The following article originally appeared on the Foley Hoag blog.
If you are having trouble obtaining a federal trademark registration for a product’s packaging, some lawyer has probably mentioned to you that copyright protection is a potential alternative or supplement. This is good advice – to a point. Copyright registration is relatively cheap, nobody will pester you about secondary meaning or use in interstate commerce, and you don’t need consumer confusion evidence to prove infringement. However, when it comes to creative expression, copyright law can be a little more demanding.
For purposes of copyright law, product packaging generally falls into one of two categories. The first category is packaging that incorporates a cartoon, drawing or other artwork that is original enough to merit copyright protection in its own right. For example, General Mills’ packaging for Cheerios incorporates a creative photograph (of a heart-shaped bowl containing Cheerios and strawberries), and that packaging (including the photograph) is the subject of a presumptively valid copyright registration.
The second category is product packaging consisting of a collection of elements (such as text, color, framing and ordinary shapes), none of which would be copyrightable on its own. In the absence of individually copyrightable elements, the applicant’s best shot is to show that the selection and arrangement of those uncopyrightable elements is creative enough to warrant protection. However, as Section 913 of the Compendium of U.S. Copyright Office Practices warns, securing copyright registration for this kind of claim may well be an uphill battle.
The “LARABAR” Packaging
General Mills’ attempt to register the copyright in its “Larabar” fruit and nut bar wrapper was just such an uphill battle. The wrapper consists of a rectangular shape, color variations, and various words and short phrases (e.g., the product name, flavor, and the company slogan).
General Mills did not claim that any one of these elements was sufficiently original for copyright protection on its own. However, General Mills argued that its selection and arrangement of these elements on the wrapper reflected “many creative choices.” In addition, General Mills argued that the wrapper should be eligible for copyright protection because it is “unique,” in other words, because nobody else is using precisely this same combination of elements.
On July 11, 2018, the Copyright Office Review Board (CORB), a body within the Copyright Office that hears final administrative appeals from refusals to register copyrights, disagreed with General Mills and affirmed the Copyright Office’s refusal to issue a registration.
CORB explained that a collection of uncopyrightable shapes and other elements is only deserving of copyright protection when the selection and arrangement of those elements manifests a “sufficiently high” number of creative choices. As an example, CORB pointed to an illustration from Section 906.1 of the Compendium. That illustration depicts a design consisting of familiar and uncopyrightable shapes. However, it still merits copyright protection because it manifests a high number of creative choices regarding shape placement, selection, color and size. By contrast, the Larabar label consisted of horizontal text, a single beige rectangular frame, and a three-color design. For CORB, this low volume of rather quotidian authorial choices did “not contain a sufficient amount of creative expression to warrant registration.”
CORB also addressed the argument that the Larabar wrapper was nevertheless “unique” because the same selection and arrangement of elements is not used by others. Even if the Larabar wrapper was “unique,” CORB held, it did not matter. Copyright requires evidence of original creative expression, not mere novelty. Unique but uncreative designs do not merit protection.
Other Packaging Decisions
Here are some other recent decisions by CORB regarding product packaging:
CORB found that the stripes, wavy blue water, words and short phrases contained in this nifty Icelandic cod liver packaging were “standard design elements” not subject to copyright protection. Neither was their combination. CORB held that many of the design elements (e.g., the placement of the nutrition information, UPC code and kosher certification) were dictated by non-creative considerations or mandated by government rules. Additionally, CORB did not consider the color combination creative because it merely mimicked the colors of the Icelandic flag.
E&J Gallo Winery filed an application to register the Camarena tequila bottle, including its embossed raised designs (of a rising sun, agave plants and a family crest), as well as the labels applied to the surface of the bottle. The Copyright Office offered to allow separate registration of some of the two-dimensional artwork (an offer declined by the applicant), but refused to register the combined bottle and artwork as a three-dimensional compilation, noting that the bottle itself was indisputably a useful article incapable of copyright protection. CORB affirmed, finding that when viewed as a whole, the selection and arrangement of labels and embossed designs on the bottle was a “mere spatial placement or format of … label elements insufficient to constitute copyright authorship.”
A German company sought registration of the two-dimensional artwork on the packaging of a skin care product. The packaging consisted of the name “Dr. Hauschka” over a logo of three nested “U” shapes, a solid yellow rectangle at the bottom, and some additional text. Affirming the Copyright Office, CORB held that elements such as the “spatial placement or format of trademark, logo or label elements … uncopyrightable use of color, frames, borders or differently sized font, and mere use of different fonts or functional colors, frames, or border” are not sufficiently creative for copyright protection. Nor is their combination where their selection and arrangement “are typical of product labels.”
Finally, here’s one that went the other way. After the Copyright Office refused registration of the packaging for Itsa flavor cards, the applicant appealed to CORB, which reversed. In a very short decision, CORB pointed to the placement of the black diamond logo, the alternating colors of the spiral pattern, and the small graphic images on the right panel, and held that these elements demonstrated the “minimal degree of creativity” required for a “thin” copyright protection, limited only to a few creative elements.
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