Unintended Consequences of Copyright and Trademark Protection in Design

December 2, 2020

By: Deborah L. Shapiro and Erica B. E. Rogers, Ward and Smith, P.A.

International Trademark Association Perspectives

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on inta.org

It is widely accepted that some designs may be entitled to both copyright protection (as original, creative expressions of an idea) and trademark protection (as indicators of the source of a product or service). Brand owners can benefit from exercising both copyright and trademark rights in such property. However, they should be mindful of potential conflict when commissioning a design from an outside designer. A potential unintended consequence is bifurcated ownership where the original copyright in the design is held by a party that can re-claim its rights long after the copyright was assigned to the trademark owner.

This feature article explores how we arrived at this divide from a U.S. perspective. It considers some arguments available to trademark owners to protect their existing rights and potential steps to mitigate the conflict between these two competing rights.