When it comes to properly protecting brands from would-be infringers, it is important that business owners realize that the various intellectual property (IP) regimes in place are not necessarily mutually exclusive in the scope of protection that they can afford.  Nowhere is this truer than in how a business chooses to protect those symbols or emblems that it uses to distinguish itself and its products in the marketplace and which are commonly referred to as “logos”. 

Conventional wisdom has it that a logo is best protected by registering it as a trade-mark.  This makes sense, mainly because the primary purpose of a logo is to act to distinguish a trader’s wares and services from those of other traders in the marketplace.  Interestingly, the precursors of modern day trade-marks were often logos, sometimes consisting of stylized initials, which were used by members of various guilds to mark their wares, such as baked goods, or in the case of masons, stone works. 

In many cases, concurrent and equally important IP protection for logos is also available under copyright law.  This is because most logos are, pursuant to the Copyright Act, considered artistic works of sufficient originality to merit protection from unauthorized copying by third parties.  Keep in mind that the level of “originality” required in order for a work to be capable of copyright protection is exceedingly low, and does not require the artistic work to be novel or even unique for copyright to subsist in the work.  In other words, as long as the logo is unique enough in the trade-mark sense to distinguish a business’s wares and services from those of others, then it would certainly be original enough to merit copyright protection. 

In order for business owners to take advantage of the copyright protection afforded logos, it is imperative, however, that business owners understand that ownership of copyright in a logo is, unlike the concept of trade-mark ownership, not predicated on being the first to use the “original” logo in commerce.  In fact, in the usual case where a business contracts with a graphic designer to design a logo for the business, it is the graphic designer (i.e. the artist, or in copyright parlance “the author”) who is the original owner of copyright in the logo.  Copyright ownership by the artist in the logo must then be assigned in writing to the business for the business to be able to claim concurrent copyright and trade-mark ownership in the logo.  A waiver of the artist’s moral rights should also be obtained by the business in order to grant the right to the business to modify or change the logo without violating the artist’s moral rights to the logo under the Copyright Act.  Without the proper and legally binding assignment of copyright in the logo to the business, the original artist (as original owner of the copyright) has the legal right to prevent the business from copying and using the logo without the artist/owner’s permission.

Establishing copyright ownership in a logo effectively broadens the scope of IP protection available to the logo’s owner, by making available concurrent, yet distinctive remedies in the face of infringement by third parties.  For example, Copyright Act remedies include the availability of statutory damages (between $500 and $20,000 per work infringed), which may be a copyright owner’s only source of compensation in cases where either damages or an accounting of the infringer’s profits (the only monetary remedies provided for under the Trade-Marks Act) is difficult or impossible to prove. 

Being able to bring a claim for copyright infringement is also helpful in cases when trade-mark infringement itself may be difficult to prove.  This can occur in situations where the infringing logo is not considered “confusing” with the complainant’s logo.  For example, the two logos, although very similar in appearance, may be used in completely different channels or trade or for very different wares or services, such that confusion between the two logos in the marketplace is likely not to occur.  Or, it may be the case that the infringer is not in fact “using” the infringing logo as a trade-mark (i.e. the infringer is perhaps copying and displaying the infringing logo, but not using it in commerce to distinguish the infringer’s wares and services in the marketplace), which would preclude a remedy under the Trade-Marks Act. 

In each of the above scenarios where trade-mark protection for a logo could fall flat, a claim based in copyright infringement may succeed, as the criteria for establishing copyright infringement differ substantially from those required to make out a claim in trade-mark infringement.  Put simply, copyright infringement occurs when a work that is substantially similar to the original work being protected is reproduced in any medium without the copyright owner’s permission:  “confusion” and “use” as defined by the Trade-Marks Act need not be established.  Copyright law will therefore act to prevent the unauthorized copying and distribution of a business’s logo in many situations (such as on the Internet) that trade-mark law will not. 

Given the broader protection against infringement that copyright ownership in a logo can provide, it is therefore highly recommended that addition to trade-mark registration, copyright registration of the logo is also obtained.  The registration of copyright in a logo acts as prima facie proof that copyright subsists in the logo and that the registered owner is in fact the owner of copyright in the logo.  The process of registering copyright in Canada is quick and inexpensive (the government filing fee is currently $60.00), and for all business owners whose branding includes the use of logos, should be included as part of the business’s IP protection strategy.  

James Katz is an Associate with the law firm of BrazeauSeller.LLP. He practises in the areas of litigation and intellectual property. James can be reached at 613-237-4000 ext. 267 or at jkatz@brazeauseller.com. For more information about James, visit www.brazeauseller.com.