to when it's appropriate to seek the protection for which of these rights. So next, I'm going to go through just the process and cost of registering each of these different rates. And then we'll go into the intersection and when you may need to make a choice. So let's deal with a bit of these background basics. Copyright. So you recall, this is the right to control, who reproduces all are a substantial part of an original literary, dramatic, musical or artistic work. Copyright exists automatically when an original work is created. That means it springs into existence on the moment of creation and you do not need to register it. Registration is recommended. Nevertheless, in part because it's relatively low cost, it can be done for a little bit more more than $500, including the law, law firms fees and the government fees. You'll recall again that the trademark is an indicator of commercial source, and it too can be registered or unregistered. But the nice thing about registration is that it provides national protection from confusion. Trademarks are relatively expensive, at least compared to a copyright. The cost to register a trademark is going to be $2,500, or potentially more depending on whether third parties object to your attempt to register. An industrial design is the right to control who makes and sells copies of the useful article featuring industrial design. In contrast with copyright and trademarks, and industrial design does not exist without a registration, you have to seek a registration for the design and the cost of registered is somewhere in the middle about $1,500. But the point is that people tend to think that they can rely on either an unregistered trademark, or even more problematic a copyright without a registration to protect their industrial design. And they can avoid the need to seek the registration industrial design because of the nature of copyright or unregistered trademark rights. And that's what I want to caution you about. So let's look at the intersection of prime copyright. Let's let's look at two different corkscrews as examples. So the first one is going to be a corkscrew featuring the same head, a three dimensional head that I had described earlier.

Kevin Sartorio  07:20

Let's imagine another corkscrew. And this one is going to feature on top of a three dimensional representation of this colorful artistic work here. Now, the important thing to understand is that before you apply either of these designs to a corkscrew, they are protected by copyright, because they're going to be original artistic works. And they could each function as a trademark if they're intended to be used as a trademark. So you could, if you were seeking to prevent other people from making use of your corkscrew, or selling competing copies of it, you might say, Well, I'm in a position to rely either on my copyright in these things which arises automatically, or I can just use them as an unregistered trademark. And I can avoid the need to either file for a registered trademark, the $2,500 or more. Or I can just rely on copyright and avoid the need to file for an industrial design for $1,500. And that's what I want to caution you about because of section 64 of the Copyright Act. So let's look at that. So section 64 of the Copyright Act says, where copyright subsists in a design applied to a useful article. So that would mean either the head design or the circular sign. And the article is reproduced in a quantity of more than 50. It shall not thereafter be an infringement of the copyright for anyone to reproduce the design of the article by making the article. So this Section of the Copyright Act says that if you intend to take a design and apply it to a useful article like a corkscrew, and commercially manufacture the corkscrew in quantities of more than 50, then generally speaking, you are going to not be able to police the marketplace by relying on your copyright, you are going to need to instead seek a different form of protection which could be trademark protection or industrial design protection. Now there is a there is a carve out or two here that will show in the next slide. That's important to understand. So, section 64 Three says that this restriction on relying on your copyright does not apply in relation to an artistic work, insofar as the work is used as for several different things, but the most important of which are a graphic or photographic representation that is applied to the face of an article. So for example, picture of Mickey Mouse that's on the front of a coffee mug that retains its copyright enforcement mechanism, or be a trademark, or a representation thereof, or a label. So if you have, if you if you have taken the time to use something or register something as a trademark, then it can also be protected. Or a representation of a real or fictitious being, that is applied to an article as a feature of shape, configuration pattern or ornament. So now we're not only talking about things that are applied to the face of an article, but this can include 3d examples of things such as the top of our corkscrew. So let's take a look now at how this would interact and work. So we have the two different corkscrews here. Both useful articles, and we have three dimensional shaping on top. So first question I would ask is, do both of these count as an artistic work? And I would say they do. Have they've been applied to something as a that has a utilitarian function? Yes, a court screw. Now, let's assume that they're commercially manufactured, so they have been reproduced more than 50 times both of these things. Let's say, you know, the question ultimately is, do you have an ability to police the marketplace by relying on your unregistered copyright? In either of these artistic works? I would say the answer is yes, for the first one. And only maybe for the second one, the reason that you can rely on the copyright in the three dimensional head design is because that is going to be a representation of a real or fictitious being. And that is something that is caught by the carve out to the copyright section 64.

Kevin Sartorio  12:03

On the other hand, with the circular design, it will depend on whether or not you have used it as a trademark. If it's not a trademark, then this is not going to be something that is applied to the face of an article. It's not a representation of a real or fictitious being. And therefore, the Copyright Act would say that if a competitor comes along commercially manufactures the corkscrew of this nature, you are not going to be able to enforce your copyright against the competing manufacturer, you will need to have obtained a different form of intellectual property protection. And that could include either trademark protection, or it could be industrial design protection. But it would be a mistake to assume that simply because it's an artistic work, that you automatically have copyright protection, which can be enforced. In Canada at least, that is not always the case. And this is why when you're manufacturing something of this nature, it would be a good idea to consult with your intellectual property counsel to make sure that you are protected. So this is something that you may not have been aware of. And I hope that it has been interesting to you. For more information, please feel free to call or email me or arrange a video call via zoom. Thank you very much.