Hi Alasdair, thanks so much for this, I am most grateful!
I have a couple questions that relate to the use of third party brand names & logos. Sometimes manufacturers may use copyright in order to leverage their position against unauthorised resellers etc.
1) If an e-shop or retailer uses their own photos of an (original) product sold that has the manufacturer’s logo on it, could the manufacturer claim copyright infringement?
(on their website, in their catalogue etc.)
2) Similarly, when listing the product, is it OK to with naming the brand in the listing / advert?
(I.e. A product listing for a “Toshoba” air conditioner with detailed specifications) – what about their original sales copy?
3) If a product is built with compatibility for a brand, is it OK to name it?
(I.e. this engine is designed for “Yotota” (TM) cars)
Would any of your terms templates would be suited to add any additional protection for the above?
4) Does this standard term do anything?
“All product names, logos, and brands are property of their respective owners. All company, product and service names used in this website are for identification purposes only. Use of these names, logos, and brands does not imply endorsement.”
Alasdair Taylor's Answer
(1) The use of a photograph of a logo on a commercial website can in principle result in an infringement of copyright in the logo. However, this will only be a real issue where: (a) copyright does in fact protect the logo (for this it needs to be an original work and within the period of protection, usually the period of 70 years following the end of the year in which the author died); (b) the incidental inclusion exception does not apply (from s31(1) CDPA 1988: “Copyright in a work is not infringed by its incidental inclusion in an artistic work, sound recording, film or broadcast.”); and (c) the copyright owner is looking for a way to attack the publisher or is suffering some negative effect from the use. The incidental inclusion exception will cover many such uses. In other cases, you can reference brands in text form, rather than the logos.
(2) Section 11(2)(b) of the Trade Marks Act 1914 is likely to apply here: “A registered trade mark is not infringed by … the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services … provided the use is in accordance with honest practices in industrial or commercial matters.”
(4) I don’t think the quoted text has much effect in English law. The first sentence is a statement, simply fixing the reader with knowledge that someone owns the releveant IPR, but that is usually assumed in English law (although it might be different under otehr legal systems). The second sentence seems to be saying that the use of the trade marks is of a type similar to that referred to in s11(2) – but if a court thought differently, this sort of assertion would be unlikely to help the publisher. The third sentence is perhaps more concerned with liability to customers, asserting that no product recommendations are being given, on the basis that such recommendations could lead to liability (eg in the tort of negligence). Again, if a statement elsewhere on the website was in fact a recommendation, I doubt this snippet of text would make much impression upon an English court.