What Qualifies for a Copyright?
Copyright is a form of intellectual property that grants the creator of an original work the exclusive right to determine whether, and under what conditions, this original work may be used by others. Under US law, copyright protection exists “in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S. Code § 102. Copyright protects only the original expression of ideas, and not the underlying ideas themselves. In other words, copyright lets artists, authors and other creators protect expressive elements in their unique creations.
Copyright Registration and Enforcement for Cannabis Brands
Cannabis brands should all take steps to protect and police their interests in such copyrights, to help distinguish their brands from others.
Logos, fanciful designs on packaging, photos on websites, expressive text on packaging and websites, and a variety of other artistic materials constitute copyrights that cannabis companies may own. Diligent copyright enforcement represents one of the most significant ways cannabis companies can protect their branding and creative collateral. Copyright infringement claims provide statutory damages, making it an essential tool for use against potential copycats, counterfeiters, and IP pirates.
Is a Copyright Registration Application Sufficient to Sue for Copyright Infringement?
Much like trademarks, copyright owners may register their works with the US Federal Government and receive expanded enforcement rights in return. These expanded rights include the ability to sue for copyright infringement. Under the US Copyright Law, Title 17 of the US Code, “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.” 17 U. S. C. §411(a). This language resulted in a split among Federal Circuit Courts as to whether a copyright owner could satisfy this requirement simply by applying for copyright registration. Some courts felt that an application was sufficient to justify a copyright infringement lawsuit, while other courts believed the law required a copyright owner to possess a registration certificate (often requiring months of waiting) before suing for infringement.
Last month, the United States Supreme Court settled this division among Circuit Courts through its decision in Fourth Estate Public Benefit Corporation v. Wall-Street.com. Recognizing the significance of this case, numerous interested parties in a variety of creative industries weighed in on the controversy. Citing increased delays in the administrative timeline of obtaining a copyright registration, many argued that submitting an application should be sufficient. Others pointed to the importance of maintaining a comprehensive public record of ownership of copyrighted works as a justification for the registration requirement.
Writing for an unanimous Court, Justice Ginsburg clarified that the Copyright Law “bars a copyright owner from suing for infringement until registration . . . has been made.” The Court concluded that, except in very limited circumstances, the Copyright registration process must be complete before the owner can bring claims against alleged infringers. Merely filing an application is no longer sufficient.
How Cannabis Businesses Can Safeguard Their Brands and Intellectual Property
So, what does this mean for cannabis companies? As mentioned above, copyrights represent a key type of intellectual property for many cannabis businesses. Any cannabis company that wants to develop a distinctive visual impression likely owns many copyrights. In order to protect this important branding component, cannabis companies must now pursue copyright registrations diligently. As an essential step in the branding and IP rights protection process, cannabis companies should:
- evaluate their creative materials to identify the copyrights they own; and then
- apply to register any distinct and protectible work, to ensure that they possess the key brand protection resource – the right to sue for copyright infringement.