Trademarks Don’t Imprison Words

“When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.”

We call them “intellectual property,” but trademarks can’t erase words from our vocabulary or prohibit all uses but their own.

Occasionally AAN members ask a question on the AAN Hotline about using others’ trademarks in news stories or in satire. Either use is permitted and in fact, one court has noted that infringement laws don’t even apply when a trademark is used as a description. “For example,” the court said, “one might refer to ‘the two-time world champions’ or ‘the professional basketball team from Chicago,’ but it’s far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.”

The federal trademark law is intended to keep other people, usually competitors, from copying a legitimate trademark and using the copy to reap the benefits of the good reputation of the trademark owner, to prevent “passing off,” selling “knock-off” goods that display someone else’s trademark, or confusing the public about the source of goods or services.

When Channel 5 in Boston broadcast a report on the famous Boston race, and used the trademark “Boston Marathon”, another court said that created no confusion about source of the television program. “…a viewer who sees those words flash upon the screen will believe simply that Channel 5 will show, or is showing, or has shown, the marathon, not that Channel 5 has some special approval from the [trademark holder] to do so.” The court explained, “the use of words for descriptive purposes is called a ‘fair use,’ and the law usually permits it even if the words themselves also constitute a trademark.”

Newspapers are not often defendants in the cases concerning trademark fair use, but in one notable decision in 1991, the rock group called “New Kids on the Block” sued USA TODAY and Star Magazine for using the band’s name on reader polls about the band. The court didn’t agree with the band’s argument. “While plaintiffs’ trademark certainly deserves protection against copycats and those who falsely claim that the New Kids have endorsed or sponsored them, such protection does not extend to rendering newspaper articles, conversations, polls and comparative advertising impossible.”

What about parodies? The answer is pretty much the same. LL Bean was highly offended when High Society magazine published the “L.L. Beam’s Back-To-School-Sex-Catalog,” a sexy spoof on Bean’s clothing and equipment catalog. In its lawsuit, Bean said that this tarnished and diluted their protection for their trademark. The First Circuit Court of Appeals overturned the injunction against the magazine and said this:

“. . . a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark. The message also may be a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner. . . . While such a message lacks explicit political content, that is no reason to afford it less protection under the First Amendment. . . . Denying parodists the opportunity to poke fun at symbols and names which have become woven into the fabric of our daily life, would constitute a serious curtailment of a protected form of expression.”

Here are some guidelines to think about:

In a news use of a trademark, it should be a necessary part of the news story, where you need the mark to identify the company and deliver your message.

Be conservative, use only as much of the mark as needed. For example, if you’re talking about Coca-Cola, it is better to use only the words if you can, rather than copying their particular font, though that doesn’t need to be a hard and fast rule.

And of course, you should say or show nothing that would suggest the trademark owner is endorsing or sponsoring your publication or the news story.

All of this gets a little more complicated when moving into the realm of parodies, and as always, don’t take this column and use it as legal advice in any particular situation. Call and ask when you have a specific problem on your desk.