When you are creating compelling content, copyrights are not the only legal issue you need to worry about. The trademarked logos and word marks of other companies also linger out there. You may find yourself using the trademarks of others. And again, if your use is commercial, it is a good idea to be wary of such use.
All intellectual property rights are based on the idea that if we protect creative works for a limited period of time we will all have more creative works out there. Patents are granted so that others may practice the invention after a limited period of monopoly. Copyrights are granted so that others may copy and disseminate the work after a period of time. Trademarks work the same way, but they can be renewed every few years. The length of time that protection is available is quite the muddy mess, though. Don’t assume that just because something is old that you can use it without regard.
While copyrights and trademarks come from a common law basis formed over many years, patents are a state granted monopoly. Common law basis means that courts over the years have found property rights in these creative works. There we no copyright law or trademark law in the United States, for instance, until the Copyright Act of 1790, but creators had certain rights even before that. Trademark protection wasn’t addressed by Congress until at least 1870, which the Supreme Court struck down in 1879 in the Trademark Cases appeals. Congress passed the first Trademark Act in 1881 in response to that. Patents didn’t exist in the United States until the passage of the Patent Act of 1790.
I highlight the difference between patents and copyrights/trademarks for a reason. Because they are based in common law, copyright and trademark defenses are available for the same reasons why the protection was granted – for the public good and in the case of the United States, to further Freedom of Speech. It is good for society to allow a copyrighted work to be used for commentary purposes. If you want to take my words and comment on them in your own work, you can’t do that without copying my work, right. In order to further the public discourse this must occur.
Copyright fair use, which I discussed yesterday, is a statutory framework which merely codified common law. The codification of the trademark fair use defense can be found in several sections as there are a few places to look.
What is Trademark Fair Use?
Trademark fair use, which includes both descriptive fair use and nominative fair use, is the idea that in order to foster the greater good you should be allowed to use someone else’s trademark. Just like copyright fair use, this doesn’t mean you are not infringing their trademark. It just means that you have a defense. And just like copyright fair use, you will have to go to court to prove it.
The descriptive fair use defense can be found in 15 USC § 1115 (b)(4). If you are using someone else’s mark to fairly and in good faith to only describe the goods or services, you should be ok. So your presentation which includes the logos of Apple and of Google is probably going to be acceptable. Caveat, do not alter it and do not enhance it.
The nominative fair use defense can be found in 15 USC § 1125(c)(3). The key word here is going to be nominative. Use no more of the mark then is necessary to accomplish your objective. Have an ad that compares your services to your competitors? If you use their logo all over the ad, that is going to be a problem. Want to comment on the iPhone? Have multiple uses of the iPhone logo and the Apple logo, that is also going to be a problem. There is also some movement from trademark owners that want to further limit this defense. Their argument is that you don’t need to use the logo where just the name would do. While I think most courts would find in favor of nominative fair use, just be aware that if you go too far in your nominative fair use your brand may be the one fighting for that right for the rest of us. Thank you.
You are Still Infringing, Though
No matter what your position is about your fair use of those marks, you are still infringing. When you walk into your lawyer’s office, don’t tell them that your use is not infringing because it is fair. In fact, if you are going to be using someone else’s logo, maybe you should have talked to them ahead of time. If the logo is from a competitor and you didn’t talk to your lawyer ahead of time, you need to re-evaluate your relationship with them.
For the Lawyers Out There
If your client comes to you and is pushing the edge on this issue, you need to remember two things. First, they are coming to you. Pat yourself on the back that they trust you to talk to you ahead of time. Second, all business involves risk. At the end of the day, you are there to enable them. Look at the use, ask questions about their objectives and if their intended use is problematic, offer up alternatives. Be a partner, and not a roadblock. Roadblocks get run through, or avoided.