Back to school! Time for that new pencil and crayon smell, new duds, and not a little reflection on the changing of the seasons and where all that time in the summer went…
For many institutions and businesses, now is also a good time to review brand identify, and consider a refresh. Sure, a brand is not merely a logo, as Eric Sickler recently wrote in Inside Higher Ed[1]:
In many ways, the expression and demonstration of your [brand] is a “shorthand” version of your institutional mission and vision. It’s true to your institutional charter and heritage, it reflects that to which you are committed to provide your communities, and it can guide your leadership team’s decision-making toward achieving your institutional vision.
But, practically speaking, a revamp of brand identity usually comes along with changes to logos or slogans, whether they be minor and modest tweaks to a venerable visual identity, some slight wordsmithing to an old slogan, or a complete revamp. In either case, we have three pieces of advice (which is not, of course, legal advice…):
- pre-clear the new design or word mark;
- obtain all of the copyrights in the new design and moral rights waivers; and
- register the new design or word mark as a trademark.
Now, in particular…
1. Clearance: An ounce of prevention…
Just because you hadn’t heard of it or seen it before, doesn’t mean it’s yours for the taking. There’s little that’s truly new in this world, and others may have rights in the new design, that perfect phrase or something very similar to it.
Clearance searches to ensure that trademark protection is ‘available’ for the new mark. Go without one, and you run the risk of stepping on toes…and ‘I didn’t know’ isn’t a good response to a cease and desist letter, or an infringement lawsuit. It looks pretty bad in the press too.
The same depth of clearance may not be warranted in all cases (e.g. how different the mark at issue is from what you are using/have previously cleared, how ‘important’ a branding element the mark will be), but at least some degree of clearance is always recommended.
2. Copyright: What lies behind any original work.
Many trademarks have design or artistic elements. These, if original, may be independently protected by copyright. This can be important, as copyright may prevent someone from ‘copying’ your trademark, where a regular trademark cause of action may not be viable (e.g. the goods/services of the parties are so different that there would not be any likelihood of confusion).
As many ‘designs’ are created by third-party entities (i.e. independent contractors), you may not ‘own’ the copyright by default: it’s important to consider the written terms of any agreements in place, and to have a written assignment of copyright to ensure you do, in fact, own the copyright. And written is important: you can’t orally or implicitly assign copyright in Canada.
Also, while not a requirement to enforce copyright in Canada, copyright registration is possible and may be worth considering based on the circumstances.
Finally, moral rights in all copyrighted works are non-transferrable in Canada, though they may be waived. The “author(s)” of your new design (i.e. the designers, artists, etc.) may therefore retain these rights, which could hamper your ability to modify or evolve the design in the future, or use it in entirely novel and unexpected ways. As a result, we always recommend that the designers (the actual individuals who did the design work) waive their moral rights in the new designs.
3. Trademark: Something new, something protected!
Unless the change in the mark is truly minor, you likely have a new trademark—and like any mark, it should be protected. In Canada, this is usually by way of a regular trademark registration. For certain types of entities (e.g. universities or public authorities), this may additionally (or alternatively) be by means of securing a very powerful tool called a Section 9 mark. While seeking both types of protection is the most comprehensive, there are pros and cons to each, and in many cases, seeking just one form of protection will be practically adequate.
While each situation is unique and may warrant additional considerations to the above, this is a good framework to keep in mind over the fall, or any time changes to branding are planned.
[1] Institutional Branding Demands Presidential Ownership: An Open Letter to College and University CEOs. Sickler, Eric, Inside Higher Ed, accessed August 19, 2019: https://www.insidehighered.com/blogs/call-action-marketing-and-communications-higher-education/institutional-branding-demands
