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INTA Bulletin


September 15, 2012 Vol. 67 No. 16 Back to Bulletin Main Page

Not All Is Fair (Use) in Trademarks and Copyrights


In an age where images are available at our fingertips and we can “right-click” to copy just about anything, it is far too easy to end up on the wrong side of fair use. Reliance on the mistaken though common belief that everything is fair if it is found on the Internet could land the user on the wrong side of a copyright or trademark infringement lawsuit. Although it might be fair to use a third party’s trademark or copyrighted image in some instances in the United States, the line between infringement and fair use is not always clear. Some trademarks are protected under copyright laws, and some copyrighted images can function as trademarks as well. Therefore, it is important to consider if a use is fair under both trademark and copyright laws.

Fair Use of Trademarks

Descriptive Use
Under the traditional or “classic” form of fair use in U.S. trademark law, the accused infringer uses the plaintiff’s mark in a purely descriptive sense, that is, to describe the infringer’s own product. When a trademarked term also describes a person, place or attribute of goods or services, the trademark owner cannot claim exclusive rights to the use of the term in its primary or descriptive sense. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (use of the trademarked term “microcolor” to fairly and in good faith describe a feature of the defendant’s permanent makeup was fair under Section 33(b)(4) of Lanham Act, 15 U.S.C. § 1115(b)(4)).

Nominative Fair Use
Less clear is when an alleged infringer uses the plaintiff’s trademark to refer to the plaintiff’s products in the alleged infringer’s advertising, website or other materials. In the United States, such uses are non-infringing “nominative fair uses” if they do not cause confusion and there is no indication of sponsorship or endorsement. This nominative fair use “does not try to capitalize on consumer confusion or to appropriate the cachet of one product for a different one.” New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992) (quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir. 1980)). For example, when it is for purposes of criticism, news reporting or comparison, or as a point of reference, use of a third-party mark may be fair. The Ninth Circuit in New Kids enunciated a three-part test for nominative fair use, which is set out below.

(1) No need for absurdities… Referring to a third-party product or service by its trademark may at times be necessary. To put it another way, trademark law does not compel individuals to use “absurd turns of phrase” simply to avoid trademark liability. Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 804-05 (9th Cir. 2002). For example, one could refer to the Chicago Bulls as “the professional basketball team from Chicago,” but it is far simpler to refer to them by their name. New Kids, 971 F.2d at 306.

(2) Less is more… The third party must use only so much of the plaintiff’s mark as is reasonably necessary to identify the plaintiff’s goods or services. When former Playmate Terri Welles created a website using “Playboy” and “Playmate of the Year 1981” in the headings, metatags and banner ads of her website, the Ninth Circuit determined that Welles fairly used the title that she had earned to describe herself. Welles, 279 F.3d at 804. However, the use of the abbreviation “PMOY ’81” repeatedly as a watermark on the website was more than was necessary to describe herself and was not fair use. Id. Compare J.K. Harris & Co. v. Kassel, 253 F. Supp. 2d 1120 (N.D. Cal. 2003) (finding fair use in reference to plaintiff’s mark, though frequent and obvious, on website for purposes of criticism).

The use of a word mark, rather than a corresponding logo or design, may weigh in favor of a finding of fair use. The defendant in Welles used only the trademarked words “Playboy” and “Playmate of the Year 1981” and not the font or symbols associated with the trademarks. Similarly, a soft drink competitor could use the term “Coke” or “Coca-Cola” to fairly compare its product, but it would not be entitled to use the distinctive lettering. New Kids, 971 F.2d at 308 n.7 (finding that the defendant newspapers did not use New Kids on the Block’s distinctive logo); Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 230 (3d Cir. 2005) (defendant used plain block lettering and not the distinctive lettering used in the trademark); Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) (auto repair business did not use Volkswagon’s distinctive lettering style, color scheme or VW emblem); Wham-O, Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254, 1264 (N.D. Cal. 2003) (the main character in the movie Dickie Roberts: Former Child Star said “Slip ’N Slide” twice in the film, but there was no depiction of logos).

Furthermore, if the use of the third-party mark is incidental or de minimis, such use may be deemed fair. Gottlieb Development LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625 (S.D.N.Y. 2008) (use of the Silver Slugger pinball machine in the movie What Women Want was de minimis in that the machine featuring the trademark was shown as part of the background, among other furniture, and for three-second segments).

