trademark
Publishing Another Company&#39;s Trademark
<p>I write for a University humor magazine and we are coming out with a book. Because we are a public university, we normally are allowed to publish any image we find online in our newspaper. However, because we are publishing a book we are being safe and checking copyrights of any image we decide to use. I think I have a decent grasp of how copyright laws work, however trademarks are new to me. <strong>Are we allowed to publish a company or organization logo (Starbucks, BIG10, Penn State) in a book?</strong> As we are a humor publication we will be making jokes about each business or organization, however we will not be presenting the joke as a fact and I felt like including their logo would not count as infringement or dilution. Most of the information I have found is about creating your own trademark and not about publishing other trademarks.</p>

<blockquote>
  <p>Because we are a public university, we normally are allowed to publish any image we find online in our newspaper. </p>
</blockquote>

<p>Not the core of your question but this statement is just not true. If the copyright holder decided to sue you for using their picture they have a good chance of winning, subject to a fair use defence, which given the fundamental misunderstanding of copyright law here seems unlikely. Just because it hasn't happened yet doesn't mean it wont. </p>

<p>As to "I think I have a decent grasp of how copyright laws work"; I wouldn't be so sure of this if I were you. I strongly suggest that you run your editorial guidelines about this past your law faculty; watching their conniptions will be worth the price of admission.</p>

<p>For example, if I am a freelance photographer and take a photo of, say, the president of your university then copyright in that photo is <em>mine</em>. You can only use it (in your magazine or a book) with <em>my</em> permission or if your usage falls within the fair use doctrine.</p>

<p>For fair use to apply the court will use a four factor balancing test:</p>

<ol>
<li>the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;</li>
<li>the nature of the copyrighted work;</li>
<li>the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and</li>
<li>the effect of the use upon the potential market for or value of the copyrighted work.</li>
</ol>

<p>For a university magazine:</p>

<ol>
<li>the purpose <em>is</em> not-for-profit but it <em>is not</em> educational</li>
<li>the photo was taken in circumstance where I expected to profit by it by selling to a commercial newspaper, for example</li>
<li>You used it all</li>
<li>If you posted it on the web in a way that allowed it to be copied you have substantially reduced its value to me.</li>
</ol>

<p>This is highly unlikely to be fair use and I would probably succeed in a lawsuit.</p>

<p>The same hold true for the copyright in trade marks. </p>

<p>In addition, if you defame the brand then you can be sued for that. Parody is a defence <strong>but</strong> you need to be very careful that a reasonable person would understand that your book <strong>is</strong> parody - that is quite likely someone who doesn't know you or your university who picks it up 10 years from now.</p>

<p>Notwithstanding, companies with major brand value to protect will send you a cease and desist letter as a matter of course. Even if you are right, Disney has $1 million to spend proving you are wrong and tying you up in courts for 5 years; how much money do you have to defend your position?</p>
