I just want to call a banana a banana, please don't sue me!
July 7, 2011 4:30 AM   Subscribe

A question about common nouns and issues of copyright...

...like "apple" or "banana" , used to describe an apple, a banana or an image of one?

Let's say for example, you had an online shop where you were selling earrings shaped like apples, and your product listing title was "apple earrings". You couldn't possibly be sued by the Apple company for that, right?

Now say that you printed a t-shirt with an image of a banana on it and sold it online under the title "Banana T-Shirt". Now imagine that there was a company called "Banana" which also sold t-shirts (not necessarily featuring bananas), who had trademarked the term "Banana" in reference to fashion items. Would that mean that you were breaching the copyright of the Banana company and they had a right to sue you? If yes, then it would follow that no one could ever describe any fashion item using the word "Banana", right?

For the purposes of this question, let's assume that the Banana company operates from a European country, across Europe. And let's assume your online store operates from a different European country, also across Europe.

Also for the purposes of this question, please excuse my ignorance of copyright law ;)
posted by guessthis to Law & Government (11 answers total)
The issues you seem to be inquiring about seem to lie mostly within the realm of trademark law, not copyright. IANAL/TINLA.
posted by paulsc at 4:46 AM on July 7, 2011

For starters, I think you have copyright and trademarks mixed up. Copyright protects deals with intellectual works (e.g. films or music), trademarks protect signs and names (e.g. the name "Banana T-Shirt").

As to your actual examples the idea, in principle at least, is to stop things that will confuse and mislead consumers. Apple probably can't sue you, because earrings are sufficiently distinct from electronics that nobody will mistake you for Apple Co. On the Banana case you are probably at fault though, because someone might think your shirt was made by Banana Co.

Note that IANAL, and also that a big company with an important trademark might sue you anyway to hassle you and protect their brand, even if their chances of winning are poor.
posted by Dr Dracator at 4:49 AM on July 7, 2011 [1 favorite]

Response by poster: Thanks guys, I did indeed mean trademark law.
posted by guessthis at 4:52 AM on July 7, 2011

Best answer: IAAL, and this is definitely a trademark issue, not a copyright issue. As a matter of fact, it's really, really difficult to copyright a trademark.

A trademark is a sign or other indicator used to signify the origin of a good or service. Logos are the prime example, but the name of the company as such can also be protected. Trademark protection is indefinite, so long as the mark continues to be used.

Copyright protects "creative works of authorship" for a "limited" time.*

But you have picked up on something, despite the confusion: trademark protection has limits that copyright does not. Specifically, trademark protection can be limited both in geographic area and market sector. "Famous" marks (and yes, the term has a legal definition) are protected from just about everything, just about everywhere. But marks used by small businesses are generally afforded much less protection. Say, for example, we're talking about a maid service called "Clean Sweep." It's even got its own little logo. If another company wants to set up shop in town, and starts calling themselves "Clean Sweep," there's probably a viable trademark action, as the risk of consumer confusion is high. But if the competitor were two states over, they'd probably be okay. Similarly, if a drug rehab outfit calls itself "Clean Sweep," they could probably do that, because the two companies aren't in the same industry.

In addition, trademarks are afforded more or less protection depending on how distinctive they are. Apple Computer has run into some issues with that before, because the word "apple" already means something, so using it to sell computers is an "arbitrary" mark. That's better than it could be, but not as distinctive as "Microsoft," which is a made-up word.

Europe is a slightly different kettle of fish, because the EU has some IP laws in place that cross national boundaries, but the analysis is basically the same.

Really though, trademark is a pretty fact-intensive issue, and you haven't provided enough in your hypotheticals for any kind of rigorous analysis. Hopefully the links above will get you started.

*I put the word in quotes, because the period is set by Congress, which has not shown any willingness to actually impose any kind of limit. The current period is seventy years after the death of the author, but you can bet your ass that the next time Mickey Mouse is close to entering the public domain that they'll up it again. The Supreme Court authorized this the last time it happened.
posted by valkyryn at 5:04 AM on July 7, 2011 [7 favorites]

You should do some research on the litigation between Apple Records and Apple Computer.
posted by decathecting at 5:58 AM on July 7, 2011 [1 favorite]

Apple was an interesting case because back in the day, probably no one ever dreamed that this computer company would ever become one of the biggest names in the music business. So if you made Apple earrings and they became incredibly famous, perhaps in 30 years you too could be in litigation with Apple computer when they start their 3D jewelry printing business.
posted by randomkeystrike at 6:40 AM on July 7, 2011

Just FYI, "apple earrings" returns 225,000 results on Google.
posted by misterbrandt at 7:48 AM on July 7, 2011

Best answer: Trademark law is not cut and dry. It's expensive to go after someone over and above a C&D letter and rulings like what you're talking about are where the judgement of the court is handled on a case by case basis.

When you work with a trademark attorney, every conversation starts with "Nothing is without risk." I actually made one of my old trademark folks a mug that said that. There are only 26 letters in the English alphabet and with similar structure, there are just so many names.

Your trademark give you a judgement based on a number of factors, including how powerful the organization that could be in conflict with you is, how litigious that organization has been in the past, how rapidly you could eliminate things from the market if you get hit with a C&D or a judgement. But really, they're just going to say, "It's about this risky. Want to go for it?" Someone who is not a lawyer has to say, "Yes, we would like to assume that business risk."

The legal standard in the US is potential for consumer confusion. If the earrings look like the apple logo or trade dress (brand look and feel for us non-legal types), if a reasonable consumer could think, "Hey look! Apple(tm) brand earrings!" you're going to get hit.

Some organizations file against words in order to make the case that they are descriptive so they can't get sued, but anyone else can use the term as well.

If you're going beyond the US, the standard is different from country to country, with Asia being the biggest pain to both search and protect in.

Edge tennis rackets and Edge shave gel coexist happily. WWF (World Wildlife Federation) and WWF (World Wrestling Federation) were able to happily live side by side until the Internet made it *confusing for a reasonable person* to tell the difference with URL and searching and otherwise.

Alas, my NDAs make giving you the many, many real world examples I'm more familiar with impossible to share, but hope this helps.

(Standard caveat: I am not a lawyer or your lawyer. This does not constitute legal advice. I'm just a professional namer who's racked up millions in trademark attorney fees for my clients over the years and got to fly-on-the-wall a lot of it.)

posted by Gucky at 10:53 AM on July 7, 2011

Also, "descriptive" is a highly subjective term.

Choose your legal folks carefully so that when you have to name, say, a pattern on a laptop bag "Lightning Electro-Robots", your legal can go, "Yeah, that literally describes that pattern. Sure." and you don't have to do the search, file and protect.
posted by Gucky at 10:56 AM on July 7, 2011

Response by poster: Thanks everyone, your comments and tips have given me a jumpstart on finding out more about what seems like a really complex issue. It's something which comes up at my place of work all the time, and we have a legal team who takes care of it nicely, but I've always been curious as to how they work it out.
posted by guessthis at 2:07 AM on July 8, 2011

I've always been curious as to how they work it out.

With lots of legal research, for which they are presumably well paid.

But I'm sure they'd be happy to give you a little crash course, if you asked. Most lawyers are more than happy to geek out about their current projects, particularly where there aren't any confidentiality problems involved.
posted by valkyryn at 11:51 AM on July 11, 2011

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