Fair use of vehicle manufacture's trade mark

Copyright Law Blog reports a US case (in New York) concerning the use by a used parts supplier of a vehicle manufacturer's trade mark. It's the classic situation where someone in the independent aftermarket can hardly be expected to run a business without referring to car makers by name, but can easily go too far. In the UK and EC, we have had similar cases like Volvo v Heritage and BMW v Deenik where the tribunals have explored the extent to which traders must be free to use others' names even if that name is a registered trade mark. In the US, they have the helpful notion of "nominative fair use", not far removed from parts of section 11 of our Trade Marks Act but expressed, perhaps, in more helpful (and general) terms.

For a trader needing to refer to a car maker, or other business, in this way, the distinctions drawn in this American case are useful guidance - though not, of course, binding on English or European Community courts.

The defendant, Shokan Coachworks, had used "Shokan Audi Parts" in its email signature block - a usage which, the court thought, could create consumer confusion. The strength of the Audi trade mark was a factor in coming to this conclusion (but if the trade mark had been weak, there would have been little point in using it this way, perhaps).

As for nominative fair use, the test applied by the court (the 9th Circuit's test, preferred over that of the 3rd Circuit, if you're interested) was:

1) the product or service in question is not readily identifiable without use of the trademark;
2) only so much of the marks are used as is reasonably necessary to identify the product or service; and
3) the user does nothing that would suggest sponsorship or endorsement by the trademark holder.

In this case, the court held that Shokan had fallen at the third hurdle and their use of the name in their signature block, and also when answering the phone using their trading name "all Audi", which was the key part of the free telephone number that Audi had previously agreed to them using.

here was also another interesting aspect to the claim, namely that Audi alleged infringement by using an email address that incorporated the Audi name. however, they failed to produce suitably authenticated prinouts of web pages to satisfy the court - illustrating an important point about proviving trade mark infringement on the Internet.

"Can I write my own Da Vinci Code?"

I undertook to give a talk under this title to a topical supper meeting of Writers in Oxford some time ago. In the meantime it expanded rather, because (I assumed, anyway, probably correctly) that the audience would also be interested in the saga of "Coming Through The Rye", the unauthorised sequel to "Catcher". (In adding some material on that subject, I was assisted by my friend Lloyd Jassin in New York.)

So I duly turned up, and so did seven others to hear what I had to say. I promised a few people that I would post a recording of the talk on the web, and despite the fact that it turned out to be more like a conversation than a talk and we were interrupted from time to time by waitreses bearing plates of food, I have done that and here is the result.