Eric Turkewitz is a lawyer who writes a personal injury blog. In
a recent post he discussed a ruling on the constitutionality of car
rental firm immunity from some kinds of negligence suits. He
illustrated the story with pictures of the logos of leading firms
Hertz and Avis but was told by Avis's lawyers to take down the
picture.
A comment on the blog from Fred Grumman, associate general
counsel at Avis, said: "we have the greatest respect for your right
to express your opinions on your blog, but that does not include
the right to use Avis' trademark as you have done in this
particular piece."
"Understandably, trademark law is not within your area of
expertise. Therefore, we trust that this was done out of ignorance
and not based on an intent to misuse our mark to the benefit of
your personal injury practice. We ask that you remove it
immediately and refrain from any similar use in the future," said
the comment.
Turkewitz said that he is not convinced he has actually
committed a trade mark violation. "Was my use of the Avis logo last
month a violation of its trademark?" he asked his readers in a
post.
"The particular logo at issue was placed in my September 17
posting regarding a federal court decision. I thought that using
the logos of Avis and Hertz was fair use in the context of the
discussion."
Trade mark expert Lee Curtis of Pinsent Masons, the law firm
behind OUT-LAW.COM, said that the use was unlikely to be trade mark
infringement, because Turkewitz was not using the brand itself in
the course of trade.
Curtis said that it was possible that the use might represent
infringement of the copyright in the image itself.
Even copyright law may not boost Avis's case, though, said Kim
Walker, head of intellectual property at Pinsent Masons. Copyright
law in the US has a concept of 'fair use', which allows the use of
copyrighted materials in some situations, including in news
reporting.
"It is generally accepted that it is easier to show 'fair use '
in the US than it is to show 'fair dealing' in the UK," said
Walker.
If the case did arise in the UK Turkewitz would almost certainly
have to remove the picture, since it is unlikely that it would pass
the more rigorous UK test of 'fair dealing', said Walker.
"If it were to be fair dealing with the logo under UK law it
would be fair dealing 'for the purpose of reporting current
events'. In my view the use would not be 'fair' dealing, as I doubt
it is in any way necessary to include the logo for the purposes of
reporting the particular story," Walker said.
"Also, the fair dealing exemption requires there to be a
sufficient acknowledgement of the author of the copyright work,
which is not the case here, as I doubt the word 'Avis' on its own
constitutes sufficient acknowledgement," he said.
As Walker said, though, the US rule on 'fair use' is more
generous to the user of copyrighted materials than UK law.
Turkewitz said in his blog that he feels that the fair use
defence is adequate. "Now I will concede I am not the world's
greatest expert on trademark law, but it seemed perfectly fair to
use in the context of major car rental companies lobbying for a law
that was tossed out and is now headed to a federal appeals court.
And I didn't see how my use of the logo would cause confusion in
the marketplace since I don't rent or lease cars to anyone," he
said.
The logo is currently still in place on both the original story and
the post about the controversy over its use.
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