Tips for Package Designers: How to Use Copyright and Trademark Law to Control the Distribution of Goods

Marketers design product packaging with an eye toward shelf appeal, user-friendliness, and connecting with their target audience. Packaging can be used, however, for more than boosting sales. If designed properly, product packaging also may contain protectable elements under copyright or trademark law that could allow a brand to exclude grey market goods or goods manufactured and first sold abroad from entering the United States.

We may see these legal concepts continue to play out as labeling requirements change in this country. For example, last week the FDA announced new rules for packaging for sunscreens. Starting next summer, sunscreens marketed in the United States will no longer be able to use the words “waterproof” or “sweatproof”. They will also have to bear a special label showing ingredients.

Given the implications of the Costco v. Omega copyright case heard by the Supreme Court late last year, sunscreen manufacturers may be able to exclude sunscreens that bear prohibited words or lack the required labels because they violate the American manufacturer’s copyright rights. In addition, if the foreign labels  are materially different from the American versions,  the sunscreen manufacturer may be able to invoke trademark law as well. (See the 1991 case of Ferrero U.S.A. v. Ozak Trading, Inc.) In particular, if advertising campaigns in the United States revolve around claims made on the labeling, these advertising claims may function as trademarks and therefore exclude foreign goods.

Copyright and trademark law can be powerful tools for brands in controlling the distribution of grey market goods or preventing discounters from selling their products.

Practical Tips for Package Designers:

1. Design your packages to sell, but also to afford you protection under copyright and trademark law.
2. During the concept stage, incorporate unique product designs that can be protected under copyright law.
3. Also consider a trademark slogan or other labeling that is integral to an American advertising campaign.
4. Consult your legal team to be sure the elements will help your brand to control distribution of grey market goods and exclude non American goods from infiltrating the American markets.
5. Register any copyrighted elements promptly to be able to take full advantage of US Copyright law.