Avis Tells Me Cease And Desist on Use Of Its Logo

2 thoughts on “Avis Tells Me Cease And Desist on Use Of Its Logo”

1. I can’t offer an opinion whether their request to cease and desist is proper or not, but I do know that it’s quite common for manufacturers to trawl the Internet and print media, looking for examples of their trademarked name being “misused” and then firing off a letter to the offender.

   Ex. the Kitty Litter (TM) people. The Dumpster (TM) people. The Seeing Eye Dog (TM) people. The Styrofoam (TM) people.

   My personal opinion is that as long as you aren’t using their trademark name or logo for personal or commercial gain, this should not be a big deal. But apparently they beg to differ!
   # posted by Anonymous Anonymous : October 23, 2007 4:00 PM

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   I have a 98% feeling I am fine on this. But when you step out of your own area of law and in to another, it’s nice to see other opinions.

   And while I’ve seen discussion of the issue before, such as here:

   http://www.chillingeffects.org/trademark/faq

   I’ve never seen an actual case.
   # posted by Blogger Eric Turkewitz : October 23, 2007 4:14 PM

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   Thanks for the link-as-invitation, Eric.

   I don’t see how you have made a trademark use of their logo.

   Anonymous is mistaken, however — “commercial gain” is not the test. Neither is “commercial use” (the actual legal term) so easily defined. But, again, the issue is whether you have used their logo as a trademark . . .
   # posted by Blogger Ronald Coleman : October 23, 2007 11:12 PM

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   I agree with Ron. I don’t think you’ve done anything wrong.

   John L. Welch
   # posted by Blogger John L. Welch : October 27, 2007 9:08 AM

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   You should encourage Avis to read BidZirk, LLC v. Smith, 2007 WL 3119445 (D.S.C. Oct. 22, 2007). The use of a logo wasn’t expressly permitted (in that case, the blogger voluntarily chose to remove it), but as that case illustrates, any enforcement action would be ill-advised both legally and from a marketing standpoint. Eric.
   # posted by Blogger Eric Goldman : October 28, 2007 7:04 PM

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   I agree that you are almost surely fine here, and I really hope you will push back on Avis. I said more at my own blog here:
   http://blogs.law.harvard.edu/infolaw/2007/10/29/avis-fair-use/
   # posted by Anonymous William McGeveran : October 29, 2007 2:10 PM

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   It sounds like Avis might want to try a little harder not to infringe U.S. Patent No. D440,263 at http://ip-updates.blogspot.com/2006/04/tgif-for-willful-infringers.html.
   # posted by Anonymous Anonymous : October 29, 2007 2:26 PM

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   For those expert types who support Mr. Turkewitz, why not cite to the blog and include the picture in question? It’s always easy to pick on those people ill equipped to fight back. I’d like to see how Avis would approach someone who has expertise in the area.
   # posted by Blogger . : October 29, 2007 6:33 PM

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   Avis needs new trademark counsel if they think that you’ve done anything actionable. Take a look at BidZirk v. Smith. BidZirk filed three counts, but count three is dead on point relevant.

   It might not be binding in your jurisdiction, but it certainly is persuasive — and I’d imagine that the SDNY would be more protective of free speech than the D. SC.
   # posted by Anonymous Marc J. Randazza : October 29, 2007 6:57 PM

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   I responded to a similar cease and desist at my blog.

   There are some differences between my case and yours. My case involved something other than the alleged mark which a search engine trolled up (i.e. I wasn’t actually using the allegedly infringed upon mark). My case also involved a non-famous, descriptive mark (“Mr. Trademark(r)”, while “Avis” is arguably a famous, non-descriptive mark for a car rental company.

   Clearly, in my view, this is classic fair use for copyright purposes, and is also not defamatory, as you have a clearly disclosed factual basis for your post.

   It is also clearly not a plain vanilla trademark violation involving someone trying to pass off their competitor’s goods or services as their own. The C&D letter’s failure to recognize this, given its source, expressly ought to be sanctionable in a better world.

   The real issue is one of two kinds of trademark dilution.

   The former, inapplicable here, is called blurring, and involves the use of a famous registered trademark outside the scope of the original mark to refer to goods and services.

   The latter, which is the basis of most anti-free speech claims is trademark dilution via “tarnishment, which is the weakening of a mark through unsavory or unflattering associations.” Of course, the very notion of a tarnishment claim in a case like this one runs headlong into traditional free speech/fair use considerations. Trademark delusion by tarnishment is little more than a defamation action brought on behalf of a mark as opposed to a person.

   This source lays out the lay of the land quite well and, in particular, spells out the particular species of fair use most involved in your post which is the “nominative use” version of the fair use defense.

   Nominative use occurs when use of a term is necessary for purposes of identifying another producer’s product, not the user’s own product. For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA Today for trademark infringement. The court held that the use of the trademark “New Kids on the Block” was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party’s products and services. When the above conditions are met, such a use will be privileged. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

   The federal appellate courts have generally been quite willing to extend New York Times beyond the defamation context to business torts that amount to mere defamation by another name claims.
   # posted by Blogger Andrew Oh-Willeke : November 01, 2007 4:35 PM

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   The pertinent part of the BidZirk decision states in response to a claim of trademark dilution that a statutory defense applies:

   “Under § 1125(c)(4)(C), no forms of news reporting and news commentary are actionable under § 1125. These terms are not defined in the Lanham Act. Further, there is no published case deciding whether a blogger is a journalist.”

   The court goes on to determine that “not all bloggers are journalists. However, some bloggers are without question journalists.” The opinion, of course, then finds that the blogger in question is a journalist.
   # posted by Blogger Andrew Oh-Willeke : November 01, 2007 4:42 PM

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   Keep up the great work man. Don’t let those idiot lawyers bully you. You are not infringing on anything except maybe those lawyers pride.
   # posted by Blogger AllenHark : November 13, 2007 4:12 PM

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   I am definitely NOT A Lawyer (and from the UK) but … Two thoughts arise:
   1. You could (and still could) have formally acknowledged their Trade Mark (using the usual blah blah that one sees all the time).
   2. You could have avoided a possible problem with breach of Copyright by altering their logo. Thus, for example, you could have crossed out the ‘try harder’ and put in ‘don’t try hard enough’. That would clearly be satire and covered under Fair Use.

   Good luck anyway
   # posted by Anonymous Anonymous : November 23, 2007 6:35 AM

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   I think it’s fair use. I don’t believe you’ve done anything inappropriate or illegal.
   # posted by Anonymous trademark registration : April 05, 2008 10:40 PM

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   What logo? It’s just a name in a red font.
   # posted by Anonymous Bob Bobson : July 24, 2008 12:13 AM

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