Bloggers Beware – use company logos at your peril!

From OUT-LAW News, 12/11/2007

A US blogger who reported on a court ruling has been ordered by car rental firm Avis to remove an image of its logo from his blog posting to avoid charges of trade mark abuse.

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."

As it happens Turkewitz himself doubted whether he had actually violated their TM and quite frankly, I can’t see that he has. Using the logo to illustrate and accompany a post related to the business sector of that company can hardly be said to be using that trademark ‘in the course of a trade’ – a crucial element for a TM infringement to be made out.

Under English law, it’s difficult to argue that such use of a mark in any way prejudices the owner for the purposes and nature for which trademarks are granted. Turkewitz merely used the mark for ‘illustrative’, that is to say, ‘descriptive’ purposes, which is thus covered by an exemption to infringement as seen in: Bravado Merchandising Services Ltd. v Mainstream Publishing (Edinburgh) Ltd [1996] FSR 205.

With such little credibility attaching to the trademark infringement argument, Avis could try making a copyright infringement stick; such a claim makes far more sense than this 'trademark violation' business. Here, though, the ‘fair use’ defence may apply which is more generous that than its English counterpart, ‘fair dealing’.

As it stands, Turkewitz has left the ‘offending’ graphic in place and adopted something of a ‘wait and see’ policy, I guess. For the record, I’d have done exactly the same and hope these ridiculous allegations of infringement soon die the death they deserve.