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Trademark Considerations for Copyrighted Works in the Public Domain

By Joy J. Wildes of Davis+Gilbert LLP & Claudia G. Cohen of Davis+Gilbert LLP on January 31, 2024
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In the United States, an original work of authorship fixed in a tangible medium of expression (meaning the work can be communicated in a visual or audio form) is a protectable copyright. This means that the owner has the exclusive right to reproduce, adapt, publish, perform, and display the work. Because copyright protection has a set term, copyrights in certain works necessarily expire each year and enter the public domain. Once a work has entered the public domain, it no longer retains copyright protection and cannot stop use of the work by others based on its prior copyright rights. However, a work’s copyright expiration does not extinguish any trademark
rights that the owner may maintain in that same work. This is because protection of trademarks, which are words, phrases, symbols, and designs that identify the source of goods or services, is separate from protection of copyrights and does not necessarily expire so long as the work is continuously and regularly used as a trademark.

On January 1, 2024, the copyrights in a number of recognizable works entered the public domain, including, among others, Disney’s iconic Mickey Mouse film “Steamboat Willie,” along with the specific depictions of Mickey Mouse and other characters in the film; A. A. Milne’s book, with illustrations by E. H. Shepard, “House
at Pooh Corner,” which introduced the Tigger character; and D.H. Lawrence’s book “Lady Chatterley’s Lover.” This means that there is no longer copyright protection in these works or the specific depictions of characters in them. But it is important to remember that any existing trademark protection in them subsists.

For example, Disney owns separate and enforceable trademark rights in its Mickey Mouse character and has apparently taken steps to shore up its trademark rights in “Steamboat Willie.” Specifically, Disney owns a federal
trademark registration for an iconic video clip from the “Steamboat Willie” film, which is used in connection with certain Disney motion pictures. Further, Disney still owns valid copyright and trademark rights in other, more modern versions of Mickey Mouse.

What does this mean for marketers who may be interested in producing advertising content using copyrighted works that have entered the public domain? They should closely consider whether these proposed uses present trademark and false advertising risks. They should also assess whether proposed modifications to the depiction
of public domain content may nevertheless present copyright risks to the extent that such modifications are substantially like variations of such characters that are not yet in the public domain and are still subject to copyright protection.

Photo of Joy J. Wildes of Davis+Gilbert LLP Joy J. Wildes of Davis+Gilbert LLP

Joy Wildes plays a key role in the creative branding process with strategic trademark, advertising and intellectual property (IP) advice. Her solutions help companies and creative agencies protect their brands while pursuing their business objectives in the United States and internationally.

While working…

Joy Wildes plays a key role in the creative branding process with strategic trademark, advertising and intellectual property (IP) advice. Her solutions help companies and creative agencies protect their brands while pursuing their business objectives in the United States and internationally.

While working across a range of industries, including automotive, financial services, food services, sports and consumer products, Joy focuses on removing trademark obstacles and advertising concerns to help clients move forward. Her cost-effective and strategic filing programs provide thoughtful and effective brand protection.

Joy approaches contentious trademark matters from a business and legal perspective. She strives to achieve settlement agreements that establish boundaries, clearly define usage terms and maintain brand integrity. Joy also negotiates and drafts licensing and other IP agreements to help clients monetize their brands.

She has established deep relationships with marketing agencies and in-house client teams that appreciate her understanding of the creative process and collaborative approach.

Before she joined Davis+Gilbert, Joy spent several years as in-house counsel at Carter-Wallace Inc., a personal care products and pharmaceutical company. In that role, she experienced the unique perspectives and challenges her in-house counsel clients regularly face. This further provides her with an ability to take a broader view of brand goals when considering trademark and marketing needs to inform valuable and practical legal advice.

Read more about Joy J. Wildes of Davis+Gilbert LLPEmail
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Photo of Claudia G. Cohen of Davis+Gilbert LLP Claudia G. Cohen of Davis+Gilbert LLP

Claudia Cohen’s practice spans all aspects of domestic and international trademark law. She advises brands, advertising and marketing agencies, and celebrities on protecting and enforcing their trademarks and other intellectual property (IP) rights.

With her attention to detail and responsiveness, Claudia counsels clients…

Claudia Cohen’s practice spans all aspects of domestic and international trademark law. She advises brands, advertising and marketing agencies, and celebrities on protecting and enforcing their trademarks and other intellectual property (IP) rights.

With her attention to detail and responsiveness, Claudia counsels clients on trademark clearance and selection, prosecution, portfolio maintenance, policing, enforcement and licensing. She provides effective solutions to trademark clearance issues and develops strategies to help mitigate the risk of infringement claims. When claims do arise, she draws on her earlier litigation experience to defend clients’ rights and resolve matters quickly. In addition to enforcing and safeguarding the value of a client’s IP, Claudia acts to uncover and stop infringements, including in all types of advertising, on the internet, on social media platforms and in domain names.

Claudia’s trademark prosecution experience includes creating strategies to overcome registration refusals by the U.S. Patent and Trademark Office and successfully obtain trademark registrations. She also initiates and defends trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.

Claudia has practiced commercial litigation at Davis+Gilbert as well as earlier in her career at Milbank LLP. She also maintains an active pro bono practice focused on IP issues.

Read more about Claudia G. Cohen of Davis+Gilbert LLPEmailClaudia's Linkedin Profile
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  • Posted in:
    Intellectual Property
  • Blog:
    ILN IP Insider
  • Organization:
    International Lawyers Network
  • Article: View Original Source

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