Proactive Trademark Practices for Companies – Part 8 Intersection with Copyright

Intersection with Copyright

Symbol or Logo trademarks may constitute graphic works of authorship under copyright law eligible for federal copyright protection, so long as they contain original authorship and are not just familiar symbols, designs, or shapes.

It is important to understand that a copyright exists as soon as the original work is “fixed in a tangible medium of expression”, such as a manuscript, CD, DVD, computer file, and the like. The work automatically becomes the property of the author who created the work and copyright ownership can only be transferred in writing to be valid.

Although registration is not required for existence of the copyright or a condition of copyright protection, federal copyright law provides several inducements and advantages to encourage owners to make registration. Accordingly, from both legal and business standpoints, it is generally a good strategy to file copyright registration applications for Symbol or Logo trademarks in addition to any trademark applications for them.

However, as is often the case, if you or an employee of the company did not create the work (i.e. Symbol or Logo trademark), then a written copyright assignment from the author (e.g. independent graphic designer or design firm) to you will be necessary in order for you to claim ownership in the copyright of the work. Such assignments should be recorded as well so you don’t have to worry about it later (e.g., during due diligence of an acquisition, etc.).

Thus, if there is any lesson to be learned here, before you hire an independent graphic designer or design firm to create Symbols or Logos for your company, make sure you have a written development agreement in place that includes, among other key provisions, their agreement to assign over to you any intellectual property (including copyright) they may acquire working on your project. Sure, you can always go back and ask them to execute an assignment after the fact, but they will have no obligation to do so. If they don’t, this could place you in an awkward position later, such as in acquisition negotiations for example.