Friday, May 15, 2015

Bo's bLAWg: Fair Use of Logos

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts.  Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO! 

"Thanks for your bLAWgs distinguishing copyright and trademarks for us.  Tell me, can I use trademarked logos in my illustrations?  Examples:  an illustration of an iPhone with the Apple icon, and illustrations of matchbook covers featuring the trademarks of various restaurants and hotels."

A follow-up question.  Great!

I will address this question in parts.  First, I will consider those trademarks that include original artwork subject to copyright protection.  This would likely include some of your matchbox covers.

As previously mentioned, trademarks may include original artistic designs which are subject to copyright protection.  Those copyrightable elements of a logo cannot be used in any derivative fashion without the permission of the copyright holder unless they are in the public domain (published before 1923), or if your application of the illustration constitutes “Fair Use.”  Fair Use is defined under Section 107 of the Copyright Act.  In short, copyright law contemplates that fair use of a copyrighted work without permission is available for ‘free speech related” purposes such as (1) criticism and comment, (2) parody and satire, (3) scholarship and research, (4) news reporting and (5) teaching.

Whether a given use qualifies involves an assessment of four “Fair Use factors” that the courts must apply to each fact situation to determine whether a particular use of a copyrighted work is or is not fair use. These factors are:

1)  The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2)  The nature of the copyrighted work;
3)  The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4)  The effect of the use upon the potential market for or value of the copyrighted work.

The courts must consider all four factors; no single factor is sufficient to establish Fair Use.  

Note that Fair Use is a defense to a legal action, not a bar that would prevent the claimant from bringing such an action.  However, an infringement lawsuit will often be averted by persuasive argument that a Fair Use defense will be available if the claimant were to file an action in court.

If your use of a copyrighted logo is not for the indicated free speech related purposes, including a broad interpretation of parody and satire, and your use is commercial in nature, it is likely going to require a license to avoid the possibility of a copyright infringement claim.

The second issue pertains to logos subject to the Lanham (Trademark) Act.  

You will recall that logos are a form of trademark. Trademarks identify the source of specific goods and services.  Consumers have the right to know that the goods and services they are purchasing come from the company identified with the logo. Trademark law assures the owner of a given trademark that it will have the exclusive right of use to that mark as against any and all others who might like to use the same or a similar mark in the same class of goods or services and cause public confusion as to the source of the goods or services. 

There is a “Fair Use” corollary that applies to the use of trademarks as well as copyrights.  In legal terminology this is known as “Nominative Use.”  The Nominative Use Doctrine provides that a person may use the trademark of another as a reference to describe the other product, or to compare it to their own. Like Copyright Fair Use, it is only an affirmative defense to a trademark infringement claim, not a bar to bringing a claim.

The nominative use test essentially states that one party may use or refer to the trademark of another if:

1)  The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).
2)  The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).
3)  The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.

Nominative use does not require that ownership of the trademark be acknowledged, for example by use of a sentence such as
"is a registered trademark of Apple Computer, Inc.". Such statements may, however, be required by the terms of a license agreement between the parties, and they may be prudent (and courteous) as a way of preventing misunderstandings or allegations that your illustration is sponsored by or associated with Apple.

However, your creative use of the logo is not necessarily nominative.  If it transforms the logo in some way that is uniquely artistic, like Warhol’s use of Campbell Soup cans, there is a transformative element involved that by its nature can be seen to distinguish the artistic rendering from the corporate use on goods or in conjunction with services.  Such transformative use is not definitively Fair Use if the public could be confused as to its source.  Indeed, had Campbell Soup wanted to stop Warhol or his Estate from publishing his exacting images of their logos, they probably could have.  Sometimes, the trademark owner may decide that the artwork although infringing, promotes their brand without damaging it.

If your use of the logo is to make fun of the company, the free speech aspect of Fair Use may apply.  At its core, (pun intended), a parody of the Apple logo that makes fun of Apple or one of its products may well be privileged as there is no likelihood of confusion.  Clearly, your use does not use the Apple logo to identify the origin of your artwork, but to make a kind of joke.  Such  “parody” is at its essence, free speech.

Legitimate parody may however ‘cross the line’ and be seen as slander of the trademark owner’s brand.  Even if a trademark infringement claim may be defended, the illustration could be seen as “trade libel,” and generate a defamation claim.  The elements of trade libel are:

1)  The material in question can be shown to be a false statement of fact;
2)  The defendant’s statement caused the plaintiff either financial or reputational harm;
3)  The defendant didn’t sufficiently research if the claim in question was true before publication or broadcast.

So, if your illustration does not alter the logo or add information that suggests the company has done or supported something negative or offensive that it did not do, or you can prove that your use of the logo in this fashion did not cause harm to the business, there’s a good chance you’ll be able to successfully defend against such a claim.

Bottom line, if your use of a logo in an illustration might cause the corporation that holds a trademark and/or copyright interest to object to your use, there is a risk to you involved.  The corporation is likely to have much greater assets than you do.  They may insist you “cease and desist” from your use or it will bring a legal action even though your use is defensible as a matter of law.  Can you afford to defend on principal if you have to?  You may have to, so be careful.  Consult with counsel as needed!

Disclaimer: The information contained in this website is not intended as legal advice or a solicitation of business. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold,

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