Taking counsel: Copyright in trademark 's an issue that should not be forgotten

  • 2008-03-19
  • By Jurate Truskaite [Jurevicius Balciunas & Bartkus]
A work of authorship is a broad concept. It refers to any original result of creative activities in the literary, scientific or artistic domain, whatever its artistic value or mode or form of expression may be. A trademark may also constitute a work of authorship if it is original and sufficiently creative. Lithuanian courts have already granted copyright protection to an emblem used as a trademark, a music disc cover, a wine label and a newspaper layout and design. However, when drafting agreements related to the creation or use of trademarks, the issue of possible copyright protection is often forgotten. Such practice is not well thought-out, as it leaves significant risks out of consideration.

If a trademark is protected by copyright, a copyright is comprised of moral and economic rights. Moral rights always remain with the individual who created the work and cannot be transferred. Pursuant to Lithuanian law, moral rights are the right of authorship, the right to the author's name and the right to inviolability of a work. Hence, a failure to indicate the author's name in copies or an alteration of the work without the author's consent may constitute an infringement of the author's moral rights 's unless such acts had been approved by the author in advance (for example, by having the author's prior written permission [request] not to be indicated in the copies of the work, etc.). In the case of infringement of the author's moral rights the author may demand termination of the infringing use of the trade mark.
Economic rights to a work are exclusive rights over the economic use of the work, including its reproduction in trademarks. Pursuant to the Lithuanian Law on Trademarks, the copyright holder is entitled to oppose registration of a later trademark or bring a claim for its invalidity if the trademark is identical to, or misleadingly similar with, the author's work, and no consent has been granted to such registration by the owner of economic rights.

Therefore, if a trademark is an object of copyright, it is important to receive from the holder of economic rights a prior written consent, or alternatively, to acquire the economic rights to the trade mark. In order to determine the holder of economic rights, it is important to verify whether the work has been created individually or in the course of employment (in the latter case the principles of attribution of economic rights differ in each of the Baltic states and should be verified on the basis of applicable law). As the economic rights are transferable, it should also be verified if they have not been transferred.

The legal significance of a copyright to a trademark is manifold. For example, the Lithuanian trademark law does not protect unregistered trademarks, and so ownership of a copyright to such a trademark may be a crucial argument in a dispute against another person who starts using the same trademark or even files an application to register it. This is especially true if the other party's bad faith cannot be proved. Further, according to Article 52 (2) of the Community Trade Mark Regulation, a copyright protected under national law of a member state also forms the basis for declaring a community trade mark registration invalid.
An argument of the breach of the author's moral rights often emerges in cases when several people who had been peacefully using the same trademark for a certain time later part ways and quarrel over the entitlement to use the relevant trademark. The court practice concerning such disputes is not yet settled; however, it has a tendency to uphold the side of that party who is supported by the copyright holder. Accordingly, courts prohibit the use of a trademark to the party who is charged with the breach of author's moral rights (for example, because of a failure to mention his or her name in copies of a trade mark, or alteration of the trade mark without permission).

It is therefore obvious that copyright should not be forgotten to consider when developing a trademark.

Jurate Truskaite is an associate advocate at Jurevicius Balciunas & Bartkus, a member of Baltic Legal Solutions, a pan-Baltic integrated legal network of law firms including Glikman & Partnerid in Estonia and Kronbergs & Cukste in Latvia, dedicated to providing a quality "one-stop shop" approach to clients' needs in the Baltics.