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.
Reprinted with permission from INTA Bulletin, Vol. 67, No. 16 – September 15, 2012,
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
