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I am wondering how this kind of situation is typically handled. I know that if you fail to protect your trademark, others can use it, but the same cannot be said for a copyrighted image. I am sure location also plays a part in the copyright owners rights, but just how exactly does the law handle this in most cases?

Please provide legal precedents (preferably recent and at the highest judicial level you can reference.)

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    Do you mean use a copyrighted image without license as a trademark? Or license an image as a trademark? Either way, your subsequent question is unclear. – feetwet Dec 1 '15 at 19:47
  • @feetwet I mean can someone take an image I made, and register it as a trademark without my permission. My question has been edited for better clarity (hopefully). – JRFerrell Dec 6 '15 at 9:20
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The copyright owner could block the infringing use (cease and desist, court injunction, etc.).

This is because the copyright owner has the exclusive right to reproduce the copyrighted work. This right has been enforced by the United States Supreme Court. See (among many others) Bleistein v. Donaldson Lithographing Co., 188 US 239. In Bleistein, the court held that using a work in advertisement does not block its protection under copyright:

A picture is nonetheless a picture, and nonetheless a subject of copyright, that it is used for an advertisement

The trademark would become abandoned1 (easily provable given an accepted request to cease and desist or a court injunction), and the copyright owner could then use the mark in trade.


A company might decide to use trademark protection in addition to copyright protection for many reasons. I'll list a few:

  • the company may not be certain about a mark's copyrightability
  • the copyright may expire
  • the company may prefer to have a two-pronged litigation strategy available

1. "When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances."

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No: Any reproduction or use of intellectual property covered by copyright is presumed to be infringing, unless licensed or protected by exceptions like fair-use. Commercial use of an image as a trademark is definitely not fair use!

  • Ok. But then this begs the question: Why can't people just register a logo as a copyrighted image (possibly one with extra rules like stricter policies on derivitive-works), preventing anyone from using their image as a trademark, instead of dealing with both trademark AND copyright law? – JRFerrell Dec 7 '15 at 0:04
  • @JRFerrell - You don't have to "register" anything to receive protection under either category. Logos are protected by copyright, period. If a logo is used (without infringing copyright) as a trademark it is also protected by trademark law. Trademark is most typically asserted for words or phrases used in branding, which can't be copyrighted. I can't imagine a scenario in which a copyrighted logo would get further protection by use or registration as a trademark. (But maybe there's some rare "fair use" copyright exception that is not granted for trademarks?) – feetwet Dec 7 '15 at 0:32
  • Well...it would be a good idea to register for the added protection. Also...enormous companies such as Coke use both copyright and trademark. I read somewhere that they use them for a combined advantage. Clearly Coke doesn't mess around, having top-of-the-line lawyers. So there must be a legitimate reason, a difference I am not seeing. – JRFerrell Dec 7 '15 at 1:04
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    @JRFerrell - For a large company the marginal cost of registering a trademark is virtually zero. In theory I would always prefer to seek protection under as many laws as possible if the cost were zero. In any case, you should pose this as the separate question it has become: I.e., "Why would a company register a logo as a trademark? Does a trademark offer any protections that the logo's copyright does not?" – feetwet Dec 7 '15 at 1:21
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You need to realise that the purpose of trademark law and copyright law is absolutely different.

Under trademark law, you create a name, or a logo, that people associate with your company. If they see this logo on a product, they assume that it is your product. If you get a reputation for good products, then your competitors would like to put your logo onto their products, so that people buy them. And that's what trademark law forbids.

There may be very little creativity in a trademark. Take "iPhone". There isn't really much creativity in the name. It's the word "phone", capitalised, preceded by a lowercase letter i. Now compare that with Tolstoy's "War and Peace". 1,200 tightly written pages of literature. That's about a million more times creativity.

Copyright protects the creativity behind "War and Peace". I don't think you would be able to get any copyright protection on "iPhone", because there just isn't enough creativity. But trademark law protects it because the name is printed on millions of products and associated with those products, and that's why Samsung phones are called "Galaxy" and not "iPhone". Because they are not allowed to make their customers believe that they buy an Apple product.

Concerning comments below: In many, many cases, company logos are quite simple. They may be so simple that they wouldn't even fall under copyright protection. The chances that an image that was posted to an art forum (unless it is an art forum specialised in logos) would be used as a company logo and trademarked are minimal. Should that ever happen, then using the trademark is copyright infringement.

But trademarks have a totally different purpose. I can buy a color laser printer and 1000 sheets of paper and print out a million copies of Apple's logo. That's copyright infringement (or maybe not, because I am not sure there is enough creativity to create copyright). And Samsung puts the Apple logo on a million Samsung phones (not going to happen, that would be beyond madness).

