Who owns Cultural Idioms: Can you trademark a derivate slogan?

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Have you ever daydreamed about having your own business and even gone so far as to come up with a catchy slogan for it? Maybe you've already started that business—selling t-shirts for instance that feature that catchy slogan—when one day out of the blue you receive a letter from an attorney stating you're infringing on another company's trademark rights.

Infringement or catchy new slogan?

Such was the case of Jennifer Laycock, a breastfeeding mom from Columbus, OH who received a letter in January 2007 from just such an attorney representing the National Pork Board. The letter stated that her use of the slogan "The Other White Milk"™ on t-shirts she sold in reference to breast milk (as opposed to cow's milk), was too similar to the National Pork Board's slogan "The Other White Meat"™ and could in fact "tarnish the reputation" of the National Pork Board.

Infringing on trademarked slogans is often an innocent mistake, after all many famous slogans such as "It's the Real Thing."™, "Good to the Last Drop."™, "Got Milk?"™, and "Tastes Great. Less Filling."™ have become part of our cultural vocabulary, much like idioms. Idioms are expressions that do not usually correspond to their literal meanings yet are known and understood by the people that use them. Examples of cultural idioms include "Don't count your chickens before they are hatched" (don't act on an assumption that might turn out to be wrong), "If the shoe fits, wear it" (if something applies to you then accept it), and "Kicked the bucket" (died).

Nearly all slogans, famous or otherwise, in existence today are trademarked, which means that they are protected by trademark laws from anyone else using the slogan for another product or service. By establishing a slogan as a trademark a company is in essence, protecting its brand.

Derivative slogans?

But what about derivative works that take bits and pieces of a slogan and reworks it to invent a new version or even those cultural idioms? Can they be trademarked as well?

Derivative works generally refer to translations, musical recordings, sound arrangements, art reproduction, and computer software such as games and fall under the jurisdiction of US copyright law and not trademark law. In the case of a trademarked slogan however, the situation may be less clear. Take for example, the similarities between "Got Junk?"™ and "Got Milk?"™ the slogans of a company called Got Junk™, established 1989 and the National Milk Processor Board who obtained the licensing rights to the slogan in 1993 respectively.

According to Circular 14, Copyright registration for Derivative Works, US Copyright Office:

"To be copyrightable, a derivative work must be different enough from the original to be regarded as a "new work" or must contain a substantial amount of new material. Making minor changes or additions of little substance to a preexisting work will not qualify the work as a new version for copyright purposes. The new material must be original and copyrightable in itself. Titles, short phrases, and format, for example, are not copyrightable."

Since idioms are part of the common expression of language for a particular culture or group of people, a cultural idiom is usually not trademarked—unless it is specifically intended for use as a brand name for a product or service.

Before you go printing those T-shirts, it pays to do a little research

The lesson learned here today? Consider doing some preliminary investigating before you decide to print those t-shirts with your catchy slogan. Laycock removed the t-shirts with the questionable slogan from her Café Press store and has agreed not to use that particular slogan now or in the future. And, less than a month later the CEO of the National Pork Board sent Laycock a letter of apology for appearing to challenge the breastfeeding cause or demean it in any way, stating that the correspondence was nothing more than a necessary attempt at protecting their clients in the pork industry from trademark infringement. In other words, they were just doing their job.