by Linda Joy Kattwinkel, Esq.

Q: I have designed a logo, which is similar to a known trademark logo. My new logo uses elements taken directly from the trademarked logo, but manipulated in a way that makes the new logo look dramatically different. However, it is very easy for anyone who has seen the trademarked logo to recognize the source of my new logo. My service is completely different (and in a different legal class) than that of the trademarked logo. How much does one have to change an existing logo to avoid trademark infringement?

A: This is a common question, but unfortunately it cannot easily be answered. Although I’ve often heard people cite an alleged “20%” or “25% Rule,” e.g., that you can avoid infringement by changing your copy a certain percentage from the original, those are myths. There are no formulas for calculating infringement, especially for visual works. And when you think about it, mathematical rules for visual works make no sense. How could you determine what comprises 25% of a visual work? How would you assign a percentage value to colors, composition, rendering style, etc.?

Your situation is particularly complicated because you are working with a logo design, which may be covered by copyright, trademark, and/or dilution law. Each of these has different standards for determining infringement.

Copyright Infringement

Under copyright law, the standard for infringement is “substantial similarity.” Substantial similarity means an average observer would recognize that the second work takes copyrightable authorship from the first one. So the first question is, what is copyrightable authorship?

There is an absolute rule that copyright does NOT cover type fonts, and that rule has been extended even to unique typographical designs. Also, simple symbols and common geometric shapes generally do not qualify for copyright protection. So if your logo is made solely of type, or a relatively simple graphic shape, the copyright analysis will not apply.

With respect to pictorial or design elements, copyright covers “expression,” that is, the artistic choices made in expressing an idea, but not the underlying idea itself. For example, more than one illustrator has depicted the idea of a figure removing part of his head along with his hat. However, there is no infringement when the artistic decisions used to depict that idea are different, e.g., different postures for the figure, different composition, and different rendering styles.

Copyright infringement occurs when your new work incorporates artistic expression from the original, even if it takes only a small part of the original work, and even if you add a lot of your own original expression. For example, if the second illustrator rendered the same figure in the same pose, removing the same hat, even if his illustration has a different background. There is a famous quote from Judge Learned Hand that goes “no plagiarist can excuse the wrong by showing how much of his work he did not pirate.”

If your logo includes pictorial elements, then these standards would apply. I don’t have the benefit of seeing the logos in question, but based on your statement “it is very easy for anyone who has seen the trademarked logo to recognize the source of my new logo,” your logo may be a copyright infringement.

Trademark Infringement

The standard for trademark infringement is “likelihood of consumer confusion,” or for short, “confusing similarity.” This is a very different standard from substantial similarity under copyright law.

Trademark law is not concerned about whether artistic expression has been copied. Rather, trademark law protects how a logo functions as a brand name, that is, to designate the source of goods or services. A new logo is confusingly similar to the original logo if consumers who encounter it might believe that it represents the same company. This is generally analyzed by looking at the similarity of the logos, the similarity of the parties’ respective goods and services, and several other factors, such as the strength of the original logo’s reputation, the relative sophistication of each party’s customers, etc.

In your situation, your “service is completely different (and in a different legal class) than that of the trademarked logo.” This sounds like you might have a strong argument that your new logo is not confusingly similar to the original (depending upon how the other factors in the analysis would come out). Goods and services are confusingly similar if they are related to each other in the marketplace, or if they are the types of goods/services that are generally offered by the same company. This doesn’t depend upon the “legal class” that the goods or services fall into for the purpose of trademark registration. (In order to register a trademark, you have to describe the specific goods and services for which it is used. The goods or services are categorized into 45 different “classes,” and you pay a filing fee for each such class.) For example, Starbucks uses the same logo for both its retail cof- fee shops (Class 43) and as a brand name for various packaged food products (Classes 30, 32). All of these would be considered confusingly related because consumers would expect restaurants to market packaged versions of their foods.

Dilution

Dilution is a legal concept that protects famous trademarks from being “diluted” by the presence of similar trademarks in the marketplace. Dilution can happen even if there is no confusing similarity. Rather, dilution occurs when consumers no longer associate the famous trademark with just one source. For example, if Starbucks were to adopt the brand “Xerox” for a new iced coffee drink, that would cause dilution of the famous Xerox trademark. Even though consumers would know that the Xerox coffee drink is not related to the famous Xerox photo- copiers, they would now be associating the Xerox mark with another product, and the value of Xerox’s famous mark would be diminished.

Based on your statement that your source of inspiration is a “known trademark logo,” it sounds like you may be dealing with a famous trademark. Dilution can occur even if the second trademark is not identical to the original. Thus, based on your statement that anyone will recognize the original trademark as the source of your logo, you may need to worry about a potential dilution claim.

