No. The original publisher might be able to stop them from using the drawings. The judge explained that there are two different kinds of legal protection: copyright and trademark. Copyright is for the story and art itself, and it runs out over time. A trademark is like a logo (like the Nike 'swoosh') that tells you who made a product, and that protection can last forever. Even though the copyright on the Peter Rabbit stories is gone, the cover drawings might have become a trademark for the Warne company. If people see the drawing of Peter Rabbit running and think 'that's a book from Warne,' then BSI can't use it because it would trick people. Since the court doesn't know for sure if people think of the drawings as Warne's 'logo,' the judge said the case must go to a full trial where both sides can present evidence.

No, the court can't decide this yet. There needs to be a full trial to figure out if the pictures from the old books have become special symbols for Warne's books and if people get confused by the other company using them. The court needs more information to make a decision.

No. The expiration of a copyright does not preclude trademark protection for illustrations from the work. The fact that a copyrightable character or design has fallen into the public domain does not prevent protection under trademark law so long as it is shown to have acquired independent trademark significance. The court reasoned that copyright and trademark are distinct forms of intellectual property that can coexist. Copyright protects an artistic creation for a limited time, after which it enters the public domain. In contrast, trademark law protects words or symbols that identify the source of goods and can last indefinitely as long as the mark is used in commerce. For an illustration from a public domain work to receive trademark protection, the owner must prove it has acquired 'secondary meaning'—that the public associates the illustration with the publisher's (Warne's) goodwill and reputation, not merely with the author (Potter) or the work itself. Because genuine issues of material fact exist as to whether Warne's illustrations have acquired secondary meaning and whether BSI's use is likely to cause consumer confusion, summary judgment for either party is inappropriate.

No. I deny summary judgment to both parties because genuine issues of material fact exist regarding whether the illustrations have acquired secondary meaning and whether there is a likelihood of confusion. The fact that a copyrightable character or design has fallen into the public domain should not preclude protection under the trademark laws so long as it is shown to have acquired independent trademark significance, identifying in some way the source or sponsorship of the goods. Dual protection under copyright and trademark laws is particularly appropriate for graphic representations of characters. A character deemed an artistic creation deserving copyright protection may also serve to identify the creator, thus meriting protection under theories of trademark or unfair competition. The proper factual inquiry in this case is not whether the cover illustrations were once copyrightable and have fallen into the public domain, but whether they have acquired secondary meaning, identifying Warne as the publisher or sponsor of goods bearing those illustrations, and if so, whether defendant's use of these illustrations in 'packaging' or 'dressing' its editions is likely to cause confusion. These questions require a full trial to resolve. Additionally, BSI's 'fair use' defense is unpersuasive at this stage, as whether a party is making 'fair use' of another's trademark is generally a question of fact, precluding summary judgment. The case will proceed to trial after the completion of discovery.

Frederick Warne & Co., Inc. v. Book Sales Inc.

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