Since this is a copyright blog, I am guessing that most of my readers will be saying to themselves, “I know the difference between trademark and copyright; doesn’t everyone?”. Everyone does not, and this can lead to considerable confusion especially when the media use the two terms loosely or interchangeably. Moreover, it is not surprising that there is often confusion between these elements of intellectual property (IP) protection since there can be considerable overlap between the two.

Since the publication of my book, “In Defence of Copyright”, I am often asked to speak to various groups on the subject. One of the first things I do is to ask my audience if they can explain the differences between copyright, patents and trademarks. Many are confused. As part of the discussion, I will point out the essential difference between counterfeited (fake) and pirated (genuine but stolen) products. We can blame the media for loose use of IP terms, but there is also the overlap factor that can also cause confusion, as I discussed in a recent blog post on board games. A commercially marketed board game can be protected by all three elements of IP, a patent, a trademark and copyright (for certain elements of the game).

The annual post-Christmas public domain feeding frenzy (which I have written about in the past) went into overdrive this year over the entry of Disney’s Steamboat Willie cartoon feature into the public domain in the US on January 1, 2024. (Note, that Willie was already in the public domain in Canada, and had been for two years, a fact that escaped journalists in the Canadian media, as well as some Canadian law firms, who needed something to write about in early January without doing much research). But just because the 1928 version of Willie is now in the public domain in both countries (i.e. not subject to copyright protection), don’t think that you can go out and market Mickey Mouse dolls. They are protected, like all of Disney’s character repertoire, by trademark registration. While copyright will lapse after a specified period, a trademark registration will not as long as it remains in use and is renewed periodically. Trademark and copyright protection co-exist, which may in part explain the public confusion.

In one famous case, a trademark was challenged on the basis of copyright. Nike’s famous “Jumpman” logo used to market its Air Jordan brand of shoes was allegedly based on a 1984 photograph taken while Jordan was a student at UNC by Life photographer Jacobus Rentmeester. (Jordan was wearing Converse sneakers in the photo). After Jordan entered the NBA and signed an endorsement contract with Nike, the shoe company’s ad agency developed the iconic logo of Jordan leaping through the air on his way to another dunk. According to Rentmeester’s claim, as reported by CNN, he created “a never-before-used pose, inspired by ballet, to generate Jordan’s appearance of weightlessness and power”. The photo certainly became famous. Thirty years later Rentmeester (who presumably had been unsuccessful in negotiating a licence agreement with Nike), sued for copyright infringement. He lost. The court ruled that there were enough differences between the Nike logo and Rentmeester’s photo that the two were not substantially similar.

A British court in the well-known “London Bus case” found differently. New English Teas, a registered trademark, commissioned a photo of a red London double-decker bus against a monochrome grey background of the Houses of Parliament and Westminster Bridge to be used to decorate their tins of tea, marketed largely to tourists. However, the photographer hired to do the work copied the essentials of an earlier photograph by another photographer, using the same elements although not exactly the same composition. Both photos were produced using photoshopping and editing. The tea company, which was the defendant, argued that anyone could take a photograph of this iconic location, with a similar iconic symbol of London. They argued there could be no monopoly on such photos. The judge, however, found that the second photographer had had access to the prior work of the plaintiff, and had copied a substantial part of his work. Note that New English Teas will sell you its teas in just about any kind of decorated tin, including Disney’s Winnie the Pooh, Warner’s Harry Potter (both suitably licensed), the Royal Family and London sights, including the photo in question. They must have settled with the photographer.

More recently the copyright/trademark confusion came on to my radar with all the fuss about the phrase, “Very Demure, Very Mindful”, popularized by TikTok social media influencer Jools LeBron. Fox News headlined that “TikTok influencer discovers someone else copyrighted her viral phrase”. LeBrons’ use of the phrase caught on in social media, and she had plans to commercialize it. However, someone apparently beat her to it. As Fox put it, “a Washington-state man copyrighted the phrase first, seemingly locking her out (of?) any possible payday”. But as we copyright aficionados know, you can’t rush to copyright something “first”. Copyright exists from the moment it was created, assuming it is a fixed, original expression of an idea. Registration is not required, although in the US if you intend to bring a suit for copyright infringement, registration is necessary. (If there were two conflicting registrations of the same work, that would be interesting. The US Copyright Office would have to sort it out). Nor can you copyright a relatively common phrase like the one in question. The Demure/Mindful issue was not about copyright at all, but rather all about trademark registration. While Fox News got it wrong, kudos to the Associated Press who a few days later put out a detailed article pointing out the trademark implications of the “Very Demure, Very Mindful” dispute, noting that “Trademarks should not be mixed up with copyright”.  It appears that the case will have a happy ending because, according to Lebron, something was apparently worked out.

But can you trademark a phrase such as “Very Demure, Very Mindful”? Yes, you can, but it depends on how it is used. Nike’s famous phrase “Just Do It” has been trademarked since 1995. Of course, you can say, “just do it”, but don’t “just do it” to market athletic equipment. I am by no means an expert in trademark law (copyright is complicated enough, and I am still learning) but there are some basic principles to bear in mind. A trademark has to be used to be protected (you can’t just squat on it and not use it),  it must be registered and renewed periodically (in most countries it lasts for ten years), it is restricted to product categories where there are actual products being marketed (which is why, for example, Delta Airlines, Delta Laundry and Delta Nail Salon can co-exist) and it is geographically restricted. Thus Budweiser does not own the mark when it comes to beer in Czechia because the brand was registered many years ago by a different company, while the Czech version (Budvar) has to be marketed in the US as Czechvar.

When Target, the large US department was about to embark on its disastrous foray into the Canadian market, it found that someone else owned the Target brand (for clothing retailing) in Canada. Target was targeted (sorry) with a $250 million lawsuit by Canadian clothing retailer Fairweather who sought an injunction restraining Target’s use of its name in Canada. Target appealed but lost in the preliminary rounds. As the dispute was blocking their (spectacularly unsuccessful) launch in Canada, they settled and Fairweather agreed to give up the name, although Target probably now regrets ever having considered its expansion into the Canadian market—and spending good money to get their name registered in Canada.

So, the next time you read that there was a copyright dispute over the use of a certain name, or product, or even catch-phrase, take it with a grain of salt. It was likely a dispute over a trademark, not over an expression of an idea. A trademark can be many things. The US Patent and Trademark Office gives as examples, “a word, slogan, design, or combination of these…even…a sound, a scent, or a color”. However, even if it was “just” a trademark dispute, there could still be copyright elements associated with it. The two are cousins, and along with other elements of intellectual property (patents, industrial designs, geographic indications, trade secrets), all of which have their own distinctive features and terms of protection, protect innovation, creativity, distinctiveness and commercial value. Weakening one weakens them all.

This article was first published on Hugh Stephens Blog