All of these concepts are difficult to discuss in the abstract. Even when visuals are available, the analyses regarding whether the copied material was an unprotected idea or copyrightable expression, substantial similarity, and confusing similarity are so subjective that it’s often hard to predict how a court would rule. When the defendant deliberately copied someone else’s creative work, that fact is often a key factor in holding the defendant liable. The judge or jury may feel uncomfortable about excusing deliberate copying, even if there is a good argument that enough changes were made to avoid legal infringement.

Q: I produce several catalogs for a piston manufacturing company. Do I need to be concerned with the use of vehicle images taken at races or vehicle shows? What about use of shots of custom vehicles taken randomly in public places?

A: I see two issues here. First, the images of vehicles may involve trademark rights of the respective car companies. Second, there may be publicity rights with respect to individual owners/drivers of the custom vehicles.

Car Companies / Trademark Rights

The car companies’ trademark rights may be invoked if images of their cars are used in a catalog to sell another entity’s products. Under trademark laws, a company’s name, sub-brands, logos, and any other symbols associated with a company, including the appearance of the company’s products (in this case, the cars), are owned by the company as its exclusive trademarks and “trade dress.” The car company has a right to stop any use of its trademarks or trade dress that falsely suggests that another company’s goods or services come from the car company, or that the car company endorses the other entity’s goods or services. When the company’s trademarks or trade dress are used to trade on the car company’s reputation in this way, the legal claim is for trade- mark infringement.

So in your case, the question is whether the photos are being used in your catalog in a way that could create an impression in the minds of those who receive the catalog that the carmakers are endorsing your products. Unfortunately, this is a case-by-case factual analysis. Sometimes photos can be used in a catalog in a way that is perceived as purely editorial—that is, showing images of general interest to your customers in a newsworthy way, without directly linking the image to selling a particular product. In that case you wouldn’t need the car company’s permission. But the line between editorial use and commercial use is not always clear. Sometimes it may depend upon whether the catalog text or photo captions suggest that your products are made or endorsed by the car company.

Custom Car Owners / Rights of Publicity

Rights of publicity may be involved if the relevant members of the public (in this case, race car fans or vehicle enthusiasts) recognize the custom car as belonging to a particular driver. Under the rights of publicity, a celebrity can control not just how his name or image is used commercially, but anything else that is immediately identified with him. California is a leader in this area. For example, California courts have found violations for unauthorized use in radio advertising of “voice-alikes” of Bette Midler and Tom Waits, and an unauthorized robotic imitation in a TV commercial of Vanna White’s role in Wheel of Fortune. In fact, one of the landmark cases in this area was a California case in 1974, which held that famous race-car driver Lothar Motschenbacher’s rights of publicity had been violated when an image of his custom racecar was used in a TV commercial for Winston cigarettes without his permission. In the commercial, several features of the car had been altered (e.g., the car number was changed and a spoiler was added). Nevertheless, the car’s distinctive stripes were immediately recognized by Motschenbacher’s fans.

The standard for a publicity rights violation is slightly different than for trademark infringement. Generally, the publicity rights of a celebrity are broader. For trademark infringement, it is permissible to use a company’s trademark or trade dress to say something factual about your product, e.g., that it is a replacement part for a certain vehicle. To make an analogous statement about a celebrity, however, may be a violation of publicity rights. For example, it may be a matter of fact that a certain race driver routinely uses your pistons in his cars. But if you make that statement in your catalog without his consent, you would be violating his rights of publicity.

Using an image of his car for the same purpose would also be a violation. So the question again comes back to how the image is being used, and whether you are trading on the racecar driver’s reputation to sell your pistons. Generally, in a commercial context such as a catalog, it’s difficult to show that you are not using such an image to sell your products. There might be some wiggle room if the car is shown in the context of many other cars in the same shot. However, the analysis again would be on a case-by-case basis. As a general rule, it would be wise to get permission from the car owners to use photos of custom cars.

Legalities is a service mark of Linda Joy Kattwinkel. © 2005, 2008 Linda Joy Kattwinkel. All Rights Reserved. The information in this column is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel.

This article originally appeared in “Legalities,” Ms. Kattwinkel’s regular column for the Northern California Chapter of the Graphic Artists Guild. It is intended to provide the reader with an awareness of copyright law and not legal advice. Linda Joy Kattwinkel is a visual artist and former professional graphic artist. Currently she practices intellectual property law, arts law, and mediation in San Francisco, where she also paints and occasionally shows her artwork as part of open studios.