Every business thrives on brand differentiation. One of the most effective ways to promote public identification and recognition is to enhance and protect your brand. Your brand is of course your name but it is also your logo. Beyond that, really, it’s everything about you.
As far as “formal” branding elements, logos are right there at the top. Still, there is a fair bit of confusion among business owners and even lawyers about how logos are legally protected. Are they to be registered as trademarks? Copyrights? Are logos registrable as both?
Let’s look at trademark first. Trademarks are words, phrases, symbols or designs that identify the source of a product and help distinguish that product from that of competitors. The very best way to protect your brand name and logo is to register it as a trademark. However, as we have written about extensively on this blog, federal trademark protection is not typically available to cannabis businesses because the federal illegality of “marijuana” prevents owners from demonstrating lawful use of their marks in commerce, necessary under the Trademark Act.
Although trademark law is the preferred means to protect a logo, it is not the sole intellectual property tool a cannabis business can use. Copyright protection may be available as well. Unlike trademark law, copyright law does not prohibit registration of works that concern illegal subject matter. Accordingly, cannabis-related works, including logos, often may be copyrighted.
To benefit from copyright protection, a cannabis logo must:
- Be original to the author, which means the author must have created the work independently (i.e., the work must not be copied);
- Possess a “minimal degree of creativity;” and
- Be fixed in a tangible form that is sufficiently permanent to be reproduced.
Therefore, logos that are adequately original and ornate have a strong chance of being copyright protected, even without registration. But it is in the business’s best interest to register its logo with the U.S. Copyright Office. Registration affords significant benefits, because it gives the business the right to sue and to be awarded statutory damages and attorney’s fees should it prevail on an infringement claim. In addition, copyright registration is relatively straightforward and inexpensive.
There is one significant catch, however. Many logos consist of words combined with graphic images: For example, Starbucks Coffee’s logo in which the brand name encircles a mermaid design. Trademark law allows both the words and the images to be protected. But copyright law will generally apply only to the graphic elements of a logo. Short phrases, including brand names, tag lines, and titles, are not copyrightable. You can submit a copyright registration for your logo with words and graphics. It will not be rejected by the Copyright Office, because copyright registrations are not reviewed or examined. But your copyright will only cover the pictures in your logo, not the brand names or catch phrases.
There is some risk that the federal illegality of cannabis would arise in certain facets of litigation and hinder the enforceability of the copyright. (The same would be true in cannabis patent enforcement cases, as we discussed here.) However, there is no provision in copyright law prohibiting works that address illegal activity, as there is in trademark law. Such risk is speculative as no cannabis copyright infringement case (or patent infringement case) has been litigated.
Assuming the copyrighted logo of a cannabis business is enforceable, it affords the business the exclusive right over the graphic portion of the logo’s reproduction and public display. In addition, copyright protection gives the cannabis business the possibility of receiving compensation for the use of the logo by others in some circumstances. Keep in mind, however, that a copyright will not allow you to collect royalties every time someone mentions your product by name. Nor would you want to prevent anyone from mentioning your product!
Given the fact that cannabis businesses are presently barred from securing federal trademark registration for their logos, they should consider copyright registration for the graphci portion of logos. While not as valuable as trademark protection, the value proposition for copyrights is strong because registration is cheap and easy.