article / 16 May 2019
Strengthening life science brands through copyright
Swedish life science companies with a market in the US should consider the opportunity to register copyright protection for the design of their product brands. A registered copyright in the US will strengthen the company’s position against potential infringers and counterfeiters as compared to only relying on trademark protection.
Global life science actors are usually well aware of the importance of protecting their brands by registering trademark protection in relevant territories. However, few consider the opportunities that lie in expanding the scope of protection in the US through the registration of copyright. This is primarily a consequence of the widely recognised Berne Convention established in the late 19th century.
The Berne Convention (full name Berne Convention for the Protection of Literary and Artistic Works) includes rules on the rights member states must ensure authors, artists and other creators as regards their literary and artistic works. The convention has been ratified by the majority of the world’s states, including Sweden and the US.
One of the main principles of the Berne Convention is that copyright protection may not be dependent on any formalities. Copyright is meant to be granted without any formal requirements and is established at the creation of the work in question. Requirements for e.g. registration in order to receive protection are not allowed. This is a fundamental principle, meaning that every author or artist can enforce its copyright rights without an administrative process.
However, US copyright law is based on old English law, where there had been formal requirements such as registering the title and depositing a number of copies ever since the Statute of Anne in 1709. While these formalities were abandoned in England early on, they survived for a long time in the US, which did not ratify the Berne Convention until 1988.
As of today, copyright is automatically granted to the author of an original work in the US as well. However, registration still amplifies a copyright holder’s rights in a number of ways. Life science actors looking to strengthen their brands in the US should therefore consider whether their trademarks should also be registered for copyright protection in the US.
What can be protected?
For a brand to receive federal copyright protection in the US, it must consist of a literary or artistic work. Trademarks that consist of stylised logotypes and design elements can be regarded as artistic works in the eyes of the law if they are the result of original artistic expression. Whether a specific mark design possesses the requisite originality to merit copyright protection will be decided by the US Copyright Office in its examination. Historically, the threshold requirement has been fairly low, but in recent years the Copyright Office has become considerably more stringent in its examination. However, many logotypes used by life science actors today are probably qualified to receive protection.
Copyright registration within five years of first publication creates a presumption of ownership and validity. This means that applying for protection should happen sooner rather than later. However, even for well-established marks where the five-year limit is well past, registration will still give the company the prospect of recovering statutory damages (and possibly attorneys’ fees) from an infringer.
Who can apply?
Copyrights are generally owned by the people who created the design of the logotype. However, there are certain exceptions to this rule, e.g. for designs created during employment. On the contrary, if a design is made as a “work for hire”, the designer (or the firm where the designer is employed) is as a main rule the rightful owner of the design, unless certain requirements are met. Ownership may also be assigned between different entities during the years.
Before filing an application for copyright registration, a company should therefore always confirm who is the rightful owner of the design, whether it is the original author or not.
What should be registered?
While brand appearances that change relatively frequently will not receive the major benefits of registered copyright protection, registering copyright for a brand logotype with lasting appeal and which will be subject to only minor evolutionary revisions over time is often worth the relatively simple and inexpensive registration process.
Additionally, for brands with a real prospect of having to deal with counterfeits, registering copyright can be quite useful.
It is relatively inexpensive to apply for copyright protection. The standard copyright office fee is USD 55 per application. Expedited review, or “Special Handling”, costs an additional USD 800. Absent expedited review, a registration will likely not be issued for at least six (6) months. Companies considering registering copyright in the US should therefore take the time issue into consideration before choosing the set for examination.
There are several reasons why copyright registration could be a useful tool in enforcing a company’s rights against infringers.
First of all, copyright registration is required in order to file a lawsuit in the US. Although the author of a design owns its copyright regardless of whether she has a registration, federal registration is required to file a suit for copyright infringement. There are procedures for seeking expedited registration if a copyright owner wants to bring a suit against an infringer, but it is certainly helpful to have a registration in hand before that happens.
Secondly, because damages can be hard to prove in both trademark and copyright cases, registering copyright before the act of infringement occurs can also enhance the owner’s ability to recover a pre-determined amount of statutory damages, which could amount up to USD 150,000 per work infringed, plus attorneys’ fees. This can be especially useful as a matter of early settlement leverage and in cease and desist communications.
Thirdly, copyright may be enforced regardless of the infringer’s category of goods and services, which is not the case with trademark enforcement. The federal trademark dilution statute does allow owners of “famous marks” to enforce trademark rights without respect to the nature of the goods and services with which an infringing mark is used. However, the burden of proving the requisite level of fame is onerous and only the most well-known life science actors will be able to qualify their marks as famous. Accordingly, an additional benefit of copyright protection is that rights may be enforced regardless of the goods and services with which an infringing mark is used, and without having to meet the often insurmountable obstacles to establishing the requisite level of fame.
Moreover, the trademark owner need not prove a likelihood of consumer confusion to prevail on a copyright infringement claim, which is the key element in a trademark claim and can be difficult to prove. Registering copyright can therefore again provide useful leverage with respect to infringers and counterfeiters.
The use of copyright notices, including the copyright symbol ©, is optional. However, the lack of notice of copyright may have consequences in terms of reduced damages in an infringement lawsuit, since using a copyright notice may reduce the likelihood of a defence of “innocent infringement” being successful.
Registering copyright in the US is a simple and inexpensive procedure, while the benefits can be quite useful, especially for classic brands where infringements and counterfeiting are an actual problem. The benefits include the possibility of enforcing the owner’s rights in relation to infringers, especially in the early stages of a dispute.
Since the threshold for attaining copyright protection is also fairly low, considering copyright registration is definitely an interesting option for large life science companies operating in the US.