(3) Don’t get too close… The use must accurately portray the relationship between the user and the trademark owner. Although two newspapers used the New Kids on the Block name to publicize their telephone polls about the band, neither magazine’s advertisements gave the impression that the band sponsored the contest. In fact, one magazine asked if “[New Kids on the Block] are a turn off.” See New Kids, 971 F.2d at 308. See also Wham-O, Inc., 286 F. Supp. 2d at 1256-58 (use of the SLIP ’N SLIDE mark was part of the “jumble of imagery” in the film, such that nothing in defendants’ use of the mark would give a consumer the impression that plaintiff endorsed it); Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003) (viewers of movie George of the Jungle II were unlikely to believe sponsorship or endorsement of Caterpillar as a result of the use of the earth-moving equipment in the movie). Similarly, there was no affiliation, connection or sponsorship created when every mention of the plaintiff was negative and the defendant used a clear disclaimer of any affiliation. Architectural Mailboxes, LLC v. Epoch Design, LLC, 99 U.S.P.Q. 2d 1799 (S.D. Cal. 2011).

In some cases, disclaimers have been found to be persuasive evidence that a use was fair. In Welles, the defendant affirmatively disavowed any sponsorship or endorsement with the plaintiff through the use of a disclaimer where eleven of fifteen pages on the defendant’s free website used a disclaimer at the bottom indicating that the website was not endorsed by the plaintiff. Welles, 279 F.3d at 796 n.1; see also Hensley Manufacturing, Inc. v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009) (defendant fairly used name of trailer hitch designer along with a disclaimer of designer’s former affiliation with plaintiff).

Common Scenarios of Fair Use
Although there is no per se rule for when a use is fair under U.S. trademark law, there are certain categories of cases in which a use of a third-party trademark is more likely to be deemed fair.

For example, use of a manufacturer’s mark in the resale of goods has been found to be fair. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (court found eBay not liable for direct trademark infringement even though it could not guarantee the genuineness of all Tiffany products sold on the site, reasoning that it would inhibit lawful resale of genuine Tiffany products); Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) (finding fair use of Volkswagen’s mark in auto repair business). Also, use of a third-party mark in truthful comparative advertising, so long as the use is not misleading and does not create confusion among customers, is fair. See Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994) (stating that use of competitor’s unaltered logo for truthful comparative advertising was well established, but granting injunction on altered use of competitor’s mark made with an incentive to diminish the favorable attributes of the mark); Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir. 1968) (finding fair use when perfume manufacturer used competitor’s mark in comparative advertising).

Some third-party trademark use may be non-infringing under the First Amendment to the U.S. Constitution. Rogers v. Grimaldi, 875 F2d 994 (2d Cir. 1989) (finding that the interest in ensuring artistic expression under the First Amendment in titles of artistic works such as movies and books may preclude application of the Lanham Act as long as such titles do not create any explicit indication of endorsement or sponsorship). See also E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (finding that fair use doctrine did not apply when marks were not identical—defendant’s use of mark PIG PEN for a strip club in a video game was not identical to plaintiff’s mark PLAY PEN—and holding that use was not infringement based on the First Amendment).

Another category of fair use under U.S. trademark law is parody when there is no likelihood of confusion because the defendant necessarily used the plaintiff’s mark to identify it in a joke. “A ‘parody’ is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001) (use of domain name peta.org was not parody even if resolving website was “People Eating Tasty Animals,” because parody message was not simultaneous with the confusing use of the trademark PETA). “Indeed, it becomes apparent that an effective parody will actually diminish the likelihood of confusion, while an ineffective parody does not.” Louis Vuitton Malletier, S.A. v. Hot Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007) (“Chewy Vuitton” dog toys were not infringing); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) (use of “Barbie” in the song “Barbie Girl” by the band Aqua was parody).

Fair Use of Copyrights

Even if use of a third-party trademark is fair, there is the possibility that the same use might exceed the bounds of fairness from a copyright perspective. Depending on the complexity or creativity of a trademark logo, such logo may be protected under copyright laws as well as trademark laws. For example, the Mickey Mouse logo, the Starbucks logo and the Burger King logo are registered copyrights. In such circumstances, consideration of copyright laws is necessary.

In the United States, fair use as a defense to a claim of copyright infringement is codified in 17 U.S.C. § 107. If one uses another’s copyrighted material for purposes other than for the narrowly proscribed circumstances for criticism, comment, news reporting, teaching, scholarship or research as described in the statute, courts will apply the four-part test set out below to determine when a use of a copyrighted work is fair.

