Copyright Protection of a Logo
A logo trade mark is an artistic work that functions to distinguish the brands of traders in the market. Logos are a visual representation of the brand of a company and can be protected both under trade mark law as denoting the origin of a supply and copyright law as an artistic work.
Trade marks protect signs that act as a source of origin. A trade mark is infringed if is used as a sign that is substantially identical or deceptively similar to the registered trade mark for the same or closely related goods or services.
“If a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse” (Australian Woollen Mills).
In the case of In-N-Out Burgers, Inc v Hashtag Burgers Pty Ltd (No 2), the Federal Court handed down a decision in 2020 finding that an Australian company was liable for trade mark infringement based on the similarity of its mark to the US brand In-N-Out burgers. Justice Katzmann stated in relation to deceptive similarity:
The only remaining question is whether the respondents achieved what they set out to do. In my opinion they did. They sailed too close to the wind.
Only part of the get-up needs to be copied and intention can be inferred from the level of copying achieved.
There can be copyright protection in a logo if it qualifies as an artistic work, however, it must meet the requirements for originality under copyright legislation and be owned by the trade mark applicant or subject to the grant of a licence to the trade mark applicant that permits the exercise of the rights of a copyright owner.
Artistic works are defined in s10(1) of the Copyright Act 1968 (Cth).
S10(1) artistic work means:
(a) a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not:
(b) a building or a model of a building, whether the building or model is of artistic quality or not;
(c) a work of artistic craftmanship whether or not mentioned in paragraph (a) or (b); but does not include a circuit layout within the meaning of the Circuit Layout Acts 1989.
The definition of an “artistic work” is concerned with the way a visual item is made rather than with any question of whether it is “art’ or has artistic quality.
The Full Court of the Federal Court in Elywood Clothing Pty Ltd v Cotton on Clothing Pty Ltd adopted this statement from the trial judge:
There is a body of case law, which establishes that (1) whether a work will be recognized as an artistic work such as a drawing is highly fact-specific, such that no bright-line rule can be drawn; and (2) the important principle in deciding whether the work is a “drawing” is whether the work at issue can be said to have a visual rather than “semiotic” function.
If the use of a trade mark infringes copyright, an applicant can file opposition proceedings against registration of the trade mark on the basis that its use would be contrary to law.
Ownership of Copyright
The author of a logo will be the owner of the copyright unless there is a written agreement to the contrary. The person commissioning the creation of the logo will have the right to use it. Therefore, it is important that owner of a logo trade mark obtains an assignment of ownership from the creator of the logo to establish ownership of the copyright in the logo.
Differences between Trade Mark and Copyright
Trade Mark is a sign that distinguishes your products or services from your competitors. This includes a label or logo, name, colors and other markings. Registering your brand name or logo protects you from rivals riding on the goodwill in your brand name and profiting from it.
Copyright protects an original expression which falls within a copyright protected category of work (without the need to register it) rather than the exclusive right to use a brand name in the market.
Key Take Away:
Copyright infringement depends on the defendant/respondent’s act being one of the acts comprised with the copyright of a work or other subject matter. These are the acts that the copyright owner has the exclusive right to do under the Copyright Act 1968 (Cth). All of the elements of copyright infringement of the exclusive rights in copyright works must be proved including subsistence of copyright and ownership of copyright or being an exclusive licensee of copyright.
Our Trademark Lawyers in Sydney are Experts when it comes to Registering Trademark or Trademark Opposition Process in Sydney
Jaclyn-Mae Floro, BCompSc
Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.
