Artist creates art.
Copyright on art automatically attaches to Artist, because basic copyright law stuff.
Manufacturer sees art.
Manufacturer manufactures product with art plastered on item.
Manufacturer labels artwork as "TM".
Does Manufacturer have a valid trademark with respect to that art?
If ThirdParty uses the art on a similar or same product, can ThirdParty defend against a trademark infringement lawsuit by pointing out that Manufacturer violated Artist's copyright? Does Artist need to be a part of the lawsuit? What if Artist is unknown and unfindable?
Way too many things about your post that I don't understand.
Has the manufacturer licensed the art for use on the product?
Has the manufacturer licensed the art for use in the trademark?
It is possible that the manufacturer may have a valid copyright, but one that they cannot display because it would violate the artist's copyright.
Quote from: Robert T Nicholson on 03-16-19 at 05:16 AM
Has the manufacturer licensed the art for use on the product?
Has the manufacturer licensed the art for use in the trademark?
No, and no. The artwork's creator is a random person on the internet with no ties to the manufacturer.
Quote from: MYK on 03-16-19 at 06:31 AM
Quote from: Robert T Nicholson on 03-16-19 at 05:16 AM
Has the manufacturer licensed the art for use on the product?
Has the manufacturer licensed the art for use in the trademark?
No, and no. The artwork's creator is a random person on the internet with no ties to the manufacturer.
Wow! What a mess.
This is an interesting question. I have not done a thorough search, but I can't find any indication in US law that a copyright violation is a valid reason for refusing or for overturning a trademark.
I did, however, find a discussion of precisely this situation in a research paper on differences between Chinese and Japanese IP law:
https://www.wipo.int/export/sites/www/about-wipo/en/offices/japan/research/pdf/china_2010.pdf
Apparently, under Chinese law,
anyone can file an opposition to a trademark based on a conflict with a valid prior copyright.
"Registering another's copyrighted work as trademark without the authorization from the copyright owner shall be deemed as an infringement upon another's prior copyright, the application for registration of the trademark at issue shall not be approved or the registration of the disputed trademark shall be cancelled."But without similar explicit language in US trademark law, I don't think the copyright violation would be a valid reason to overturn the trademark.
I agree with Robert's analysis. It is interesting to see that Chinese law blocks the TM due to a copyright violation, but under US law, I am not aware of any "cross-referencing" between copyright and TM law.
TM law is directed to consumer identification. The question is, will a consumer associate that product with that brand. If manufacturer has infringed on a copyright in generating his TM, I don't see any reason why his TM wouldn't still be valid (but admittedly I've never formally dealt with this issue).
I would think that this would be a terrible business decision, as the manufacturer would be infringing the copyright for each product they make. Artist would have a wonderful remedy as against manufacturer on copyright infringement grounds.
Thanks, Robert. Thanks, Evil.
Interesting that in China, "the public" has the right to sue. It would be nice to have that in the U.S. as well, to go after copyright trolls like Getty Images, who have been caught trying to extort licensing payments from people who used public-domain images (and, IIRC, in one case even a photo the person using it had taken herself). Not to mention the "freebooters" who keep stealing YouTube videos and even out-of-copyright books.
I agree it's a terrible business decision, but what's funny is that they're not even really using it as a trademark. They're not identifying the product or the source using the artwork, they're just using it as artwork and tacking a "TM" next to it for, I guess, protection against other companies putting out the same product with the same markings. Think tee shirts, baseball hats, whatever.
I'd love to see the original artist go after them on it. I doubt the original copyright was registered as it was just a throwaway joke drawing that got insanely popular. Since the original was not used in any economic way, though, I don't even know how someone could prove economic damages to make it worthwhile.
In Australia you would claim section 43 (misleading and deceptive conduct or contrary to law). Also, there is a trick I pull on trolls when they register a client's stylised mark. I threaten them with copyright infringement if they ever use it. File another TM application immediately then file a divisional to keep it alive and preserve the filing date - then when the non-use period is up - I file for non-use of the registration. And my life just got easier as our time period for filing a non-use application in Australia just got reduced to 3 years.
:) happy days