If you have ever been tasked with considering what types of intellectual property protection were available for a new packaging design, copyright may not be the first thing that came to mind. After all, it is trademark law that is designed to protect the public’s association with a commercial name or logo, and in some cases the distinctive look (or “trade dress”) of a product and/or its packaging. Copyright, on the other hand, was designed principally to protect an author’s rights in literary and artistic works. Nevertheless, in some cases, copyright may be available as an alternative or supplemental protection for product packaging.
Benefits of Copyright Protection
Why would anyone bother with copyright protection when trademarks are available? Well, that’s just it: trademark protection may not always be available for a variety of reasons, particularly for new packaging that hasn’t yet built up “secondary meaning,” in other words, consumers don’t yet recognize it and associate it with a particular product or company. Copyright, by contrast, can be registered relatively cheaply and early in the life of a new design, without the need to show commercial distinctiveness or consumer recognition.
Copyright also has certain advantages over trademark when it comes to enforcement. In an infringement action between two similar packaging designs, there is no need to show a “likelihood of consumer confusion,” a multi-factor analysis that often requires expensive consumer surveys. Copyright law is only concerned with whether the defendant has copied the plaintiff, usually determined by examining whether the works are “substantially similar.” Moreover, copyright law boasts the most effective mechanism (the Digital Millennium Copyright Act) for quickly getting infringing matter taken down from the internet.
The Catch: Originality and Creativity
But here’s the catch: in order to get a copyright registration, you have to show that your packaging design is “original.” Originality in copyright law has two components. First (the easy part), it must have been “independently created”, i.e., not copied from someone else. Second (here’s the hard part), a work must possess more than a mere de minimus quantity of “creativity.”
Many of the common elements of product packaging design are deemed insufficiently creative for copyright protection, including common geometric shapes, simple color variations, and words and short phrases. Therefore, there are generally two paths by which the owner of a product packaging design can demonstrate the requisite creativity. The first path is to incorporate into the packaging a drawing, logo or other artwork that is creative enough in its own right to merit copyright protection, and emphasize that artwork in the application. For example. General Mills’ copyrighted packaging for Cheerios incorporates a professional photograph (of a heart shaped bowl containing cereal and strawberries). Perhaps it is not an artistic masterpiece, but it clearly demonstrates enough creative authorship (including in the selection of subject matter, angle, lighting, etc.) to merit copyright protection.
The second path is for packaging that doesn’t contain any individual element that is sufficiently creative in its own right. In those cases, the copyright applicant’s best shot is to argue that the selection and arrangement of these uncopyrightable elements, considered as a whole, is creative enough to warrant protection. The Copyright Office offers two examples of this path. The first is a design with a bunch of ordinary white circles at evenly-spaced intervals on a purple background. These geometric shapes are not sufficiently creative for copyright protection, and neither is their run-of-the-mill selection and arrangement. The second example contains a selection of common shapes that are variably sized, colored, and placed in an irregular pattern. As with the first example, none of the individual shapes are creative, but the overall selection and arrangement of the design demonstrates a sufficiently high number of creative choices to merit copyright protection.
General Mills’ attempt to register the packaging for its Larabar product is instructive as to the difficulty of pursuing the “selection and arrangement” path, especially for clean and minimalist designs. General Mills argued that its wrapper reflected many creative choices, including a logo and slogan, the selection of color, and the placement of the text in a horizontal orientation around a rectangular frame. However, the Copyright Office found that this did not amount to a sufficiently high number of creative choices.
Tips for Your Next Product Packaging Copyright Application
With the foregoing in mind, here are a few tips, and pitfalls to avoid, when planning your next copyright application for product packaging and related correspondence with the copyright office:
Put on your artist hat: Remember that copyright’s heartland is the protection of literature and art, so make sure to use the right lingo and emphasize the artistic aspects of the design. Describe in detail the creative pictorial, graphic and/or sculptural elements that the author contributed. In the event that you are forced to rely on a “selection and arrangement” argument, identify and separately describe as many individual creative choices as possible.
By the same token, avoid terms relevant only to other types of intellectual property, like “trade dress” and “distinctiveness,” which may give the Copyright Office the sense you’ve come to the wrong place. In the Larabar case, General Mills asserted that its wrapper merited copyright protection because it was “unique,” in that nobody else has previously come up with this precise design. The Copyright Office rejected that argument, explaining that uniqueness (or “novelty,” a term of art in patent law) is irrelevant to the “creativity” analysis. In copyright law, unlike in patent law, a design is either sufficiently creative or it is not, irrespective of whether it is new, novel or innovative.
Shift your shapes: Because copyright law does not protect common shapes, the Copyright Office tends to be suspicious of designs in which geometric shapes dominate. For this reason, the Copyright Office has denied protection to a number of well-known graphic logos, including Adidas’ three black trapezoids and UEFA’s “starball,” a set of stars and octagons in the shape of a soccer ball.
If your packaging consists of common shapes, emphasize any way in which the shapes are irregular, imperfect, inconsistently colored or are arranged in non-traditional patterns. For example, Victorinix AG recently succeeded in convincing the Copyright Office that a series of black and white graphics, consisting of original arrangements of common shapes, was deserving of copyright protection.
Don’t rely on standard packaging elements: The Copyright Office is reluctant to grant protection to a design that is heavily reliant on elements typical in product packaging, such as the product name, frames and borders; or functional components such as nutritional information or UPC codes, which are dictated by industry standards or regulations. Moreover, the mere arrangement of these items on the packaging will be insufficiently creative in most instances, because spatial layout is considered a template for expression, not original expression per se. In the case of the Icelandic Cod Liver packaging, the Copyright Office determined that it was comprised of nothing more than uncopyrightable standard design elements such as labels, simple shapes and rudimentary color selections. Moreover, the selection and arrangement of these elements, even if aesthetically pleasing, was not creative, but rather dictated primarily by functional considerations.
Busy is better: In theory, a simple design should stand just as much a chance of being deemed creative as a complex one. But not in practice. A busy design with many parts is more likely to contain pictorial or graphic elements that catch the Copyright Office’s eye as creative. Moreover, a busy design is more likely to manifest the kind of unusual or irregular pattern that the Copyright Office may determine demonstrates a selection and arrangement with a sufficiently high number of creative choices.
Consider the text separately: Copyright Office rules discourage the registration of words, short phrases, typeface and font. However, this does not mean that none of the text on a product or its packaging is copyrightable. Even if your design doesn’t make the grade as piece of visual art, original text of sufficient creativity and length (usually more than a couple of sentences) may be entitled to protection as a literary work, independent of its placement on the packaging design.
Become a temporary nihilist: The design of your packaging may have enormous symbolic meaning to you and your customers, but forget about that symbolism when drafting your copyright applications. Anything that doesn’t appear on the surface of a work does not help make the case for copyright protection. When Nationwide Insurance sought to register its frame logo, the Copyright Office was unimpressed by the argument that this ordinary rectangular shape was creative because it symbolized Nationwide’s efforts to “frame” its services for its customer’s needs. The Copyright Office also ignores other factors not readily apparent on the surface of a work, such as intrinsic value, artistic intent, and the time and effort expended.
Good luck. And remember to be strategic. Copyright protection comes in many forms and, depending on your individual circumstances, your best bet may be to seek protection for just the logo as a standalone work, and/or the packaging design generally as visual art, and/or the text on the package as a literary work. If there is any doubt about which path makes the most sense, consult your neighborhood copyright lawyer for a gut check.
A version of this article was originally published in Packaging Strategies.