Is Your Business Infringing on the Intellectual Property in Other Companies’ Logos?

Increasingly, I have noticed a trend with websites: more and  more, companies are displaying other companies' logos on their websites.  In fact, when my new website was in development, my developers proposed that I do the same.

However, if you are displaying other companies logos on your website, there is a high likelihood that you are infringing on the intellectual property in those companies' logos.  Do you have a signed trademark license with each company to use their logos on your website?  If the answer is no, then you are probably infringing.

I understand that this type of infringement seems to be something that everyone is doing now, but not so long ago, "everyone" was downloading music for free too, and I'm sure almost everyone in the blogosphere knows at least one person who has been sued by the RIAA for copyright infringement due to the illegal downloading of music.  Just because "everyone" is doing it, certainly does not make the action any more legal--just perhaps it means that many companies are not at the moment enforcing their rights in their logos.  However, this could change.

Displaying another company's logo without first licensing the right to use the logo, infringes the copyright in the logo's design.

Section 102 of Title 17 of the U.S. Code ("Copyright Act") states as follows:

a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

Thus, as a pictorial or graphic work, the logo is clearly protectable by U.S. Copyright Law, unless, of course, its use fits within the fair use exception.

Section 107 of the Copyright Act sets forth the fair use exception as follows:

[T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work. . . .

The problem with arguing that the use of another company's logo on your website without permission is a "fair use" is that: (i) if you are a for-profit business, the use will be commercial and (ii) you will be using the entire logo (not a portion of the logo).  In addition, you can certainly argue that use of another company's logo can have a dilutive effect on the value of such other company's logo and brand generally.  See the definition in Wikipedia of "Trademark Dilution."  It simply is not clear that the fair use exception would extend to allow the use of other companies' logos without permission on a website.

In addition, using another company's logo without permission can in some instances also constitute trademark infringement.  The test is whether the mark is being used with respect to products or services that are the same or similar to the products or services covered by the trademark registration, such that a "likelihood of confusion" exists.  In most cases, providing a list of logos on your website for advertising purposes is not going to constitute trademark infringement, since the typical business using unauthorized logos is doing so to identify customers or clients of the company, or to list news organizations where their product has been featured.  Such use does not generally rise to the level of trademark infringement.

If you have been using logos without authorization, you may wonder how to remedy the problem.  Well, you simply need to contact each of the companies whose logos you want to use and ask for a copy of their license to use their logos on your website, which they should be very willing to provide to you.  I recommend that you retain the services of a licensing lawyer to review the license and ensure that the agreement authorizes your current and intended use of the logo.  You may or may not decide to ask that the agreement be backdated in order to authorize retroactively your prior use of the logo.  While making such a request could open a can of worms by alerting the other party to the fact you have been infringing, it will also ensure that you will not have any future legal problems with that company down the road over your past authorized use.  A judgment must just be made in each case as to how best to handle the situation with each company you have infringed.

While the process of cleaning up your company's unauthorized use of trademarks on your website can be daunting, once this has been dealt with, you can breathe easily knowing that you have minimized your company's liability in this area.   A slow economy is the perfect time to take on such a project.