08 November, 2013

Retrospective - Copyright in Names

The name of a company, much like the names of people, carries significant weight in the company's identity in the mind of the consumer and in the corporate sphere. Names like Apple, Microsoft and Google tend to evoke the image of certain services or a certain level of quality, making them incredibly important for the companies that carry them. As such, others can strive to use similar names to evoke a similar image, although in the connection of something entirely different. In most cases these names will be protected under various trademark provisions, or under the tort of passing off, but could a company's name be protected under copyright?

The case which dealt with this question was Exxon Corporation v Exxon Insurance Consultants International Ltd back in 1982. The case concerned the name "Exxon" used by the well-known fuel company. The name was registered as a trademark by the company, which formerly traded under the name Standard Oil (also Esso in other countries); of which a passing off claim was also put forth in the proceedings. Although the question of passing off was of full relevance in the case, of interest in this particular case is the fact whether the name "Exxon" would be a literary work under the then in-force UK Copyright Act 1956 or not. Subsequently Exxon Corporation sued Exxon Insurance Consultants International for copyright infringement and passing off for the use of the word Exxon in theirs.

Esso fuel - not to be eaten for breakfast
"Exxon" had been fully created by the company, being a word not existing prior to its creation in the English language. Evidence was put forth as to its careful creation and selection in this process through a large time, expenditure and labor investment in the word's creation, potentially indicating it is an original literary work within the Act. At first instance Justice Graham rejected Exxon's argument as to the word being a literary work, on the basis that "[i]t is a word which, though invented and therefore original, has no meaning and suggests nothing in itself. To give it substance and meaning, it must be accompanied by other words or used in a particular context or juxtaposition"; a position which the Court of Appeal fully accepted. 

The latter court did accept that the word was indeed original and originated from an author, due to the effort and research that was put into the creation of the word. Several cases were brought before the court in argument over both sides; however the Court particularly used the case of Hollinrake v Truswell in its considerations. In the case Lord Justice Davey set out what in his mind a literary work means:  "...a literary work is intended to afford either information and instruction, or pleasure, in the form of literary enjoyment", also mentioning a possible contribution to the stock of human knowledge. Lord Justice Stephens, in the present case, fully accepted this definition to be applicable under the Copyright Act 1956. The Court decided on the basis of this that the word Exxon would not afford any information or instruction, nor would it provide pleasure through literary enjoyment by itself; therefore not being a literary work under the 1956 Act and there was subsequently no infringement of copyright.

Clearly names are not afforded copyright protection by themselves,but they could be protected should they be a part of a larger piece, such as being mentioned in a book. That would not apply to the name in itself, but as a part of the larger work itself. Arguably the proper route to protect names would be under trademark or the tort of passing off, through which Exxon was afforded relief in the aforementioned case. The line of argumentation by Exxon was interesting, and goes to show just how flexible intellectual property law could potentially be.

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