When authoring a book or publishing an article, you, as the author, may wish to include images of a brand name product on the cover, or may wish to reference a brand within the text. You might wonder - Is that legal?
The short answer here is that you will likely require permission and consent in writing. When creating a literary work, you typically cannot suggest an association with a protected brand without permission.
In many jurisdictions, brands will go to great expense to register a trademark to their slogans and phrases, and those brand names would likely not be allowed in a manner that would draw attention to the title or on the front cover of an authored work, unless you, the author, has received permission from the owners of the image, name or phrase in question. (This, of course, also applies to any brand images, logos or pictures of a company or product).
There are two reasons why this could get you into trouble:
1. “Passing off”
Passing off, in many jurisdictions, is both a common law tort and a statutory cause of action. It refers to the deceptive representation or marketing of goods or services by competitors in a manner that confuses consumers. You, as the writer, must be careful not to infringe upon the trademark of another person (whether or not it is registered).
The reason behind this is that your usage might create confusion to the potential consumer of your product (or the referenced product) that such company is in some way associated with, or is endorsing your literary work.
Where that confusion creates financial benefit for you, the holder of the trademark (whether their trademark is formally registered or not) would, in many jurisdictions, have a cause of action (could sue you). For companies that have registered that mark, their willingness to pay to protect that mark may be more swift and at greater cost).
This protection applies the unauthorized use of someone else’s trademarked name, slogan, fictional character, and/or brand identity in a way that would cause a “likelihood of confusion” as to who owned the mark.
What could happen?
If you do infringe upon an individual or company’s trademark, there are several ways in which they may choose to act in response.
A common first step is for a trademark-holder to send a cease and desist letter- a letter from (or on behalf of) a trademark owner requesting that the recipient cease and desist from engaging in infringing activities and demanding certain remedies and assurances from the alleged infringer. These letters may not legally mandate the recipient to take action but rather explain that continuing with their current actions will likely lead to greater consequences.
At the other end of the spectrum, an aggressive trademark-holder may decide to use this as an opportunity to try and benefit financially from your infringement. They may first ask for monetary compensation as recompense for the infringement already done. If they decide to take a more proactive or litigious approach however, a lawsuit for infringement may be brought against you. It is not unheard of for such a “takedown troll” to contact a publisher requesting that the offending image be removed, and accompanying with a statement of claim and an invoice requesting immediate compensation to avoid the filing of a lawsuit.
2. Disparagement/Defamation
You also want to be careful not to tarnish the brand’s name and/or identity. This doesn’t mean you can’t have an opinion about the brand, it just means you cannot tarnish the brand by making false claims. Loosely defined, defamation occurs when a person makes an untrue statement, which is broadcasted, and which causes injury to the person referenced by the statement. Examples of defamatory statements include:
- Statements that reflect negatively on a person’s integrity, morality, or character
- Statements that suggest that a person was involved in a serious crime
- Statements that suggest that a person has a mental or physical defect that would discourage others from associating with him or her.
Examples of injury could include that a financial loss results from those statements that are made.
So can you never use the name of a brand in your published works?
No! There are instances however where the usage of the product or company may be acceptable:
- If, you are using the brand name to reference or identify the brand itself, with no intention to identify it with your own brand, then you are likely not infringing on someone else’s mark.
- As well, many jurisdictions will allow you to use the name of the company and the product with the stipulation that any information you use is in your own words and is factual. “Factual writing” is where your use of a brand or company name in writing is based in fact. For example, a character in fiction could be taking pictures with a “Panasonic”. You can use a company name as long as the use is for editorial purposes and you accurately depict the brand. You want to be careful not to tarnish the brand’s name and/or identity. This doesn’t mean you can’t have an opinion about the brand, it means you cannot tarnish the brand by making false claims.
- As publishing an authored work can be very public, you are likely to be discovered, so the risk of making a mistake is worth confirming - make sure you seek an expert legal opinion if you are concerned, prior to publishing! Clausehound licenses (with permission) articles from Mondaq.com, and there are a few that can shed more light on this, from lawyers who have discussed this topic around the world.
Read a case application on passing off
More information on using character merchandising
More information on trademarks and other forms of literary protection
Takeaways
- Seek permission where possible.
- Don’t “pass off” or try to derive benefit from someone else’s mark - or they may come after you.
- Don’t disparage someone’s brand (either personal or registered mark) without being prepared for the possibility of being sued.
- Always be sure to consult with your local counsel as to the laws of your specific jurisdiction.