Copyright Ownership in Logos Confirmed as Key Ingredient
Recent Assistant Commissioner’s decision 2020 NZIPOTM 3 Mia Nathan-Joyce involved the rarely considered but important issue of copyright ownership in device marks...
On 31st July 2017 Mia Nathan-Joyce (MNJ) applied to register the LOVE SOUP FEED THE NEED device mark in respect of charitable services. While examiners do not routinely require applicants of device marks to show that they own the copyright in the device mark, they nonetheless can exercise their discretion to require proof of ownership if they have doubts about whether the applicant owns copyright in the device mark or has authority from the copyright owner to register it. In this case questions over copyright ownership arose on account of an application by another applicant – Julie Anne King (JAK) – on 24th November 2017 to register the identical mark also for charitable services. In February 2018 JAK gave a statutory declaration stating that she commissioned and paid for the work and as such qualified as the copyright owner. The examiner raised a contrary to law objection to MNJ’s trade mark application on the basis that on the available evidence MNJ is not the copyright owner , and invited her to provide evidence showing otherwise. MNJ responded with a statutory declaration in which she claimed that the device was not commissioned by anyone and that she claimed right to use it in respect of her trade mark application, and subsequently sought a hearing on the issue.
In assessing the evidence MNJ provided at the hearing the Assistant Commissioner found that it did not specifically address the issue of copyright ownership or MNJ’s right to use the device and either post-dated the application date or was undated. At the hearing MNJ claimed that the creation of the device was a collaborative process largely carried out on the Love Soup facebook page and through direct messaging and so sought to challenge JAK’s claim to copyright ownership in the device. MNJ also noted that JAK used a different device and had made televised statements to the effect that JAK had no need or want to register the device mark.
The Assistant Commissioner held there to be insufficient evidence to challenge JAK’s claim to copyright ownership by way of commissioning and noted that while heart shaped devices are common that the device mark has sufficient originality in order to be eligible for copyright protection. Further, while JAK was not using the device mark she still retained ownership of copyright and could commence using it at her discretion.