… by Olivera Medenica (Wahab & Medenica LLC)
When you think of your favorite blogs, chances are at least one entry probably contains either a review, sarcastic comment or some allusion to a trademarked product or service. We take it for granted that consumers have the right to voice their opinions on pop culture, including registered commercial brands. This privilege of free speech is afforded to us by the First Amendment, and it is broad enough to encompass the use of a commercial entity’s trademark. But this freedom of speech is limited by a trademark owner’s property rights, and it is a complicated set of rules that apply whenever a blogger decides to incorporate another’s trademark into their blog, especially where the trademark is famous.
While you can’t use someone else’s trademark in your domain name or blog to sell a competing product, you are permitted to use their trademark to criticize the trademark owner or its products. Similarly, you are permitted to use their trademark for comparative advertising (i.e. “my stuff is better than yours, [insert trademark name here]”). This is called the “nominative fair use” defense to a trademark infringement claim. Courts have imposed a three part requirement test that must be met in order for you to take advantage of the “nominative fair use” defense: (1) the trademark owner, product, or service in question must not be readily identifiable without use of the trademark; (2) you must use only as much of the mark as is necessary to identify the trademark owner, product, or service; and (3) you must do nothing that would suggest sponsorship, or endorsement by the trademark owner. As long as the reference is essential to relating any aspect of the trademarked merchandise or function to your point, it falls under “nominative fair use.”
So what would be examples of nominative fair use? If a newspaper uses the “New Kids on the Block” trademark to create a survey asking readers questions about the group’s popularity. In that instance, the newspaper would not be able to conduct the survey without mentioning the group by name (yes, a pop band’s name can be trademarked). Similarly, a newspaper can mention the “Boston Marathon” by name in order to report on the Boston Marathon (for the same reasons I just mentioned). A photographer can also use “Barbie” dolls in a parody photograph criticizing Mattel’s famous doll and the value that she represents. Similarly, you can use the domain name www.barbiesucks.com in order to criticize Barbie, support feminism, or some related cause and so forth.
The problem arises, however, when the use of the trademark is not an absolute necessity for you to make your point. For example, a sporting good store located next to Madison Square Garden that runs an advertisement with the NY Knicks logo, or a parking garage located next to Citi Fields that prominently displays the NY Mets logo to attract customers are inherently problematic. Similarly, a dry-cleaning business that prominently uses the Ugg logo in its advertisements to demonstrate that it cleans Ugg boots might be problematic – especially where the same message can be done without the use of the trademarked logo.
The issue is one of association; you must avoid giving the impression that the trademark owner is in any way affiliated to you. So mentioning a trademark owner’s product or service in your blog for news reporting, criticism or parody is fine. But mentioning it for the purpose of attracting users and potential customers to a competing business is problematic. For example, using the “Walmart” trademark to criticize its products is fine, but doing so as a prop to sell goods or services unrelated to the trademark owner is problematic (e.g. by providing a link to another store, or pushing the products on your site).
What it really comes down to is your contribution to the discussion. If the use of the trademark is gratuitous and used for commercial purposes, then that use may result in an unfriendly letter from the trademark owner’s law firm. If the use is non-misleading and for critical or news reporting purposes, then your use is permissible no matter how much it annoys the trademark owner.
Olivera Medenica is a partner at Wahab & Medenica LLC, a New York based law firm that focuses on New Media and Intellectual Property law – both from a transactional and litigation perspective. She has represented software developers, bloggers, content creators, social media marketing companies and many others. She has lectured in a variety of venues from Harvard Law School, Brooklyn Law School, Pace University, New York Law School, Cardozo Law School, Manhattan School of Music, the School of Visual Arts to the New York City Bar and New York County Lawyers, as well as Lawline.com, Wikimania 2006, and South by Southwest Interactive 2011.