Copyright Office Review Board Denies Copyright Registration for Two Corporate Logos

Despite the growing pressure on corporations and organizations to strengthen legal protection of their corporate logos, their attempts to enlarge the utility of copyright law for this purpose have proven futile. Two recent decisions by the Copyright Office Review Board (“CORB”) are particularly illustrative.
The first decision concerns the Union des Associations Européennes de Football’s (“UEFA”) “Starball” logo. Comprising a pattern of black stars and white polygons that are “warped” within a white circle, the “Starball” logo mimics the curvature of a football. In 2016, UEFA applied to register the “Starball” logo as a 2D artistic work, but the application was rejected by the US Copyright Office. Following an appeal, the CORB affirmed the Copyright Office’s decision on July 30, 2018, citing four reasons.
First, the simple geometric shapes (i.e. the stars and polygons) in the “Starball” logo were familiar and hence not sufficiently creative under Section 906(1) of the Compendium of US Copyright Practices (“Compendium”). Even taken as a whole, the arrangement of familiar shapes could only constitute a de minimis amount of creativity. Secondly, the bringing together of a few standard shapes with minor linear or spatial variations was insufficient to establish “creative expression” under Section 905 of the Compendium. Although the UEFA argued that 19 stars and polygons were not “few,” the CORB held that the expression “few” must not be construed too narrowly given that Section 905 of the Compendium prohibits the registration of “works that consist entirely of uncopyrightable elements.”
Thirdly, the CORB dismissed UEFA’s assertion that several district court decisions supported their claim. Notably, UEFA relied on Hoberman Designs, Inc. v. Gloworks Imps., Inc., 2015 U.S. Dist. LEXIS 176117 (C.D. Cal. Nov. 3, 2015), where the Central District of California held that an expandable sphere toy could qualify for copyright protection notwithstanding that the toy was merely a combination of geometric shapes. Nevertheless, the CORB distinguished this case because it concerned unique color variations and 3D shapes. Finally, the CORB refuted UEFA’s claim that the “Starball” logo was entitled to copyright protection because the stars and polygons were oriented to create a 3D sphere illusion. Refusing to hypothesize about the symbolic impression that a logo might have on any given observer, the CORB instead relied on Section 310.3 of the Compendium to reaffirm the primacy of objective appearance in the determination of a 2D artistic work.
The second decision concerns Vodafone’s “Speechmark” logo, which comprises a red apostrophe inside a white circle against a red background. Vodafone applied for both copyright and trademark registration of the mark in 2016. Despite succeeding in its trademark application, the US Copyright Office refused copyright registration of the logo in 2017. On August 21, 2018, the CORB affirmed the Copyright Office’s decision, holding that Vodafone could not be granted registration for the “Speechmark” logo because it did not possess the requisite creativity under the test of originality as set out in Feist Pubs., Inc. v. Rural Tel. Svc. Co., Inc., 499 U.S. 340, 345 (1991). To this end, the CORB provided three reasons. First, contrary to Vodafone’s contention that the “Speechmark” element was a “ballooned droplet . . . readily distinguishable from an apostrophe . . . [in] its orientation,” the orientation of the “Speechmark” element was irrelevant because it was a typographical symbol that could function both as an apostrophe or quotation mark. Secondly, although the mark was more “bulbous” than usual, the symbol was still “instantly recognizable” as an apostrophe/quotation mark rather than the claimed “balloon droplet”. This was consistent with Section 313.4(J) of the Compendium, which prohibits registration of symbols usually found on a keyboard, such as asterisks. Thirdly, and finally, the CORB held that the simplistic arrangement of the other elements (comprising a circle, a square, two colors, and some shading) displayed a de minimis degree of creativity that could not entitle Vodafone to copyright protection. Significantly, this comports with Section 906(1) of the Compendium, which prohibits registration of works that merely consist of “common geometric shapes”.
A brief survey of the United States Patent and Trademark Office’s Trademark Electronic Search System indicates that prior to both requests for reconsideration, Vodafone and UEFA’s logos had already been successfully registered as trademarks. Why then did they persist in seeking copyright registration?
For a start, copyright law grants brand owners a broader set of exclusive rights. These include the right to reproduce copies of copyrighted work, the right to prepare derivative works and the right to distribute such copies. In contrast, the Lanham Act only restricts unauthorized use of a trademark to the extent that it misleads or confuses consumers. Neither does trademark law contemplate the notion of a derivative work. Furthermore, statutory damages for willful copyright infringement can reach up to $150,000 per work. Since logos that are registrable as trademarks are not barred from copyright protection, prudence requires corporations and organizations to avail themselves of maximal legal coverage.
Perhaps more significantly, copyright law is superior in its ability to provide robust third-party enforcement mechanisms. Currently, trademark law does not offer Online Service Providers (“OSPs”) a legislative framework for responding to notices of trademark infringement. Granted, decisions like Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 94 (2nd Cir. 2010) indicate that OSPs hosting trademark-infringing websites can be liable for contributory infringement if they refuse to remove infringing content upon notice. However, this is a far-cry from the comprehensive notice-and-takedown obligations that the Digital Millennium Copyright Act (“DMCA”) imposes on OSPs that host copyright-infringing content. While this disparity is no surprise given trademark law’s consumer-centric focus on source identification and fair competition, copyright law’s remedial advantage gives corporations another reason to pursue an additional layer of legal protection over their corporate logos.
These concerns are especially relevant in the Internet age where online trademark infringement is rampant. The Internet is rife with phishing websites that lure unsuspecting consumers through the unauthorized use of well-known trademarks. Moreover, the Internet’s interconnectivity amplifies reputational damage to popular brands. As such, it is no surprise that corporations are under growing pressure to take advantage of stronger copyright protections to safeguard their brands from abuse. For Vodafone and UEFA, the stakes are particularly high because they provide products/services to millions of users and their logos benefit from high visibility.
Nevertheless, the CORB was correct to reassert the minimum baseline standard of originality because it prevents companies from acquiring monopolies over basic shapes. Since shapes are the building blocks of many artistic endeavors, overprotection of simplistic corporate logos would otherwise disincentivize cultural innovation and stifle creativity. Additionally, both decisions rightly reinforce the doctrinal distinctions between trademark and copyright law. Fundamentally, trademark law is predicated on consumer protection and healthy market competition while the locus of protection in copyright law is in the author’s creative expression. This coheres with the divergent balances struck by the respective categories of intellectual property: copyright law protects a broader set of rights at the expense of a shorter protection period (generally life plus 70 years) whereas trademark law protects narrower uses of a logo for a potentially limitless duration. Conceptual clarity is welcome because it would dissuade lawyers from trying to assert exclusive copyright rights through trademark law even after copyright protection has expired.
Samuel Lim is a J.D. candidate, 2020, at NYU School of Law.