[Foundation-l] Fair Use and Registered Trademarks

Mon Jul 18 18:00:41 UTC 2005

Rowan Collins wrote:

>>>I really don't know
>>>what you could and couldn't do once Mickey Mouse was no longer
>>>*copyrighted*, but still considered a *trademark*. 
>>>      
>>>
>In other words: I plead ignorance, your honour. I *don't know* in what
>circumstances the trademark status would come into play. But I very
>much doubt that a trademark expires completely and incontrovertibly as
>soon as something containing that trademark enters the public domain.
>
You would do well to look at just what trademark infringement is.  The 
following is from http://www.bitlaw.com/trademark/infringe.html

    In a nutshell, a plaintiff in a trademark case has the burden of
    proving that the defendant's use of a mark has created a
    likelihood-of-confusion about the origin of the defendant's goods or
    services. To do this, the plaintiff should first show that it has
    developed a protectable trademark right in a trademark. The
    plaintiff then must show that the defendant is using a confusingly
    similar mark in such a way that it creates a likelihood of
    confusion, mistake and/or deception with the consuming public. The
    confusion created can be that the defendant's products are the same
    as that of the plaintiff, or that the defendant is somehow
    associated, affiliated, connected, approved, authorized or sponsored
    by plaintiff.

When the matter arises we need to analyse the situation in those terms. 
Thus for the 1911 Encyclopedia Britannica:

1. We acknowledge that EB has a protectable trademark.
2. The reference to the name may seem "confusingly similar".
3..We are aware of the likelihood for confusion and deception, but we 
can dispel this likelihood by a properly place disclaimer.
4. Like them we are in the encyclopedia business, and we continue to 
show the Wikipedia is a completely different publication from theirs.  
Our publication of the 1911 material is in a distinct project that is 
still associated with Wikipedia, and is still a part of the Wikimedia 
family. 
5. We do our utmost to show that we are not in any way "associated, 
affiliated, connected, approved, authorized or sponsored" by EB.
6. We are prepared to negotiate with the trademark holders to insure 
that no confusion arises.

Being in Alexa's top 100 means that we are no longer a bit player.  
Analyzing these situations like a bit player may not be effective.   
When everybody goes to the track and bets the longshot they need to 
realize that such a collective effort can turn the longshot into the 
favorite.  I think that it's important that we become aware of our 
effect on the marketplace.

Ec