A client of ours recently sought to copyright its label and wanted to know if that was possible. Understandably, the company didn’t want competitors copying its hard work in creating a unique and visually distinctive label for its product.
We first addressed the obvious, which is trademark protection for the name of the product. Ok, but the label is more than just the name, it is the artistic creation of a designer who was hired to give my client’s product a very purposeful and contemporary look.
So, can we copyright the label?
This seemingly simple question brings to bear a number of interesting issues. As a threshhold matter, Copyright protects original expression. The United States Supreme Court has held that with regard to copyright, originality means only that the work was independently created by the author and possesses at least some minimal degree of creativity. See Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340, 346 (US 1991). The requisite level of creativity is typically extremely low; even a slight amount will suffice. See FMC Corp v. Control Solutions, Inc. 369 F.Supp.2d 539, 561 (E.D. Pa. 2005). Classic copyright material (like prose or photographs) typically meets the minimum threshold of creativity with ease. But that is not to say that the threshold is so low as not to exist at all. Indeed short phrases, basic shapes, and lists of ingredients do not present the sufficient amount of creativity for copyright protection.
Labels, however, are typically a combination of pictures, text, short phrases, and shapes. So are they copyrightable because of the pictures and process, or not, because of the short phrases and basic shapes?
There are a number of cases that indicate that labels are subject to copyright protection. See Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541 (2d Cir. 1959). Based on case law, it appears that consumer product labels containing more than a mechanical list of ingredients manifest the amount of creativity necessary to enjoy copyright protection. See FMC Corp. 369 F.Supp.2d at 572 (citing Sebastian Int’l, Inc. v. Consumer Contact (PTY) Ltd., 664 F.Supp. 909, 913 (D.N.J.1987), rev’d on other grounds,847 F.2d 1093 (3d Cir.1988); Drop Dead Co. v. S.C. Johnson & Son, 326 F.2d 87, 92–93 (9th Cir.1963), cert. denied,377 U.S. 907, 84 S.Ct. 1167, 12 L.Ed.2d 177 (1964) (copyright on aerosol wax product label held valid); Kitchens of Sara Lee, Inc. v. Nifty Foods Corp., 266 F.2d 541, 545 (2d Cir.1959) (defendant’s use of identical pictures on cake labels infringed plaintiff’s copyrights on the labels).
For example, in one case, a label on a bottle of shampoo was found copyrightable for a small bit of text describing the product:
“Hair stays wet-looking for as long as you like. Brushes out to full-bodied dry look … WET is not oily, won’t flake and keeps hair wet-looking for hours, allowing you to sculpture, contour, wave or curl. It stays looking wet until it’s brushed out. When brushed, hair looks and feels thicker, extra full. Try brushing partly, leaving some parts wet for a different look.” See Sebastian, 664 F.Supp. at 913.
The court held that “[n]o one can seriously dispute that if plaintiff were to discover that a competitor’s package utilized the exact language as above with the exception of the product’s name, plaintiff would be entitled to protection.” Id.
The court in Sebastian instructed that the language on a label is entitled to copyright protection when it is “more than simply a list of ingredients, directions, or a catchy phrase.” See Sebastian, 664 F.Supp. at 913.
Even shorter phrases can be sufficiently original to garner copyright protection, even for commercial works, such as labels. See Abli Inc. v. Standard Brands Paint Co., 323 F.Supp. 1400 (C.D. Cal. 1970) (label was copyrightable when it contained phrases such as “Cut to desired length … Will not run … Simply slide top bead into rod as illustrated”). Indeed, the length of a sentence is not dispositive of whether it is subject to copyright protection. See Rockford Map Publishers, Inc. v. Directory Service Co. of Colorado, Inc., 768 F.2d 145, 148 (7th Cir. 1985).
In addition to text, drawings or photographs typically are protectable.
Now when you register a copyright, you have to select whether it is a work of visual art, literary work, etc. As a whole, a label certainly seems like a visual work. Indeed, often it is registered as such. Federal courts have held that the form of registration of a work has no effect on the scope of copyright. See S.C. Johnson & Son, Inc. v. Turtle Wax, Inc. 1989 WL 134802 (N.D. Ill. 1989) (finding that a work registered as a nondramatic literary work rather than a work of visual arts does not negate copyright protection in visual elements of the work). Nonetheless, you will sometimes find pushback from the Copyright Office based on the nature of the work you claim.
Where the rubber really meets the road is in compilation, meaning, the compilation of multiple elements. As with my very first example, what is the result when you combine copyrightable elements like pictures and prose with non-copyrightable elements like lists of ingredients, brand names, titles, or short phrases?
Many have and many will continue to argue that the work is registrable as a whole work in the arrangement and selection of the components. Indeed, the Copyright Act itself provides that a work as a whole can be copyrightable due to the originality expressed in the overall selection, organization, and arrangement of the work, and the United States Supreme Court has agreed. See Feist at 360; see also 17 U.S.C. § 103. Yes, originality can be displayed in taking commonplace materials and making them into a new combination and arrangement. See Drop Dead Co. v. S.C. Johnson & Son, Inc., 326 F.2d 87 (9th Cir. 1963) (finding arrangement of color, layout, design and wording on bottle of PLEDGE furniture polish is copyrightable as a whole, including laudatory and instructional text); see also X-IT Products, LLC v. Walter Kiddie Portable Equipment, Inc., 155 F.Supp.2d 577, 609-611 (E.D. Va. 2001) (finding that although short phrases and bullet points on packaging were not protectable, label as a whole was protected under copyright, which necessarily includes the arrangement of the individual elements). Even very simple arrangements can be sufficiently original to be entitled to copyright protection. See S.C. Johnson & Son, Inc. v. Turtle Wax, Inc. (finding that a label with red stripes on a yellow background with a ribbon and the company name is sufficiently original for copyright protection).
Now hold on to your hat…
Despite this line of case law, it is the well-articulated policy of the Copyright Office to deny registration of the arrangement of elements on the basis of physical or directional layout in a given space. See Darden v. Peters, 402 F. Supp. 2d 638 (E.D.N.C. 2005). Not only does this apply to labels, it applies to websites, too!! To perhaps put it another (and more awesome) way, on a phone call with an examiner from the Copyright Office wherein I recited the above mentioned case law, the examiner told me, “Well the court can say that, but that’s not how we see it.“
So where to go from here?
Are labels copyrightable?
Can you successfully register a label for copyright?
Um, maybe not.
Can you successful register just those creative elements of a label, like a picture, drawing, or prose?
YES. The way you do this is to submit the entire work, but claim only the creative elements, essentially disclaiming the rest.
There you have it – the more creative the elements of your label, the better your shot of gaining copyright protection from the Copyright Office.
Intellectual property issues like copyright and trademark can be tricky. If you or your business have a question about an intellectual property issue, contact a trademark attorney, copyright attorney, or intellectual property attorney at Briskin, Cross & Sanford.