jonmac wrote:
>
> Michael Porter raises an interesting point when he says:
>
> So, likely, BMW would have to note the copyright infringement, show proof
> that they legally owned the rights, contact the courts and Ken Bertschy
> and issue him a cease and desist order, and prosecute for damages if he
> failed to comply, all of which are unlikely.
>
> On the issue of copyright per se, I doubt that BMW would actually go that
> far. Tat said, I haven't visited the site myself - and I probably won't
> either. However (and I know this is something where I've trodden on toes in
> the past - though with the best interests of the individual clearly in
> focus) the copyright may go by the board providing that a trademark does not
> appear alongside it. The point I think everyone should be in no doubt about
John, in America, copyrights are distinctly different than patented
trademarks. Representation of patented names are protected free speech,
already determined by several high court cases, as long as one does not
profit by unfair representation.
Where there is a name, all one must do is first provide a symbol in the
text to indicate that the name is trademarked if selling is involved,
i.e., (tm), and second, by the content of the referring text, assure
that no profit accrues to the referring body by use of the trademarked
name. In other words, if I write an article about several different
computer hardware companies, one of which is IBM, in the course of the
article, I only need to refer to them, in the body of the article, as
IBM, nothing more, because the context of the article is nothing more
than information.
However, if I am selling software, for example, which will run on an IBM
operating system, or requires the use of IBM software for mine to run
properly, then, I only need to refer to IBM with the added "(tm)" in
order to acknowledge to the public that my software is compatible with
theirs, and that I make no protestations that I represent IBM, or that
their products depend on mine. Where obvious profit is involved, I must
acknowledge their trademarks, and, tacitly, admit that their product
does not depend on mine.
In the case of the Triumph name, it is not active--the rights may be
owned by BMW or its Rover subsidiaries, but infringing on those rights
by referring to a prior wholly-owned trade name, under American law,
must clearly suggest loss of income from that infringement, and that
profit may be derived by the illegal use of the name. Referring to the
name without profit motive, or, for neither individual gain or
destruction of profit of the name-holder, means that the use of the name
for reference is protected free speech.
Neither BMW or Rover have sought to market under the Triumph name for
more than almost fifteen years. History would suggest that they have no
historical interest in the name with regard to historical data. If BMW,
were, for example, to revive the name, even if it applied to a re-badge
of an existing model, any unwarranted references, for profit, to the
name could be actionable in court, _if_, and only if, there were strong
evidence that the reference affected current market profitability.
Referring, for example, to an extinct model, in an historical context,
as many do frequently on the Triumphs list, cannot be construed as
trademark infringement, because of 1st Amendment protections to free
speech.
With regard, specifically, to identification of trademark, in the U.S.,
that identification is essential when trade is involved which might harm
the interest of the trademark holder. A good example of that might be
the following:
Three large parts houses in the U.S. offer Triumph parts for sale to
customers worldwide. Each of these houses uses the Triumph name for
identification purposes without identifying it as a registered
trademark, i.e., adding "tm." All of a sudden, BMW, recognizing a small
but steady profit, authorizes one single parts house in England to be
the sole factory-authorized parts supplier for all Triumph parts. It
advertises its parts house as the "only factory-authorized Triumph (tm)
parts source." By virtue of owning that trademark, BMW is entitled to
make that marketing statement (so long as it is true). They are not
entitled to restrict trade through the use of the name, according to
U.S. law.
In other words, an unauthorized parts source in, say, Oshkosh,
Wisconsin, or any of the three major suppliers in the U.S., are still
entitled to advertise parts for sale for Triumphs, using that trade
name. They are, however, not entitled to imply that they own the rights
to that name, and the independent parts supplier must, if BMW chooses,
for BMW economic interest, to acknowledge the trademark, but only to the
extent of "tm," nor can they imply or suggest or state that they are the
official factory-authorized source unless they have an agreement with
the name-holder to that end, or that they have any implicit or explicit
relationship with the name-holder.
That's, in a nutshell, American law with regard to trademarks... simply,
if one is not the registered holder of the name and has no formal
agreements with the name-holder, one cannot imply official association
with the name-holder and profit by such an implication of official
association with the name-holder which is not supported by law or by
contract with the name-holder. That's the gist of American law with
regard to trademarks, reduced to simple terms. One can continue to use
the name, and can even to make profits through the name, as long as one
does not link one's enterprise directly to the name-holder as if to
suggest or imply there is official sanction from the name-holder, if, in
fact, none exists.
Every Triumph dealership could use the phrase "Authorized Triumph (tm)
Parts Distributor," because, in fact, by contract with the dealership,
the dealership was authorized, officially, to use the name, within
constraints established by Triumph and the contract with the dealership.
Was the Beck-Arnley distributor around the corner prevented from using
the word, "Triumph," in describing some of the parts offered for sale
because of Triumph's arrangement with their dealerships? No. That is
protected speech in the U.S. Could that Beck-Arnley distributor
advertise that it was an "authorized Triumph parts distributor?" No. Not
unless Triumph or the later owners of the name specifically said so by
contract.
Cheers, John.
|