Would copyright infringement be made on a design that is shaped like a trademarked image? Please view the two images [Ed: ok, I added two more!]. The first one is the [Ed: famous maker!] trademarked image. The second is an outline of it. Would this be considered copyright infringement?
~ Oregon
John Deer v. Apple
I suspect you wanted to ask, “is it safe for me to use this second image?” Well, as the picture shows, it depends. When I give advice to a client that something is “safe” to do, that is called a clearance opinion or right to use opinion. To give such advice, I usually ask a lot of questions, do research, and come to a legally-sound conclusion that a later judge or jury would respect. Let’s look at a brief overview of the process.
Trademark, Copyright, and Patent? What do they do?
Ok, in a sentence, here is the purpose of each. I’m avoiding lawyer words, so, please, keep in mind, these are not the precise legal definitions.
- Patents prevent competitors from profiting on the usefulness of a new invention: if it is not new, no protection; if it is not useful, no protection; if it is not an invention, no protection.
- Trademarks prevent customers from becoming confused about who is selling what to whom. (Yup, read it twice.)
- Copyrights prevent impermissible copying of the creative efforts of others.
I am going to assume that you are more concerned about trademark infringement, so, I’m only going to describe the analysis for trademarks. The copyright infringement analysis is different. This makes sense because the purpose of copyright is different from the purpose of trademark.
Trademark Infringement Step 1: Are there trademark rights?
With the John Deer and Apple logo, I think it is safe to assume that there are trademark rights. Anytime anyone sells something to someone, and, there is a mark that indicates the seller or manufacturer, trademark rights happen automatically. This is called common law trademark rights. There can also be federal and state trademark rights. Each level of trademark has different rights and responsibilities. When clearing something, a lawyer has to consider all of the different trademarks, at all of the different levels, potentially in all of the different states (because every state’s law is a little different).
OK, so, for the two pictured examples, we just assume there are trademark rights.
Trademark Infringement Step 2: Is there trademark infringement?
For this step, I would ask questions like this: Is anything being sold with the outline logo? Are any customers becoming confused? What channels of trade do the goods or services flow through? What are the conditions around purchase? There are a series of 13 different factors that courts examine to determine trademark infringement.
As you can see, the outline of the apple logo changed the impression very little — it is still the apple logo. So, it is unlikely that this outline could be used on any good or service even distantly related. However, one might wonder if this outline could be used on a package to sell apples (the kind you eat). Apple, Inc. is not in the grocery business, after all.
The outline of the John Deer logo still has a somewhat distinctive shape. So, for example, perhaps this shape could be used to mark goods or services unrelated to John Deer’s good. On one hand, if you wanted to use this distinctive outline on tractors, well, John Deer might complain. On the other hand, if you wanted to use this outline to sell apples (the kind you eat), you would likely be clear.
Trademark Infringement Step 3: Is the mark famous?
Some marks are famous, and, they get a special right, called “dilution”. Apple and John Deer are both famous. In general, well-known household product names are famous. Dilution means that other uses of the mark, while they do not cause confusion, might tarnish the reputation of the trademark owner. Likely, if our Apple outline was used to sell apples, Apple Inc. would bring a trademark dilution action to prevent this use of the mark.
Trademark Infringement Step 4: Is the use fair?
Finally, trademark law allows for use of a trademark under some circumstances. One example is nominative use, that is, using the trademark to name the product for sale. This is why you can advertise your Mac PowerBook for sale on craiglsist: your use of the trademark is correctly identifying the source of the gently used Mac PowerBook.
Some other types of fair use might include parody, use in fictional works, or editorial review. One key to fair use is that the fair use should not imply any endorsement or sponsorship by the trademark owner.
How Federal courts interpret fair use can vary somewhat from one federal district to another.
Trump Card: Permission
There is a trump card to most intellectual property rights: permission. If you want to use someones trademark, you can always ask for permission. Obtaining permission, unlike the series of questions above, will guarantee that you are respecting the intellectual property of others.
Good luck!
About Andrew P. Lahser, Attorney