purpose when it does in fact in-link does not mean that the institution may ignore the developing precedent. Just as the nonprofit institution—be it a library, museum, archive, school, college, or university—cannot freely copy or display without limit from copyrighted materials simply because it is nonprofit, that same institution cannot ignore the property rights, real or virtual, of others. This position is underscored in situations where the primary market for the protected work is a nonprofit one, educational, for example.
The final lesson of Ticketmaster, eBay,and their progeny is that pro- prietors of commercial sites often believe that it is within their prerogative to control linking to their sites. The law is still developing, and libraries should continue to monitor these developments. If noncommercial librar- ies link to commercial sites or even to other noncommercial sites (i.e., sites that are not-for-profit but still potentially partisan or in competition with other nonprofit organizations), the most conservative course of action would be to check the site’s legal page, link only to the site’s home page, or seek permission for the deep link.21Entering into a web link agreement is another possibility.22 However, other concerns may arise; for example, the appearance of a commercial product or service endorsement by the nonprofit entity may be prohibited by the entity’s own bylaws. This type of tacit or implied endorsement may run afoul of nonprofit institutional restrictions as contained in the entity’s governing articles or bylaws.
Furthermore, a web link agreement raises its own complicating issues, e.g., review of contract or approval by institutional legal authority (general counsel). In the alternative, in commercial settings, when an actual associ- ation does in fact exist and it is not disclosed or the link is made in such a way as to disguise the association, it may give rise to a claim of unfair com- petition.23It may be easier to just obtain a simple (written) permission to deep-link to a commercial website, similar to the copyright permissions routinely obtained for the use of copyrighted materials. A record of this permission to link could be kept on file with the appropriate staff member.
Q12 Briefly, what are some of the underlying principles of trademark law?
Trademark law is governed by both a federal and a state scheme of pro- tection. A trademark owner’s value in a mark is tied to the relative dis- tinctiveness of the mark; for example, the mark “Amazon.com” distin- guishes that company’s services from competitors’ similar services. “Brand- ing” has become increasingly important, and if a library’s web page uses someone else’s trademark, even inadvertently, it could face some legal challenges of infringement.
Q13 What is trademark infringement?
Trademark infringement would occur if a library’s conduct is “likely to cause confusion, or cause mistake, or to deceive” as to the “origin, spon- sorship, or approval” of the defendant’s (the library or educational insti- tution’s) goods or services.24In other words, the library could be accused of interfering with the distinctiveness of the plaintiff-trademark owner’s use of a particular mark in relation to that owner’s goods or services.
Trademark owners strive to maintain that distinctiveness when tying spe- cific marks, words, sounds, colors, and logos to the provision of their spe- cific products and services.
Q14 What is trademark dilution?
The use of a mark by someone other than the trademark owner may tend to confuse consumers or, in a special form of trademark infringement, it may “dilute” the strength of the mark by harming the good name of the mark (tarnishment) or by decreasing the value of the mark (blurring) by its use on dissimilar products and services. Special protection against dilu- tion is awarded to famous marks under federal law.25 Many states also have anti-dilution statutes. While tarnishment is arguably something libraries might not engage in by design, it is not unfathomable.
Hypothetical Library Cases
“James Dean” and “Barney” Cases
Suppose a library compiled a website display or exhibit related to popular cultural icons protected by trademark, such as the late actor James Dean26 or the children’s dinosaur character Barney.27 Let’s suppose the library creates promotional material suggesting that no matter how “cool” one
tries to appear, unless one visits the library instead of running wild, an early grave awaits (just as it awaited the glamorous young actor of the 1950s). Or that if the dinosaurs had visited their libraries a bit more often they would not be extinct (or at least would not now be represented by an oversized and overstuffed bumbling purple character). Both are negative reflections on the original trademark characters. Let’s also say that no actual image of James Dean or Barney is used, but the characterization is similar enough to suggest to viewers a recollection of the original marks—
yet no one would confuse the designs of the library with the originals, and without confusion there can be no trademark infringement. Since dilution does not require that the use of the other mark cause confusion among consumers,28 a library might accidentally harm the dilution rights of a famous mark owner.29 The library display benefits, it rides the coattails, so to speak, of the original marks of James Dean and Barney. Both are arguably famous marks under the federal statute, and in fact, both the James Dean30 and Barney31 marks have been the subject of tarnishment or tarnishment-like litigation. Dilution in this sense protects against “tar- nishment of the reputation of the plaintiff’s mark by association with something unsavory, unwholesome, or of poor quality.”32 Alternatively, the library might use the appeal of James Dean or Barney in its own pro- motional literature—in a manner similar to the “Read” promotional posters of the American Library Association—to sell some of its own pub- lications such as greeting cards, T-shirts, or other library memorabilia.
“McRead” Promotion
Suppose a library designs and sells a series of “McRead” posters that say
“over one billion read,” referring to the books available in the library.
