RE: Summary of Responses for Corporate Logos and Trademark question

["Ford, William K." <7Ford@xxxxxxxx>]

Renee,

I didn't weigh in when the question was originally asked, but I am especially
surprised about response #3 below. It said, "I think this . . . probably
constitutes a violation of federal trademark law which does not have
exclusions for educational uses. As such, I would advise the professor against
doing this."

I don't see how the use of a trademark in a typical classroom presentation
could constitute a Lanham Act violation. Setting aside whether such a use is a
"trademark use" or a "use in commerce," how is there a likelihood of
confusion?

I assume the argument is that students are likely to think there is an
"affiliation, connection, or association" between the trademark owner and the
instructor or that the trademark owner sponsored or approved of the lecture,
15 U.S.C. 1125(a)(1)(A), but why would students think this? I can understand
when people think the use of a trademark in a movie is based on a license
because it is common knowledge that trademark owners often arrange to have
their marks visible in a movie through product placement deals. Such people
may then assume that any given use of a trademark in a movie is done with a
license. Confusion is likely or at least plausible in these situations (though
in actual cases like the Wham-O case and the George of the Jungle 2 case, the
courts said confusion was unlikely).

There is no comparable, common practice in classrooms, however. I have never
heard of someone asking permission to use a trademark in a classroom, though
it looks like some people may have asked -- or maybe the people who think they
should ask are just deterred from even bothering and decide not to use the
mark. But even if a few people have asked for permission, I don't see any
basis for thinking consumer confusion is likely in the context of a classroom
presentation. I doubt it would even occur to students that someone might have
asked permission.

My slides often contain trademarks and logos. Maybe the next time I use one,
I'll poll the class and see if anyone thinks I asked permission. If no one
thinks I did, then no one would think there is a relationship between me and
the trademark owner. How then could confusion be likely? I suppose if I was
really worried about confusion, I could also use a disclaimer, but unless
people think licenses are used in these situations, the disclaimer should not
even be needed.

I think it's pretty clear some judges go beyond the likelihood of confusion
rule and find some trademark uses "confusing" when they really just think the
use is unfair for some reason unrelated to confusion. It would be shocking to
me, however, if even these (in my view) overprotective judges considered use
in a classroom unfair.

If there is no likelihood of confusion and no "unfairness," how can there be a
Lanham Act violation? (Are these uses supposed to be dilutive?) Maybe this is
just a factual disagreement about when consumer confusion is likely. I assume
there is no good empirical evidence either way, but I would be interested in
knowing why confusion even seems plausible to some people in this sort of
situation.

-Bill


William K. Ford
Assistant Professor of Law
The John Marshall Law School
315 S. Plymouth Court
Chicago, Illinois 60604
(312) 427-2737 ext. 851
www.elsblog.org

-----Original Message-----
From: Renee Hall [mailto:chall38@xxxxxxxxxxxxxxxxxxxxx]
Sent: Tuesday, January 27, 2009 11:33 AM
To: digital-copyright@xxxxxxxxxxxxxx
Subject: Summary of Responses for Corporate Logos and Trademark question

Hi everyone,

Thanks to everyone for your quick and helpful responses. Please find a
summary
of the three responses below.

Kind Regards,

Renee

1) "I can't speak for copyright law, but I can speak to some degree on
behalf of the companies.  My background includes a significant
professional stint as a technical writer.

Large companies (including your own university -- contact your
institutional advancement people) have "corporate identity standards."
 They dictate who may use logos, where they may be used, and how they
may be used.  The marketing and corporate identity folks at these
companies would probably tell you that they would prefer (or insist)
that their logos not be used at all.  I worked in IT after I was a
technical writer and would routinely ask naive-but-friendly
salespeople to please remove our logo from their sales presentations.

I would suggest talking to your IA/marketing and ask what they'd tell
an outside party, then apply that to the PowerPoint presentation.  If
you come to a different conclusion, I'd love to hear about it so that
I can change what I tell people.  :-)"

2) "I would think educational fair use is at play with the use of logos, but
I
would encourage him to cite the source of the logos.  I strongly encourage
our architecture and business students, who frequently use company logos or
images in their presentations to simply insert "source: www.xxx.xxx" on
their ppt slides so they can cite the source of the images they have
borrowed.

This is not a legal opinion, but rather a practical opinion. Outside of his
students, the companies themselves do not have access to his slides and I
would think attribution would be sufficient."

3) " I think this is acceptable under the TEACH Act, but probably constitutes
a violation of federal trademark law which does not have exclusions
for?educational uses. As such, I would advise the professor against doing
this.

You may wish to purchase a copy of the?new book?"Distance Learning and
Copyright" from the American Bar Association publishing website.It deals with
this and many other similar issues.?It has proven quite valuable to me in
understanding this complex area. The link is?
http://www.abanet.org/abastore/index.cfm?section=main&fm=Product.AddToCart&pi
d=5370163.."







Renee Hall
Distance Education Librarian
Johns Hopkins University
Sheridan Libraries
Entrepreneurial Library Program
3400 N. Charles Street
Baltimore, MD 21218
Phone: 410-516-6754
Fax:      410-516-6777
rhall@xxxxxxx