Out-Law News | 12 Nov 2007 | 9:44 am | 2 min. read
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.