Minnesota State Fair’s officials asked Michele Bachmann and her running for Congress campaign to desist
using its logo in a television ad that began running this week. The media will often use corporate logos
and/or trademarks in stories under the assumption that they are protected by “fair use”.
The Minnesota State Fair logo is trademarked and the Minnesota State Fair does not see it as fair use.
Michele Bachmann’s Congress campaign did not ask for permission to use the Minnesota State Fair logo.
The issue is that the State Fair can not endorse any candidate running for political office, so the inference
could be hazardous.
Consider that one of the rights accorded to the owner of a copyright is the right to reproduce or to
authorize others to reproduce the work in copies.
The fair did not give this permission.
This right by the holder is subject to certain limitations found in sections 107 through 118 of the copyright
law (title 17, U. S. Code). Through much litigation, these sections have come to define “fair use” as it
applies to the law, and this situation.
The first amendment is commonly used to defend non-rights holders use of a given mark, but it will not hold
up in this situation; ‘Fair use’ does not allow the use of someone else’s trademark in a way that
misconstrues the trademark owner’s sponsorship or endorsements.
The State Fair has made it clear that the Fair does not endorse Ms. Bachmann’s or any other political party.
The appearance of the Fair’s logo’s in the advertisement could be seen as an endorsement.
More importantly the political ad criticizes the opponent Tarryl Clark for votes on taxes and flashes the fair
logo at a strategic point.
So what would be fair use?
Under current definitions, to legally use the Fair’s trademark, Ms. Bachmann’s campaign would have had to
establish what the purpose and characterization of the usage is, including whether the use is “commercial”
or nonprofit or educational purposes.
Ms. Bachmann’s campaign would have to prove the nature of the copyrighted work is not at risk.
They would have to quantify the amount and substantiality of the portion they used in relation to the
copyrighted work as a whole, and demonstrate that it is not blatant infringement.
Furthermore, the effect that the usage would have upon the potential market for, or value of, the
copyrighted work, and if this market is impacted.
Last they would have to draw distinctions between fair use and infringement and make sure it is easily
defined; there is no provision to allow a specific number of words, lines, or notes that can be used without
permission.
The biggest mistake that most people make is that simply acknowledging the source of the copyrighted
material is not a substitute for obtaining permission.
Many web sites put a simple disclaimer at the bottom of a page and assume they have done their due
diligence to establish fair use; that would be a mistake.
Ms. Bachmann’s campaign still believes it has a right to use the mark in the capacity they were using it, but
out of respect for the event, they have removed the logo.
In a recent court case however, the burden of proof against fair use may fall on the mark holder and not the
infringer.
Amazingly. to address which party has the burden of establishing nominative fair use, the U.S. Court of
Appeals for the Ninth Circuit reversed the district court and determined that the party charging trademark
infringement has the burden to prove a likelihood of confusion. Specifically in the case, Toyota Motor Sales,
U.S.A., Inc. v. Tabari., Case No. 07-55344 (9th. Cir., July 8, 2010) (Kozinski, C.J.)(Fernandez, J. concurring).
Toyota sued two independent auto brokers over trademark infringement for the unauthorized use of the
Lexus mark. The two auto brokers specialize in selling Lexus vehicles. They websites in question are: buy-a-
lexus.com and buyorleaselexus.com.
Initially the court found for Toyota, but on appeal, the court determined that the defendants had presented
a compelling fair use defense to the district court.
Toyota argument centered around the use of the word “lexus” in their domain name. They stated that this
was unnecessary, since the website could have used a different name; especially one that does not use the
Lexus mark. Furthermore, it could be suggested that the website appears to be endorsed by the trademark
holder. The Ninth Circuit rejected these arguments. The court held that it is nearly impossible to let
customers know that they are brokers of Lexus cars without mentioning the word Lexus.
Also rejected was the argument that the defendant’s websites appeared to be endorsed by Lexus.
The court determined that a reasonable customer going to the websites would not be misdirected that the
website is sponsored by Toyota.
The outcome is that they defined that the Lanham Act always places the burden of proving likelihood of
confusion on the party charging infringement.
Any defendant seeking to assert nominative fair use as a defense need only show that it used the mark to
refer to the trademarked item.
The burden then returns to the holder to demonstrate a likelihood of confusion.
In light of this, it almost seems as though Ms. Bachmann’s campaign has a shot at fair use.
They were merely referencing the fair, and under this new definition perhaps they were using it properly?
However, we will never know since they voluntarily removed the logo and the issue has now dropped.
One thing is for sure, the case for due diligence is made on these two issues.
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