Section 301(d) of the Copyright Act states that: “Nothing in this title annuls or limits any rights or remedies under any other Federal statute.” While there are a few other federal statutes where a conflict might arise, the federal trademark act has led to the most judicial ink being spilled. At one time, the Copyright Office was itself acting contrary to Section 301(d): it would refuse to register a claim in a visual work if a design patent had already issued. If the design patent hadn’t issued, the Office would register the claim even if it knew that a design patent had been applied for and indeed would issue shortly.
Blessedly, an early (1995) policy decision issued by Marybeth Peters less than a year upon becoming Register (in government time, almost overnight) abandoned this ultra vires policy, by amending 37 CFR §202.10, which had embodied the infamous “election of protection” approach. Section 202.10 was amended to declare that “The availability of protection or grant of protection under the law for a utility or design patent will not affect the registrability of a claim in an original work of pictorial, graphic, or sculptural authorship.” (Prior to 1974, the Patent Office had a similar policy, but abandoned it after the decision in In re Yardley, 493 F.2d 1389 (C.C.P.A. 1974)).
A December 4, 2006 opinion by Judge Marilyn Hall Patel (of Napster fame), raises the problem of a possible conflict between trade dress protection and copyright: can trade dress protection trump the Copyright Act? (The Lanham Act has no equivalent to either Sections 301(a) or (d) of title 17). In Nova Wines, Inc. v. Adler Fels Winery LLC, 2006 WL 3498574 (N.D. Cal. Dec. 4, 2006), plaintiff produced wines under the Marilyn Monroe brand and had done so since 1987. Monroe’s estate licensed plaintiff to use on its wines the registered trademark “Marilyn Monroe,” as well as common law trademarks for her name, image and likeness. Plaintiff utilized this license to use photographs of Monroe on its bottles and had done so for 20 years. The suit involved the winery’s “Velvet Collection,” a limited edition wine “featuring historic photo portraits of Marilyn Monroe with the first ever ‘peel and peek’ label.” (The peak and peel was not a coy marketing device but rather the result of Tobacco Tax and Trade Bureau’s refusal to approve a label with a nude photograph of Monroe). The problem can quickly be seen in this more complete description by plaintiff of its collection:
A chance meeting in Hollywood between photographer Tom Kelley and an aspiring but unknown actress led to a two-hour photo session on May 27, 1949 that made history and established Marilyn Monroe as the ultimate sex symbol of the 20th century. The ten stunningly beautiful photographs from the historic session became known as the "Red Velvet" series, each one a portrait of Marilyn Monroe posing on a red velvet drape.
These images are now immortalized in the Velvet Collection wines. The most famous of the photographs appeared as the Centerfold of the inaugural edition of Playboy in 1953. That photo became the label of the 2003 vintage of the Velvet Collection, nearly all of which was destroyed in a warehouse fire shortly after the wine was released. By exclusive agreement with Playboy Enterprises, that historic photo portrait is now the label of The Velvet Collection 2004.
Kelley (and various entities under his control) had licensed the images to plaintff in 2004, but the license was eventually terminated, and eventually Kelley licensed defendant, who put out a wine with one of the photographs, which it marketed as part of its “Red Velvet Collection … ultra fine wines.” Plaintiff then sued for trademark infringement, trade dress infringement, unfair competition and passing off. Judge Patel’s decision was on plaintiff’s motion for a preliminary injunction.
One of defendant’s arguments was that as a licensee of the copyright owner on the photograph (Kelley), it couldn’t be sued for trade dress infringement merely by using the photograph. I think that’s correct, but Judge Patel disagreed:
Defendants assert that TKS owns copyrights in the Red Velvet Collection images, and plaintiff's trade dress interests cannot prevent TKS from licensing its copyrighted works to Adler Fels for the use on wine labels. This case therefore presents a conflict between two asserted intellectual property rights: Nova's trade dress and TKS's copyright. The issue is whether plaintiff's trade dress rights can prevent TKS from exploiting its copyright by licensing images for use on wine labels. While the parties cite to no cases addressing this specific intersection between copyright and trade dress, the Federal Circuit has found that service mark registration does not give the owner of the mark the right to infringe another's copyright. Boyle v. United States, 200 F.3d 1369, 1373 (Fed.Cir.2000). In Boyle, a copyright owner challenged the government's failure to cancel a competitor's service mark registration which, according to the copyright owner, effectively destroyed his copyright. Id. at 1372. Although the court declined to reach the issue on sovereign immunity grounds, the court noted that while a “grant of a service mark registration entitles the registrant to certain rights and privileges under the Trademark Act [citations], the right to infringe another's copyright is not one of those rights.” Id. at 1373. The court therefore held that, as a matter of law, “the government's issuance of a service mark registration ··· cannot be construed as either authorization or consent for it to infringe Boyle's copyright,” and that “possession of a service mark is not a defense to infringement of a valid copyright.” Id. at 1373-74. A complementary conclusion is that a valid copyright does not entitle the copyright holder to infringe another's trade dress rights. This is particularly true where, as here, the plaintiff's trade dress rights are considerably broader than the defendants' copyright interests at issue. Nova has developed a unique trade dress, over a substantial period of time, comprising the use of Marilyn Monroe's name and image on wine labels. The trade dress interest therefore covers all images of Marilyn Monroe used on wine labels. These rights are broader than TKS's copyright interests in the specific images comprising its Red Velvet Collection. Plaintiff's trade dress rights therefore entitle it to prevent TKS from exercising the narrow portion of its copyright interests consisting of licensing images of Marilyn Monroe for use on wine bottles.
Assuming defendant did not use other elements of plaintiff’s trade dress, how could this be correct? What would happen if Kelley had sued plaintiff for copyright infringement at the expiration of the license, would Judge Patel have held that there was no liability merely by virtue of defendant’s trade dress ownership? And, while Judge Patel seemed taken with her “complementary conclusion,” I’m not: the issue is not whether a copyright permits the owner thereof to infringe a trade dress, but rather whether a lawful use of a copyrighted photograph itself licensed by the owner of rights in the image can form the basis for a trade dress action where the trade dress consists of an unlicensed use of the copyright. Phrased that way, I think the answer is no: how can one have a valid trade dress in an unauthorized use of a copyrighted work?
I would have no problem if the defendant's use of the image in the copyrighted photograph exceeded the scope of the license from Monroe (that is, defendant had no right to market the photograph of Monroe's image on wine bottles, but only in stand alone photographic displays), therefore leading to a right of publicity claim by her estate, but I don't get how such a use could form the basis for a trade dress action by a third party. My good friend Marty Schwimmer of the Trademark Blog knows far more about these matters than I , though, and may well disagree.