This could dilute the mark of McDonald’s. Others have tried to benefit from the name recognition of the famous fast-food chain’s mark to no avail in cases involving a hotel chain (McSleep)33 and a bakery product (McBagel).34Dilution by blurring is a “whittling away of an established mark’s selling power through its use on dissimilar products or services.”35 Q15 If my library uses someone’s trademark, either inadvertently
or deliberately, is it on better footing in a dilution lawsuit if its use is noncommercial?
Yes. Assessing the federal Trademark Dilution Act of 1995,36 one com- mentator suggests that application of the act “will turn on whether the
challenged trademark use was for commercial or noncommercial pur- poses.”37 The federal dilution statute is triggered only when the library engages in a commercial act in conjunction with the use of the mark. This suggests a safe harbor: a noncommercial use of a mark (in criticism, comment, or parody, and in educational or personal uses in general) can never be the subject of a dilution claim.38The plain language of the statute also supports this interpretation,39although one commentator40suggests this interpretation may raise constitutional commercial free speech issues, i.e., impermissible disadvantage imposed upon a category (commercial) of protected speech. Regardless of the noncommercial dilution safe harbor, unauthorized use of the mark may still subject the user to a claim of general trademark infringement.
Q16 Does a library have a First Amendment right to comment or criticism using someone else’s trademark?
The greater the extent of actual comment, criticism, or even parody in the library’s use of a trademark, the greater is the likelihood of a successful First Amendment defense. Presumably, a library or archive could seek First Amendment refuge for the use of a trademark in an exhibit or display when its use is part of a broader protected educational criticism or social commentary.41 Parody is a way of claiming that no likelihood of confu- sion exists “because consumers will get the joke.”42If, through the use of a mark in parody, it is clear the user is in no way implying or suggesting sponsorship, endorsement, etc., then the rights of the trademark owner have not been infringed. While parody may in effect be a “defense” to a claim of trademark infringement,43 not every display that confuses or reduces distinctiveness (infringes trademark) or tarnishes or blurs (dilutes) is intended to be parody.44It is also difficult to claim that a “bright line”
exists between commercial and noncommercial uses of a trademark in parody.45 However, the parody is clearly less protected if it involves a commercial use of the mark in parody than if it involves a noncommercial use of the mark in parody. It is less protected if placed on a library T-shirt for sale and distribution than if it is part of a library web page or an in- house display.
Q17 When is a library’s use of a trademark considered “fair use”?
“Fair use” in trademark law is based on the similar concept in copyright law, i.e., that an intellectual property owner’s right to control the uses of
his or her work is limited by certain rights of public access to the work.
Those rights are embodied in the concept of fair use. However, in trade- mark law the fair-use rights of persons other than the trademark owner are far more limited and far less developed by the courts than they are in copyright law.
There are two types of trademark fair use, descriptive and nominative, and the library might engage in practices that might invoke either or both types as a defense. Descriptive fair useof a trademark can occur when the
use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own busi- ness, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geo- graphic origin.46
For example, if a library were to use the words “Hot Picks” to describe the library’s products or services—in a reading corner, exhibit, display, or special collection featuring recent best-sellers or seasonal favorites—it might not realize it is using a defendant’s trademark belonging to someone else.47If a library’s catalog record contains a self-made subject heading for
“world beat music,” the label “world beat music” is too generic to impinge upon someone else’s trademark when merely used as a descriptive term.48 In both the “Hot Picks” and “world beat music” examples, the library does not use either as a trademark; rather, its use of another’s trademark is merely descriptive of something else.
Nominative trademark fair use is a concept created by the courts to determine when the use of another’s mark to reference the trademark owner’s product or service is a fair use. The fair use is of the name of the trademark owner’s product or service; the fair use “names” (nominative), represents, or identifies the trademark owner’s mark. Under this doctrine, a library is allowed to use the plaintiff’s trademark to identify the plain- tiff’s products and services and the relationship of those products or ser- vices to the defendant’s products or services.
The test for nominative fair use, as articulated by a recent court case, is in three parts: (1) the product must not be readily identifiable without the use of the trademark, (2) no more of the trademark is used by the library than is reasonably necessary to identify the product, and (3) the user must not act in such a way as to suggest sponsorship or endorsement by the plaintiff.49In the New Kids on the Blockcase, a court allowed a
900-phone number vote for your favorite New Kid on the Block, since there was no way to identify what the contest or poll was about without using the actual trademarked name of the teen idol singing group. Only as much of the trademark that was necessary was used, and the poll service disclaimed any association with the New Kids on the Block band itself.
Hypothetical Case: Library Puts PBS Logo on Its Website as a Link
Let’s suppose a library places the “faces” logo of the Public Broadcasting Service (PBS) on its website (or in its online catalog) and uses it as a prompt or logo-link (clicking on the logo activates the link). Activating the logo-link takes patrons or students to the PBS site where they can locate additional information regarding the documentaries that PBS airs. The PBS mark is in fact protected by federal trademark.50 The library may intend no harm; it uses the logo-link as a convenient and visually appeal- ing way to allow patrons to seek out additional information, such as other related video titles. Although the purpose behind this use might be rea- sonable—education or personal use—this use nonetheless may disturb or interfere with the distinctiveness or strength of the mark.
