Copyrights Overlapping other IP rights

The overlapping of copyrights with other IP rights, in particular, with trademarks and designs, is a common case in many jurisdictions, including Turkey. It refers to the protection of an intellectual creation under both copyright law and trademark or design law.

In Turkey, an intellectual creation benefits from cumulative protection, if it simultaneously fulfils the criteria to be protected as a copyrighted work under Law of Literary and Artistic Works No. 5846 (“Law No. 5846”)m and as a trademark or a design under Intellectual Property Code No. 6769 (the “IP Code”).

To be eligible for copyright protection, a work must bear the characteristic of its author, and   fall within one of four categories, namely, scientific and literary, musical, artistic or cinematographic works. A work meeting these criteria may also be registered and protected as a design, provided that it has novelty and distinctiveness and/or a trademark, so long as it distinguishes the goods or services of one undertaking from those of other undertakings.

Within this scope, the IP Code explicitly stipulates in Article 58, paragraph 3, that a design protected as per the provisions of the IP Code is also protected under Law No. 5846, in the event that it meets the conditions set forth in that Law. The decision of Istanbul 4th IP Court numbered 2010/55 E., 2012/113 K. and dated May 08, 2012, is an example of the application of such cumulative protection. In that specific case, the owner of the registered key holder design claimed that the defendant manufactured and sold key holders indistinguishably similar to his design, and requested determination of the design and copyright infringement, as well as a claim for pecuniary and non-pecuniary damages. The Court decided that the plaintiff’s registered design is also an artistic work protected under Law No. 5846, and the defendant’s activities infringed not only the plaintiff’s design rights as per design law, but also his moral and economic rights on the artistic work as per copyright law. In another decision numbered 2009/191 E. 2010/258 K. and dated October 26, 2010, the Ankara 3rd IP Court resolved that an unauthorized use of Mickey Mouse, a copyrighted character and a registered trademark of Disney, on a slipper design application, infringed Disney’s rights, and that the contested design cannot be granted registration as per the design law.

The IP Code has a specific Article concerning the interplay between copyrights and trademarks, as well. According to Article 6, paragraph 6, of the IP Code, a trademark application shall not be registered, or it will be invalidated, if it contains a third party’s copyrighted work. In this regard, the IP Courts and the Turkish Patent and Trademark Office often invalidate/refuse to register words or device trademark applications, including copyrighted works, such as names or images of movies, comics or cartoon characters; names of books, magazines, movies or TV series, as well as logos. For instance, in its decision numbered 2007/98 E. 2008/114 K. and dated May 07, 2008, the Istanbul 3rd IP Court decided to invalidate the defendant’s “GARFIELD + DEVICE” trademark, taking into consideration that the plaintiff, Paws Incorporated, is the trademark and copyright owner of the Garfield name and Garfield character. Similarly, in its decision numbered 2016/11836 E., 2018/3892 K. and dated May 23, 2018, the 11th Chamber of Court of Appeals upheld the decision of an IP Court, which resolved that the defendant’s trademark application containing a Lion device cannot be registered, and it infringes copyrights of the plaintiff due to the fact that the Lion device used in the contested trademark application is an original work of art created by the plaintiff and is protected by copyright law.

Considering the Turkish legislation and case law with regard to the situations when copyrights overlap with trademarks or designs, it might be said that right owners can simultaneously enjoy protection afforded under both Law No. 5846 and the IP Code.

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