Why is the famous “I [heart] New York” logo protected by trademark and not copyright? At first glance, you’d think that it’s artwork, and therefore can be protected by copyright. However, the Copyright Act protects “original works of authorship.” The “I [heart] New York” logo is simply the phrase “I love New York”, with the word “love” replaced by a red heart. As the Supreme Court held in Feist Publications, Inc. v. Rural Telephone Service Co.,
[t]he sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. … Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.
The logo unfortunately fails that test.
However, the logo absolutely evokes the New York brand, and is a famous trademark used by New York’s state tourism agency, which helpfully provides licensing information for those seeking to use the logo. While the logo isn’t covered by copyright, the ad campaign in which it was used certainly is, and the jingle “I Love New York” certainly is.
In the late 1970s, Saturday Night Live aired the “I Love Sodom” sketch (not its official title), in which the beleaguered biblical town of Sodom felt that it was known only for, well, I don’t need to get into it here. They came up with a brilliant ad campaign – which of course sounded very familiar to viewers. New York was not amused, which led to the case of Elsmere Music, Inc. v. National Broadcasting Co. SNL won, as the sketch was obviously a parody. In fact, this case was cited by the Supreme Court in another famous intellectual property case, Campbell v. Acuff-Rose Music, Inc.
All of this came to mind because a potential client recently contacted me and asked how to protect his clothing designs. These were designs that could be printed on a t-shirt or other clothing items, rather than the design of the clothing itself. Interestingly, the proper way to protect the design of clothing itself has been the subject of much intellectual property litigation. Four years ago, the Supreme Court confirmed in the case of Star Athletica, L.L.C. v. Varsity Brands, Inc. that clothing designs that are non-functional can be protected by copyright law, though the functional design itself would instead need to be protected by a patent.
One potential design to be protected included words and scattered shapes, but the focus of the design was the shapes. While researching the feasibility of registering a copyright in this artwork, I came back to the “I Love New York” logo, which led me down the rabbit hole I’m writing about today. I ended up advising the client to go in a slightly different direction if he wants to use copyright to protect his creative work.
And now, if you’ll excuse me, I have an SNL sketch to re-watch. All the best to you, stay safe, and enjoy the summer.
