Publishing Another Company's Trademark

Question

I write for a University humor magazine and we are coming out with a book. Because we are a public university, we normally are allowed to publish any image we find online in our newspaper. However, because we are publishing a book we are being safe and checking copyrights of any image we decide to use. I think I have a decent grasp of how copyright laws work, however trademarks are new to me. Are we allowed to publish a company or organization logo (Starbucks, BIG10, Penn State) in a book? As we are a humor publication we will be making jokes about each business or organization, however we will not be presenting the joke as a fact and I felt like including their logo would not count as infringement or dilution. Most of the information I have found is about creating your own trademark and not about publishing other trademarks.

Answer 1

Because we are a public university, we normally are allowed to publish any image we find online in our newspaper.

Not the core of your question but this statement is just not true. If the copyright holder decided to sue you for using their picture they have a good chance of winning, subject to a fair use defence, which given the fundamental misunderstanding of copyright law here seems unlikely. Just because it hasn't happened yet doesn't mean it wont.

As to "I think I have a decent grasp of how copyright laws work"; I wouldn't be so sure of this if I were you. I strongly suggest that you run your editorial guidelines about this past your law faculty; watching their conniptions will be worth the price of admission.

For example, if I am a freelance photographer and take a photo of, say, the president of your university then copyright in that photo is mine. You can only use it (in your magazine or a book) with my permission or if your usage falls within the fair use doctrine.

For fair use to apply the court will use a four factor balancing test:

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work.

For a university magazine:

1. the purpose is not-for-profit but it is not educational
2. the photo was taken in circumstance where I expected to profit by it by selling to a commercial newspaper, for example
3. You used it all
4. If you posted it on the web in a way that allowed it to be copied you have substantially reduced its value to me.

This is highly unlikely to be fair use and I would probably succeed in a lawsuit.

The same hold true for the copyright in trade marks.

In addition, if you defame the brand then you can be sued for that. Parody is a defence but you need to be very careful that a reasonable person would understand that your book is parody - that is quite likely someone who doesn't know you or your university who picks it up 10 years from now.

Notwithstanding, companies with major brand value to protect will send you a cease and desist letter as a matter of course. Even if you are right, Disney has $1 million to spend proving you are wrong and tying you up in courts for 5 years; how much money do you have to defend your position?