What does a trademark have to do with the public domain?

If you’re not going to use a public domain work to promote a product or service ... no worries. You won’t run afoul of trademark law.

Here’s another “gotcha” when you’re dealing with public domain works: trademark law. Even though a work may be free of copyright, if you use it commercially, to promote a product or service, you might violate someone else’s trademark rights. I’m sure you don’t want to do that, so let’s look at how to avoid it.

What’s trademark law got to do with the public domain?

Trademark law serves a different purpose than copyright law. Trademark doesn’t protect original expression — its purpose is to help consumers identify the source of goods and services.

But it just might happen that a public domain work you want to use will include a trademark (or trademarks). And, unlike copyrights, trademarks can be perpetual. As long as a trademark is used in commerce (to identify a product or service), it’s protected. So even though you’re free to copy out-of-copyright works, you might have a trademark issue — depending on how you use the public domain work.

What are trademarks and what rights do trademark owners have?

The term “trademark” includes any word, name, symbol, design, sound, color, or product configuration (for example the shape of a Coca Cola® bottle) that is used to identify and distinguish a product or service in the marketplace.

Trademarks are usually pretty easy to spot. The ™ (goods) or ^SM (services) symbol is used when trademark rights are being claimed but the mark isn’t registered in the US Patent and Trademark Office (USPTO). The ® symbol is used when the mark has been registered. (You also might see the following for registered marks: “Registered in the US Patent and Trademark Office” or “Reg. US Pat & TM Off.”) But, heads up: these notices aren’t mandatory, so lack of one doesn’t mean there’s no trademark.

Let’s look at an example

Trademark owned by New York Life Insurance Company

See that New York Life logo there? The words “New York Life” (lettered as you see them, against a rectangle) are a registered trademark, as is the image of the New York Life building’s tower with its octagonal golden spire. The building itself is in the public domain.

What if you wanted to use a picture of that building?

If you wanted to photograph the New York Life building, you surely could (and why not? it’s a beautiful example of Cass Gilbert’s neo-Gothic architecture). But if you used an image of the building’s tower to sell life insurance, you’d soon be hearing from New York Life’s lawyers. Why? Selling competing services with the same trademark would confuse consumers ... and that’s the big no-no in trademark law.

Trademarks identify brands so people can identify the source of goods or services. You violate another’s trademark when you sell competing goods or services with the same, or a confusingly similar, mark. If the goods or services aren’t competing, well then, confusion isn’t likely. (For example, United Airlines and United Van Lines.)

Trademark rights have limits

While trademark owners are able to trademark specific words, images, etc., it doesn’t mean they have a monopoly on their use. They just have the right to use their mark in commerce and to stop others who offer the same type of goods or services from using a confusingly similar mark.

Caveat: If the trademark is famous, the trademark owner can stop others from using their mark even on noncompeting goods, if the other’s use of the mark dilutes the famous mark’s distinctive quality. For example, you probably couldn’t use Disney for barbeque grills without authorization.

(I’m not sure if New York Life’s trademark would be famous enough to prevent someone from using a picture of the building’s tower on, say, beach towels. Courts have had different opinions about how well-known a mark must be to be “famous.”)

When should you worry?

Most of the time, when you’re using a public domain work you probably won’t have to worry about trademarks. So when would you? If you use the work as a trademark (for example, in advertising or on merchandise), and ...

the work is a public domain image that includes a trademark (for example, a building or a sign with a logo, slogan or product name, or even a shape ... like a Coke bottle)
you use a character from a public domain work, and the character is a trademark (Tarzan, Mickey Mouse, and Peter Rabbit are famous examples)
you use a trademarked word, phrase, or logo as part of your product’s name or packaging
you use a work’s title, and the title is protected as a trademark (usually, a well-known title that the public associates with a specific work)

But again, you’d have to be using the public domain work as a trademark.

If your use is informational, it’s fair use

Trademark law allows us to make “fair use” of someone else’s trademark without getting permission. You can use a trademark in a descriptive sense, in both fiction settings (“riding my Harley”) and nonfiction (“after testing ten vacuum cleaners, we found the Dyson vacuum to have the best suction”). Using a trademark to describe goods or services, and in such a way that doesn’t suggest an association with those goods or services, is fair use. See 15 USC § 1115(b)(4).

If you use someone’s trademark to express an opinion, or to inform or educate others, there’s no infringement. That’s because you’re not using the trademark as a trademark — you’re not using it to sell goods or services. You’re use is informational, not commercial.

There’s no plagiarism in trademark law

You needn’t worry about crediting the original author of a public domain work. In a 2003 US Supreme Court case involving public domain material, the court held that once a work’s copyright terminates it enters the public domain, and trademark law doesn’t prevent others from using it without crediting the original author.

Twentieth Century Fox was the producer of a World War II video series that was no longer protected by copyright. When a competitor used it, Fox sued — not for copyright infringement (because they couldn’t), but for trademark infringment. They lost. See Dastar Corp. v. Twentieth Century Fox Film Corp. et al., 540 US 806 (2003), which you can read here.

The bottom line

In the Dastar case, the US Supreme Court denied Fox’s trademark claim for its public domain video series, in part because to allow trademark protection “would create a species of mutant copyright law that limits the public’s ‘federal right to copy and to use’ expired copyrights.” But when formerly copyrighted works are also protected by trademark you must (depending on your use) be careful.

Remember, though ... to violate trademark law, you must be using the word, picture, slogan, or whatever as a trademark, and in such a way that consumers would confuse your goods or services with those of the original trademark owner. Informational or editorial use is okay (you don’t need permission), but for commercial use ... get permission or take your chances.

And with that, we’ve come to the end of our tutorial. Wait ... no we haven’t. There’s one more loose end to tie up, and it may be the neatest trick of all. Some works that used to be in the public domain are back under copyright protection once more ...