Licensing Commercial Value: From Copyright to Trademarks and Back

Copyright and trademarks often overlap, particularly in visual characters. The same figure may qualify as a pictorial, graphic or sculptural work on the one hand, and as a registered (or at least used) trademark on the other. The two rights, though resting on distinct foundations, tend to be licensed together. Trademarks symbolize the goodwill of the producer, and are protected insofar as copying that symbol is likely to confuse consumers as to the source or approval of the goods or services in connection with which the mark is used. For famous marks, the dilution action grants a right against uses of the mark that are likely to “blur” or “tarnish” the distinctiveness of the mark, even in the absence of confusion. In either event, the object of protection is the producer’s goodwill (in theory, as a proxy for consumer source identification), not (again, in theory) the mark per se. Copyright, by contrast, is a right “in gross” allowing its owner to prohibit the copying of the work without regard to source confusion. Copyright protects the work of authorship itself, not the identification of that work with a single, if anonymous, source of origin. Pursuant to the Constitutional grant to Congress of power to secure authors’ exclusive rights “for limited times,” copyright lasts for a term of years; trademarks are protected for so long as they continue to represent a single producer’s goodwill. Subject to that prerequisite, registered trademarks maybe renewed indefinitely. The durational disparity prompts the question whether a trademark owner may effectively perpetuate the life of the copyright in, and thus control the licensing of, a visual character by controlling the use of the trademark in the same image(s). The difference in the rights’ purpose gives rise to another problem: if the trademark owner is not also the copyright owner, for example, because rights granted may have reverted to the artist, can the holder of one kind of right exercise that right, for example, through licensing, without infringing the rights of the holder of the other kind of right? While those questions address trademarks and copyright as potential antagonists where exercise of trademark rights threatens to frustrate copyright policies (and perhaps vice versa), there is another side of the coin. To an increasing extent, we are seeing trademark symbols become characters and acquire value not only as source-indicators, but also as artistic (or audiovisual) works. The strategy seems the logical endpoint of the progression, since at least the 1970s, which recognizes that the thing of value is the trademark, independently of any particular goods or services with which the mark has been associated. How does turning the trademark into a copyright add to the value of the object of the license?This Chapter will first consider the exercise of trademark rights in copyrighted works, which either have fallen into the public domain or for which the trademark owner no longer owns the copyright. It also will consider adoption as a trademark of a public domain character in which the trademark claimant never held a copyright interest or for which it was a licensee for uses ancillary to the principal entertainment-related uses of the character. Finally, the Chapter will turn to the exploitation of trademarks as works of authorship.