Wherefore Thou Art #40
The Beef on T's

Walk down any busy street and you're going to see somebody wearing a t-shirt with some snappy phrase on it. Some are puerile, some are stupid, some are genuinely funny, especially when juxtaposed with the person wearing the shirt. The other day I saw this big burly guy with a serious expression wearing a pink t-shirt that said "Real Men Wear Pink." I laughed out loud. Somebody's making a fortune selling these things.

So, let's say you've come up with a perfect little phrase, a play on words, maybe with a made-up word, that you figure is going to make you a bundle on t-shirts, on coffee mugs, on baseball hats, on lunchboxes, and maybe even those tattoos that are so popular with the young folk these days. Being a smart and thorough person, the first thing you decide to do is legally protect the phrase so nobody else can use it.

No problemo, right?

Wrong. There is a problem. No matter how brilliant your phrase is, the copyright laws aren't going to protect you.

Believe me, I've tried. A few years ago a client launched a clothing line based on goofy phrases on t-shirts, most of them little slogans about different cities and geographical areas, and a couple of other things he'd thought up. He, of course, wanted to protect all of this. I told him that it probably wasn't going to work, but he was determined, so we tried to fastball one of the t-shirt designs by the Copyright Office as a test case. He had some graphics on the shirt along with the phrase, it was a pretty striking t-shirt as t-shirts go, so we gave it a shot.

Protection denied! The Copyright Office examiner, sent me a curt letter that the "work lacks the authorship necessary to support a copyright claim." This didn't surprise me. The Copyright Act specifically excludes from its reach "words and short phrases such as names, titles, and slogans." The Act also excludes "variations of typographic ornamentation, lettering, or coloring."

The examiner went on to explain that while occasionally a logo will qualify for protection if it is sufficiently elaborate, my client's t-shirt design failed to "possess more than a de minimus quantum of creativity." Ouch! I tried to argue that this shirt was unspeakably clever, with a made-up word. I didn't say that everyone I had mentioned the phrase to had least smiled, and many people laughed out loud; maybe I should have mentioned this, although I doubt it would have made much of a difference.

This is one of the places where the Copyright Office just draws the line. No short phrases, period. They say it's a matter of a "lack of creativity," but that's not really true. There can be more pure creativity poured into a four word phrase than in the next ten songs you'll hear on Top 40 radio. It's really more that the Copyright Office, as a matter of policy, isn't going to grant a monopoly over a short phrase for the life of the "author" plus another 70 years. It's probably better for everybody if the Copyright Office errs on the side of denying a couple of really good slogans copyright protection, because the alternative would be untenable. Let's say short phrases were registerable. All of a sudden, we'd find big chunks of our language getting snapped up and owned. Big stinky mess.

So, what's my t-shirt guy supposed to do? Well, the first thing he should probably do is get his t-shirts to market in a big way, and let the chips fall where they may. Sure, it's entirely possible if his shirt is a hit that he'll get ripped off by other t-shirt makers, and there won't be much he'll be able to do about it. Before that happens, though, he'll have the field to himself, and he should make the most of it.

We did come up with one creative partial solution. Slogans and phrases can be protectable as trademarks if they designate a product or commercial source. "I'm Lovin' It!" has come to be associated with McDonalds. "Bringing Good Things to Life" is associated with General Electric. As hyperbolic and creepy as these both of these slogans may be, they are function as trademarks for these corporations.

This is where things get tricky, because a catchy slogan on a t-shirt, without more, doesn't designate a product or commercial source. It's just a bunch of words. So this is what we did. My t-shirt guy decided that he would sell each different t-shirt, or at least those shirt designs that he most wanted to protect, under different business names, and the business name for a particular t-shirt would be the slogan on the shirt. The slogan was now the name of the company selling the shirt, i.e. the trademark.

Clever, huh? Well, maybe. Think of the bookkeeping hassles, and multiple invoices to the same vendors for different shirts, and then there's tax reporting. Maybe this is doable if he's selling two or three different shirts, but how about when he's got fifty?

And then there's the whole registration thing. By common law, you can get some enforceable trademark rights automatically simply by using the trademark, but your protection only extends to the geographic area in which you're operating. The best protection you can get is by registering the trademark with the federal Patent and Trademark Office, but that's going to take at least eight months cost you around $750.00.

We decided to take a middle route-my guy filed "doing business as" certificates in the county where he lived, and we got state trademark registrations for the slogans -cum-business names, to at least protect him within the boundaries of the state where he did most of his business.

Has it worked? Well, it seems to have worked so far, but then we haven't had to do anything to enforce my client's rights-there haven't been any rip-off attempts that we know of. We really won't know how well it all works unless/until that happens.

I feel that this slogan-business name strategy is an imperfect, but potentially helpful, means of protecting an otherwise unprotectible slogan or catch-phrase. I also realize that while it might work in my client's situation, it's not going to work in many other settings, like where a company has a lot of different shirt designs, or where sales are made in many different states, like with an internet-based business.

But, it's at least better than nothing. Go forth and prosper. Because you can't take it with you. I slogans! Lawyers do it in their briefs!

© 2005 Paul Rapp
This article originally appeared in The Artful Mind and is intended to provide the reader with an awareness of intellectual property law and not legal advice.