In response to my last post, someone asked me if my hypothetical chef stealing the recipe’s would get in trouble under trademark for for claiming to be affiliated with the original chef. My response, as any good lawyer would do, was to tell him “it depends.”
Whether or not the use of another person’s trademark is legal depends on the type of use. Trademarks are words/pictures/etc. that identify the source of goods. Trademarks exist for the purpose of helping consumers know what they’re buying. If one prefers Sprite over 7up, the logo and words “Sprite” adorning the bottle will let that person know they’re getting what they want. 7up would be violating Sprite’s trademark if they put “Sprite” on their bottles, because the use would be likely to confuse consumers as to what they were buying. Likelihood of consumer confusion is the critical question of trademark infringement.
7up is perfectly free to have commercials with “taste tests” showing people choosing their drink over Sprite. The ad can talk about Sprite, use a can with a Sprite logo and show interviews with people talking about how much they hate Sprite. The reason is because of a the trademark doctrine of “Fair Use” which is based on our free speech rights here in the US. Sprite may not use its trademark to stop people, including competitors, from talking about them. Sprite can’t stop me from talking about them right now or using their trademark to make my point. I may be harming Sprite’s reputation, I may not be, but I am not confusing anyone that I am a Sprite spokesperson.
Returning to our chef. If “impostor chef” outright lies and claims to be “original chef” or uses the same restaurant name, he is infringing the mark. If he says “uses recipe’s from original chef” or “taste’s better than original chef” then he’s all good, just speaking his mind under the protection of the Constitution.
People have attempt to use Trademark to stop competitors from gaining advantages on a regular basis. One of my favorites was when Bumblebee Tuna attempted to stop a maker of tuna salad the salad was “made with Bumblebee Tuna.” They lost because the consuming public in that case was deli workers and they would know that the salad in question was not “Bumblebee Tuna Salad” but rather salad made “with Bumblebee Tuna.”
In another case, Playboy attempted to stop a former model from claiming she was a former “Playboy Playmate of the Year” on her website. This was an internet case and Playboy was concerned that seaches using the keyword “playboy” or “playmate” would find this model and not them. The court had none of it. The fact was that she was former Playboy Playmate of the year and she can say so as often as she likes.
There are other considerations when using another person’s mark that artists should be aware of. The biggest is that you risk pissing off the mark holder and, depending on your reason for using the mark, maintaining a good working relationship with the mark holder may be more important than your planned use. Spite and 7up are business competitors engaged in adversarial marketing, they’ll never be partners, so the uses can get as nasty as they want. The former Playmate, however, may have wanted to maintain a positive relationship with Playboy. Perhaps there are reunion opportunities for former Playmates that could have been positive for her career. Such invitations would likely dry up after she and Playboy took legal action against one another. As my business law professor said in law school, “You may sue your supplier, but even in you win, you’ll need a new supplier.”
Another consideration is where one can afford the cost a making a fair use defense. Even if you’re in the right, being dragged to court can get costly very quickly. I’ve often wondered if this is why reality shows like Mythbusters take steps to blur or cover logos from the products used in busting. Mythbusters is perfectly free to do a test and discover at what temperature a Twinky explodes. Such knowledge could even serve the public. Reality shows were invented to keep the budgets low, however (costs for writers and actors are nominal compared to other genres) and inviting litigation from Coke or Hostess just isn’t thrifty. The Mythbusters may also be aiming to not upset brands, as their show depend on ad revenue.
But, if you’re an artist and you don’t care what the big bad rights holders think of you, then feel free to toss your Barbie in a blender or make an animated short using every logo you can fit into one screen. The law is on your side.