If you put an Apple logo on your product, nobody, including Apple, gives a damn that it is copyright infringement. But Apple will kill you in court for trademark violation. And it doesn't have to be a copy. It only has to be similar enough to confuse potential customers.

  • Ok...but say I create an original art piece (complete with text and an image) and post it to an art forum, or show it at a gallery. Years later I see that someone has taken my copyrighted art work, a 1-for-1 copy, and registered it as their companies logo, without my permission...is that legal? – JRFerrell Dec 8 '15 at 21:44
  • I can see the point about the text, but as for the graphical side, would there be an issue for a party with a trademarked graphic which is a exact copy of a copyrighted artwork? – JRFerrell Dec 8 '15 at 21:49
  • I don't know if it is legal for someone else to register your copyrighted work as a logo. But doing so would be absolutely pointless because any use of that logo would be copyright infringement. The logo couldn't be used. Why would anyone want a trademark that they cannot ever use? – gnasher729 Dec 9 '15 at 18:15
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I wouldn't say it is impossible to get a trademark for an image that you have no copyright for. But if you manage this, then you still have no right to use the image. So you would have a trademark that is of absolutely no use to you.

You would have to hide it from the world carefully because using your own trademark would be copyright infringement. Printing your trademark on a product that sells well would be copyright infringement on a large scale, and the copyright holder could among other things require that you stop selling products with the trademark.

  • But this answer also leaves the same question: If copyright law protects a work sufficiently, why is trademark law necessary? To me it makes sense that copyright law should be sufficient (if you didn't create and/or own an image, why should you be able to use it as your logo?), but if you find yourself in court over a trademark dispute, you can lose the case if it's found the defendant was unknowingly infringing your mark. I read that it's possible they may be given the right to use it in a different market (for instance leaving you with the west coast, and they have rights in the east). – JRFerrell Dec 8 '15 at 21:10
  • @nomenagentis That may be so, but if copyright law protected a work from use by a non-approved entity, including as a trademark, doesn't that become a moot point? If you own the copyright for the logo it doesn't matter if the work is original, you wouldn't need to worry about it for trademark purposes. But if you don't own the copyright for an image (i.e. it's not original) then according to these answers you need not even bother worrying about a work's originality because you don't own the copyright to begin with. These answers keep going around the question... – JRFerrell Dec 8 '15 at 21:24
  • Why does copyright law not prevent someone from taking an image and using it as a trademark SUCCESSFULLY, and maintaining rights to it in some cases, as long as they maintain a strictly separate market? – JRFerrell Dec 8 '15 at 21:27
  • @JRFerrell: Copyright law and trademark law protect different things. Take the FedEx logo - there isn't really that much worth of copyright protection. Just five letters with some fancy layout. But it represents the company - that's why trademark law doesn't just forbid copying, but creating similar symbols to confuse people into thinking that you are FedEx. – gnasher729 Dec 8 '15 at 21:28
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    @JRFerrell Copyright is insufficient for several reasons. One is that copyright expires; the Coca-Cola logo was created in 1885. Another is that short phrases can't be copyrighted; you can't copyright "Coca-Cola" even if you can copyright its logo, and that could lead to plenty of confusion if trademark didn't exist. – D M Aug 6 '18 at 18:34
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Perhaps you could use a copyrighted image as a trademark without permission, but you wouldn't want to actually do it. The problems are severe enough that I don't think there would be much actual precedent (because few people would make a good faith attempt to do this sort of thing without violating copyright or trademark laws), but we can still look at the text of the relevant laws.

According to 17 USC 109(a):

Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.

And according to 17 USC 109(c):

Notwithstanding the provisions of section 106(5), the owner of a particular copy lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.

So let's say there's an image you want to use, and it's published in a magazine. You can't legally reproduce that image. But you can buy a thousand copies of the magazine and a pair of scissors. You now own a thousand lawfully made copies, and can legally display or sell them.

But as I said, there are severe problems. Your logo will literally just be glued on; you have to use the physical page from the magazine and can't simply print the logo on your packaging or product. You can't use a blown-up or shrunk-down version; you're stuck with whatever size you could find. You can't really modify the copies, as that would mean you'd be creating a derivative work (unless you modify them so much that it becomes a parody or otherwise transformative, in which case it could be fair use.) You can't put the logo on TV, or in newspapers, or on the Internet. It's fairly expensive to buy a magazine for each product you want to sell. And once you run out of copies, you can't make more.

You also could run into trademark-related problems. Depending on the circumstances, the author could argue that you're misleading people into thinking he is associated with your company or product. According to 15 USC 1052(a), if a proposed trademark contains

matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute;

then the registration can be refused.

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