Placing the PBS “faces” logo on the library website could also be ana- lyzed under a “dilution by blurring” framework. Blurring might occur if the library designed its own PLS (Public Library Services) faces logo. If this logo began popping up on library websites across the country, it could be viewed as diluting the strength of the PBS mark. The use of the PLS faces logo by all of these other “public” institutions blurs the distinctiveness of the original PBS faces mark. PBS might be concerned that such use of the logo confuses viewers of the library website as to the connection between the public library that circulates in its collection tapes of various PBS pro- grams and the franchised public television stations on which those pro- grams are shown. It might be logical to believe that this “harmless” non- commercial use by a library or even a multitude of uses by a multitude of libraries would not interfere with the PBS trademark. However, the problem for PBS will come when a competitor uses the PBS logo as a trademark and PBS then desires to halt that use. If the competitor can show that PBS does nothing to police the use of its mark or that consumers are generally confused about the origin of the PBS mark (public libraries versus public broadcasting), PBS will lose its case. The competitor would try to demonstrate that web users have come to view the PBS mark as an
indicator of documentary or reference-type resources in general, whether available from the local library or from the PBS video store or its 800 toll- free service, for example. Survey and marketing studies would be per- formed to substantiate these claims. As part of its litigation strategy against the library, PBS would need to demonstrate an association in the public mind between the PBS mark and the library’s goods or services.51 Fair Use Defense
An analysis of the library’s situation under the nominative fair-use defense might look like this: (1) Is there some other way to identify PBS videos in the library collections without use of the PBS faces logo? Certainly there is. (2) Must the library use the faces logo, or could it get the message across by using only the abbreviation “PBS” or the name “Public Broad- casting Service”? It could use the latter. (3) Did the library act in such a way as to suggest sponsorship or endorsement by PBS? If this were the only concern, a disclaimer on the library website disavowing any connec- tion or formal relationship between the two is advisable.
Although the library might want to use the PBS trademark to indicate that its collection contains educational videos from PBS, “where a defen- dant uses a plaintiff’s distinctive lettering style, color scheme, or logo, the nominative fair-use defense likely will fail.”52 Use of the PBS logo in the virtual catalog or exhibit to indicate PBS holdings by the library or as a hot-link to take users to the PBS.org site would be unlikely to survive the fair use test.53The use of a trademarked domain name such as “PBS.org”
on the library website or online catalog would not meet the same fate, since there would be no other way of effectively identifying the Public Broadcasting Service; one couldn’t very well refer to the latter as “that entity where the Ken Burns Civil War and Baseball documentaries first aired.”
Trademarks in Metatags
Q18 Will a library ever want to use trademarked phrases in its metatags?
Metatags are tags that summarize the content of web pages.54If contact- ing the library’s website counts as a circulation or visit, then indeed the library may be interested in doing all it can to promote access to and con- tact with its website, as opposed to another site of similar information. Like- wise, an educational institution that launches a copycat degree or certificate
program may want to deflect prospective students to its mirror program instead of the more established program. This may be especially true if budget allocations are based upon output measures such as visits per year per capita or enrollments. The library might use a trademarked word or phrase as a metatag cue to attract a “hit.” If so, the library is likely to run afoul of the trademark law. In a recent case, an appellate court upheld a preliminary injunction barring one company from using the similarly worded trademark of a competitor in its domain name and metatags.55 While misled customers would eventually realize the guise, the “initial interest confusion” was sufficient to raise valid trademark concerns.
Q19 What would be an acceptable use of a trademark metatag by a library?
When metatags contain another party’s trademark merely to indicate a fair use of the trademark in the website’s visible contents, use of the trademark in the metatags will likely be protected.56 Under these restrictions, merely using the name “Public Broadcasting Service” as a metatag in an attempt to promote institutional holdings containing the complete PBS video library might qualify as an acceptable nominative use of a metatag mark.
Trademarks in Library Domain Names
Trademark law allows the use of the same name by different entities, so long as there is no likelihood of confusion by consumers as to the source, sponsorship, or affiliation of the goods or services involved. Parties in the physical world have geographical and product-specific ranges; in the online world, however, those territories can merge.
Q20 A Public Library has a registered domain name with the acronym “APL” in it. What happens if “APL” is a trade- mark belonging to someone else?
It depends. Under the old Domain Name Dispute Policy administered by Network Solutions, Inc. (NSI; the company that at one time had exclusive administration over several top-level domains), the APL trademark owner needed merely to give NSI a trademark registration certificate to initiate a challenge. The library would need to reply by submitting its own trade- mark registration to NSI, with a registration date prior to the dispute. If unable to do so, the domain would be taken away from the library, and a