July 31, 2019

The music industry has been in the news a lot recently regarding intellectual property rights and related disputes. Just this week, a federal jury determined that Katy Perry was liable for copyright infringement. This tracks with the ongoing trademark infringement lawsuit filed by Gibson Brands, Inc., which continues to fascinate me.

Though in my research of these various topics and the feedback I have received from writing about these legal issues, I have learned that the terms “trademark” and “copyright” are being used interchangeably by the public. This is troubling because they are absolutely not the same thing.[1] I would therefore like to take the opportunity to explain the differences in these two legal doctrines. Because not all “infringements” are identical acts.


According to the United States Patent and Trademark Office:

A trademark is generally a word, phrase, symbol, or design, or a combination of these elements, that identifies and distinguishes the source of one party’s goods from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than goods. The terms “trademark” or “mark” are commonly used to refer to both trademarks and service marks. 

Most trademarks are word marks. Typically a famous name like EXXON or a famous phrase like “JUST DO IT.” Trademarks can also be logos or stylized designs. Anything that identifies a source of goods or services. Color can be a trademark. Sounds can be a trademark (think the NBC ‘chimes’). The more creative, the better (and the stronger that mark would be).

Trademark infringement, meanwhile, happens when a third-party uses a legally protectable trademark in a manner that is likely to cause confusion among relevant customers.[2] The “likelihood of confusion” test is that which determines infringement. The actual test varies by jurisdiction, but typically it is a multi-factor, non-exclusive test that compares the similarity of the marks, the sophistication of customers, evidence of actual confusion (if any), the types of marketing and media and advertising, and evidence of intent (if willful or not).[3]

One key factor is that an infringing mark does not have to be identical to the legally protected trademark for there to be infringement. Not surprisingly, when the offending mark is identical to the trademark, infringement is nearly always found.[4] Infringing trademarks need only be “likely to confuse.” There is no requirement that it be copied directly from the legal trademark owner. This is because trademark laws exist to protect the public – the goal is to provide the relevant consumers with the necessary information to identify products they affiliate with a specific provider or source of these goods and services. Infringing marks are a threat to this public benefit.

Copyright laws work differently and apply different, more rigid tests to determine infringement.


According to the U.S. Copyright Office:

Copyright, a form of intellectual property law, protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.

Copyright also exists at the precise moment of creation. Copyright typically refers to works or art or visual works. Music, movies, books, paintings, sculptures and such. All of these are protected by copyright law. The key to copyright is “originality” – any original work of authorship is subject to legal protection. The more unique and original, the stronger the copyright. Some works may technically have copyright protection, but the original elements within that work are few and far between. These are recognized as “thin” copyrights. Which means in practice that they are legally protected almost entirely in theory but not in actuality.

Copyright infringement, meanwhile occurs when a third party copies the “original” elements of a copyrighted work without the permission of the copyright owner.[5] In the event where there is not direct evidence of copying, the law requires a fact-based demonstration that assesses (a) access to the copyrighted work, in balance with (b) whether the two works are “substantially similar.”[6] If there is no evidence of access, the copyright owner must provide evidence that the works are “strikingly similar” – though this is a sliding scale of sorts. The more access the alleged infringer had to the copyrighted work, the less stringent the test for similarity typically is.

Unlike trademark infringement, copyright law is more exacting and requires not just similarity but substantial or striking similarity for there to be an infringement. This is partially because copyright exists at the moment of creation and there needs to be a balance of fairness to third-parties to be able to also create independent works and express themselves. If you never saw or previously had access to a copyrighted work, but are accused of infringing that same work, a lower standard of proof would create a chilling effect throughout the artistic community.

The “public interest” factors that apply in trademark law do not carry the same weight in copyright law. Of course, the public’s interests are somewhat balanced in the end. For example, trademarks can be enforced indefinitely against potential infringers so long as the mark operates as a trademark and continues to be used in commerce without abandonment. Good trademarks last forever. In contrast, copyrights are only protectable for limited times, typically the life of the author plus an additional 70 years. Thereafter, these works are in the public domain (unless you are Mickey Mouse…).


Here is the twist ending you did not see coming, however. Some works can be both copyrighted and also protected as a trademark. Hence my reference to Mickey Mouse. The copyrights for Mickey Mouse were originally set to expire towards the end of the 20th century. Until Disney’s lobbyists pushed through the Sony Bono Copyright Term Extension Act of 1998. This bought Disney another 20+ years of time. The copyrights for original Mickey Mouse works are now set to expire within the next handful of years.

To the surprise of no one, Disney has pivoted and now seeks to enforce all Mickey Mouse images and likenesses as trademarks. Even those that might be technically public domain in the world of copyright law.

The conclusions to draw here are that trademarks and copyrights are vastly different things and different rights emanate from each. At the same time, some works are afforded protections under both the copyright and trademark umbrella. You just need to be precise when discussing which aspects of originality and/or source-awareness a hybrid copyright/trademark has when accusing a third-party of infringement. Because the tests and supporting evidence are quite different.

[1] I often like to joke about how the founding fathers cared more about copyright than free speech or gun rights. And it’s true. Copyright is explicitly enumerated in the U.S. Constitution. Trademark rights, meanwhile, are more indirect and are mostly statutory rights enacted through the Commerce Clause.

[2] Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008)

[3] See generally In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).

[4] I recently litigated and won a case involving identical trademarks. Brush Dentistry, PLLC v. Dr. Phuong Pham d/b/a Brush Dentistry, No. H-16-3379, in the Southern District of Texas, Houston Division (Final Judgment and Permanent Injunction issued on July 10, 2018).

[5] Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).

[6] Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000).