(1) Looking at the Purpose… The first part of the test considers the purpose and character of the use, including whether such use is of a commercial nature, is for nonprofit educational purposes or is made in bad faith. In some circumstances, if the purpose or character of the use is noncommercial or not for profit, such use is presumptively fair, but when a use is for commercial gain, the presumption may weigh against a finding of fair use. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 449 (1984) (holding that private, noncommercial video home taping of television programming via Betamax machines used for “time shifting” purposes was a fair use). Compare Campbell v. Acuff-Rose Music, Inc., 510 U.S. 560 (1994) (the commercial nature of a work is one element of the first-factor inquiry into its purpose and character), with Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997) (display of a copyrighted poster used in the set for a television show was not fair use, as use in the show was for the same purposes as the poster, i.e., to be decorative).

Discussions under this part of the test typically revolve around whether the use is productive or transformative: If the new work adds something new or creates a new purpose or different character, or if it creates a new expression, meaning or message, then such use may be fair. See Perfect 10, Inc. v. Google Inc., 508 F.3d 1146 (9th Cir. 2007) (Google’s thumbnail images of Perfect 10 photos were fair use because they were smaller in scale and served a different purpose than Perfect 10’s purpose); Bouchat v. Baltimore Ravens LP, 619 F.3d 301 (4th Cir. 2010) (use of Ravens logo in highlight films was not fair use because it was nontransformative and commercial); Monge v. Maya Magazines, Inc., 96 U.S.P.Q.2d 1678 (C.D. Cal. 2010) (transformative use of photos outweighed the commercial nature of the publication where defendant published photos in a magazine as evidence of plaintiff’s secret marriage).

(2) Turning to the nature… The second part of the test is the nature of the copied work. There is greater latitude for fair use of scientific, biographical or historical works that would help serve the public’s interest in the free dissemination of ideas than there is for fair use of more creative or entertaining works.

(3) Size matters… The third part of the test is to consider the amount and substantiality of the portion used in relation to the copyrighted work, that is, how much is enough to conjure the original work; anything more is too much. However, the question of too much is not only quantitative but qualitative. Even a small amount of copying may not be fair use when the copying has taken the heart of the work. See, e.g., Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 562 (1985) (copying 300 newsworthy words from an unpublished manuscript of former President Ford was not fair use).

(4) Focusing on the result… In some cases, the effect of the use upon the potential market for, or value of, the copyrighted work, is the most important factor. When a potentially infringing work diminishes the potential sale of the work, interferes with the marketability of the work or fulfills the demand of the original work, such use is not fair. Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148 (9th Cir. 1986); see also A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) (finding that online MP3 file sharing service provided by Napster had a significant deleterious effect on the present and future digital download market).

Common Scenarios of Fair Use
Categories of uses of copyrighted works that may be fair under U.S. law include (1) comparative advertising (see Sony Computer Entertainment America, Inc. v. Bleem, LLC, 214 F.3d 1022 (9th Cir. 2000) (screen shot of a video game used in comparative advertising was fair, despite commercial purposes); Triangle Publications, Inc. v. Knight-Ridder Newspapers, Inc., 626 F.2d 1171 (5th Cir. 1980) (use of the cover of TV Guide in comparative advertising was fair because defendant did not copy the essence of TV Guide, i.e, the schedules and articles). But see Flowserve Corp. v. Hallmark Pump Co., No. 09-cv-00675, S.D. Tex. Apr. 20, 2011) (copying images of competing products and passing them off as your own is not fair use)) and (2) parody (Brownmark Films, LLC v. Comedy Partners, 800 F. Supp. 2d 991 (E.D. Wis. 2011), aff’d, 682 F.3d 687 (7th Cir. 2012) (fair use of portion of copyrighted music video “What What (In the Butt)” in a South Park cartoon: as use was transformative, designed to lampoon the viral video craze and poke fun at the original, use was just enough to conjure up original, and there was little risk of usurping market demand for the viral video); see also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 560 (1994) (parody of Roy Orbison’s “Pretty Woman” in a 2 Live Crew rap song was fair use)).

Conclusion

At the intersection of trademark and copyright rights in a logo or image are brand owners protecting and enforcing those rights. As the value of trademarks and copyrights increases through such means as robust licensing programs and conspicuous product placement in movies and television, the commercial damage of unauthorized uses in such contexts necessarily increases. Consequently, brand and copyright owners will no doubt place greater scrutiny on unauthorized uses testing the bounds of fair use. In the United States, as elsewhere, parties seeking to rely on fair use of third-party trademarks or images should take care to evaluate such uses under both trademark and copyright laws.


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