I’m now back from Germany, where I traveled to help with a program sponsored by the University of Washington School of Law.
It combined UW law students with law students from Europe. The Europeans learned about American intellectual property law, and the Americans learned how they do things in Europe.
I spoke on two topics: “look and feel” protection under U.S. trademark law, and right of publicity under U.S. law. These issues come up from time to time in my practice, so they may be of interest to trademark owners.
The takeaway for “look and feel” protection: distinctive elements of product packaging, store interiors, or product design can be protectable under trademark law as “trade dress” if together they tell consumers where the product comes from. In other words, if they function the source-identifying role that trademarks play.
However, there are two big caveats. First, the elements can’t be functional. If they serve a useful purpose, they can’t be protectable under trademark law (though they could be protectable under patent law). Second, if they are part of the product themselves, the owner must prove that they have acquired secondary meaning, meaning that over time consumers have come to associate the trade dress (such as the product color, shape, or style) with a particular producer. Until that happens, product features can be freely copied.
The most important thing to know about right of publicity protection is that some states — including Washington — have statutes that protect against the commercial use of a person’s name, likeness, and voice without the person’s permission. The First Amendment is the biggest exception to such protection. The press can do most anything it likes without fear of liability. So can artists — as long as the artist embellishes the literal image of a person enough to transform it into a work of art (regardless of whether the art is good or bad, flattering or critical). Almost everyone else needs the person’s permission before making use of their “personality” in marketing a product.
My slides are available here (look and feel) and here (right of publicity).