In this Article, I tackle a controversial topic-the overlapping trademark and copyright protection that can apply to creative works such as fictional characters, pictures, video clips, and songs. In particular, I highlight the possible negative consequences that granting trademark protection to these works-concurrently or after the expiration of copyright protection- can have on the societal bargain upon which copyright protection is built and justified. To date, scholars have only limitedly addressed these consequences, and more academic attention is needed in this area. In contrast, the advantages of trademark rights in creative works (in their entirety or in separated features of the works) are well known to practitioners who routinely advise their clients to secure both sets of protections as it is in their clients' best interest to have access to both, since these rights "aim to protect different subject-matter and re- strict different activities." In the past decades, several judicial decisions have partially facilitated this trend by accepting that overlapping copyright and trademark protection can co-exist in the same creative works ( e.g., in characters ). Hence the case law in this area is not fully settled, with several courts showing some ambivalence for rising overlapping rights, and other (few) courts resisting granting trademark protection in creative works when this protection would prevent these works from entering the public domain after the expiration of the copyright term.
Generally, however, the majority of courts have proved reluctant to comprehensively address the issue, and have consistently accepted that trademark protection can apply to creative works when they are used to identify products offered for sale in the market. This perceived judicial support has contributed to further overlapping protection and, in turn, an increase in trademark claims. In the past two years alone, claims for trademark infringement and dilution were brought, inter alia, with respect to characters such as "The Hobbit," "Tarzan," and "Betty Boop." Hence, the growing trend of trademarking creative works is an unwelcome development for the copyright bargain and the intellectual property system as a whole.
In this Article, I call upon the courts, and possibly the legislature, to comprehensively provide an appropriate solution against this trend . More specifically, I advocate that courts should continue to carefully scrutinize the validity of trademark claims in creative works and rely on trademark defenses to prevent distortions of the copyright bargain . I additionally advocate that the courts, as well as possibly Congress and the U.S. Patent and Trademark Office ("USPTO"), consider a system in which overlapping rights are prohibited ex ante by declaring ineligible for trademark protection creative works that are, or were, protected under copyright law. This system may be preferable to a system based exclusively on the ex post application of judicial defenses because risk aversion and the unavoidable (and increasingly high) cost of litigation can easily result in chilling effects on otherwise legitimate would-be-users.
Available at: http://works.bepress.com/irene_calboli/33/