In Brief:  A trademark has to meet minimum standards of creativity for a copyright registration.

Here’s What Happened:   

Speedway Motors Inc. (not to be confused with the Speedway gas stations and convenience stores) sells parts for race cars and hot rods. Speedway hired a marketing firm to come up with a logo design. The design was supposed to give the impression of movement and speed.

Instead of filing an application to register the logos as trademarks, Speedway filed an application to register the logos with the US Copyright Office. Copyright protects original works of authorship fixed in a tangible means of expression. A copyrighted work has to meet minimum standards of creativity. Trademarks protect source or product identifiers. Trademark ownership protects against a likelihood of confusion in the marketplace. One is not a substitute for the other.

The Copyright Office refused Speedway’s registration of the logos because they failed to meet the minimum standard of creativity.

Speedway appealed within the Copyright Office and lost. Then Speedway filed suit in federal court seeking an order determining that the logos were copyrightable. The federal court sided with the Copyright Office.

The court addressed whether the logos were sufficiently original. "Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." There was no dispute that Speedway's marketing firm had independently created the logos; the question was whether the designs met the admittedly low threshold for copyright protection. The court came to the conclusion that they didn’t using the following analysis.

First, the court noted that "whether a work is subject to copyright turns on how a work is perceived." It didn’t matter what Speedway's marketing firm intended. The issue was whether the marketing firm actually achieved the impression of movement with the design.

Second, the Copyright Office described the logos as a combination of unregisterable elements (circles, a single letter and a short phrase). The Copyright Office's longstanding position is that basic shapes, typeface and lettering are generally not subject to registration. The Office examined the logos and came to the conclusion that (1) the stylized purple band was still, in essence, a circle, and (2) the text, though artistically rendered, was still typeface.

Third, the selection and arrangement of the individual unregisterable elements (such as the stylized purple band, the artistically rendered text, and the deliberately selected shades of yellow and purple) failed to satisfy the originality requirement.  Two solid colors were used with no shading or gradient. Even with different widths, the circles are still just circles. Placing a business name on a shape is a “garden variety” configuration.

Finally, the court rejected Speedway's argument that the Copyright Office’s refusals here were inconsistent with prior decisions granting protection to corporate logos. The Copyright Office determines copyrightability on a case-by-case basis. So other corporate logo registrations don’t matter. 

WHY YOU SHOULD KNOW THIS: Speedway Motors probably wanted to avoid a refusal from the USPTO because of other Speedways. But it didn’t work. Even if Speedway had been successful, trademarks and copyrights have different standards for prohibiting use by third parties. A copyright registration would have given Speedway limited protection in the marketplace. Speedway may have been better served by rebranding to something that was protectable as a trademark.

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