Let me start right out by saying I’m not a lawyer. I do however know a little bit about trademarks and usage rights because of my background in graphic arts, web design, and something where things get really tricky: marketing. The crux of my knowledge in that last department is that if you’re not sure, then don’t use something unless it belongs to you. Exceptions and loopholes be damned, because most of the time it’s not worth the risk. When you’re trying to sell a product, you can’t fall back on Fair Use, Creative Commons, or anything else . . . because you’re clearly monetizing someone’s work without their permission.
Where am I going with this?
Strange sightings at Books-A-Million.
The story begins two days ago when I was hanging out at the book store. Someone that works in the cafe came sidestepping around me at one point, and I noticed him squinting at the sign out on the sidewalk.
“Oh, that explains it,” he said. “I was wondering what was going on.”
I asked him what the hell he was talking about and found out that numerous customers had been asking him about “the Captain America smoothie,” or something along those lines. Since no one was aware of a marketing partnership between Marvel and BAM, he was confused. So were the customers, and here’s why:
This oddly patriotic sign (it’s May, so they can’t justify it with any Fourth of July claims) combines the red-white-and-blue theme with a blatantly forced use of the term “Captain of a drink.” What’s the potential problem here? This seems like it’s treading dangerous ground in regards to the Lanham Act, specifically Section 43(a), which addresses false endorsement:
A false endorsement claim based on the unauthorized use of a celebrity’s identity . . . alleges the misuse of a trademark . . . such as visual likeness, vocal imitation, or other uniquely distinguishing characteristic, which is likely to confuse consumers as to the plaintiff’s sponsorship or approval of the product. In such a case, the “mark” at issue is the plaintiff’s identity.
Violations of this act are typically gauged by “likelihood of confusion” among consumers; since BAM shoppers are clearly confused enough to call it “that Captain America drink,” then that could be a problem.
I’ll admit, it’s a stretch, but . . .
. . . it got more interesting from there.
After laughing hysterically at BAM’s attempt to cross-promote with the Civil War movie release without paying those pesky licensing fees, we decided to check out some of the other marketing in the store. Turns out the sign hanger just inside the front door was sporting not one, but two questionable items.
First, we have this coffee donation banner. My immediate complaint was that their graphic designer used a stock photo of some guy who’s wearing a completely bullshit military uniform. Couldn’t even use a real armed forces member, huh?
Anyway, that’s just a stylistic complaint. The real issue shows up when you spot that logo at the top. It looks as if someone butchered the modernized Air Force Symbol to make their logo, right? According to the Cornell University Law School:
To establish a violation of the Lanham Act for either a registered mark under 15 U.S.C. § 1114, or an unregistered mark under 15 U.S.C. § 1125(a), the plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion.
Since we’re pretty sure the Air Force owns the Air Force Symbol, the first two conditions are readily met. Now, one just has to ask if the logo being used on this sign could be confused with the Air Force one. You tell me:
Not spot on, but then you run into another condition: the intent of the competing trademark. The Lehman Act also addresses “motive,” and if it becomes clear that the symbol on the left was created to approximate the trademarked symbol on the right, then it can be called into question.
Then came the biggest slap in the face…
Stepping to the other side of that banner, I spotted something that really blew my mind. Take a look, and see if you can spot the problem here:
Now, let me be clear on this: I’m really not sure if BAM worked out an arrangement with Rowling, her publisher, or whoever else deals with this crap. If they did, then the designer of this banner is a moron for not actually putting the Harry Potter brand on it somewhere. That’s largely why you pay that kind of money for licensing.
No, what I’m guessing is that they just danced around the issue and faked their way into a Harry Potter product tie-in. (The other big giveaway is the term “Butter Brew,” rather than calling it “Butter Beer.”) There are a couple of major problems with this banner. Firstly, the word “Accio” scrawled across the top: although this is a Latin word and therefore not protected, using it in this manner could propel this signage down a dangerous road into Trade Dress law. Once again, we’re dealing with the Lanham Act and that whole “likelihood of confusion” thing. Since there are a hell of a lot more Harry Potter readers than there are people who read Latin, one could make a case right from the start.
The bigger issue rolls in when you look at the typeface that the designer chose for the subhead. Clearly a ripoff of the book covers, right?
Here’s what it all boils down to: if you put ten people in front of that banner and ask them what it’s alluding to, there’s a good chance that nine of them will say “Harry Potter.” The tenth person will be someone who hasn’t seen a book or a movie trailer in 15 years, because it’s absolutely impossible not to associate this marketing with Harry Potter.
And that’s what false endorsement is all about: …to deceive […] as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion…
Let it be known that I’m not making any accusations here, since I’m not aware of any existing business deals between Books-A-Million and the owners of the intellectual property. For all I know, they paid through the nose for an actual Harry Potter tie-in. (Although I stand by the fact that if they did, they did a crap job of executing it.) The purpose of this article is purely educational. It’s important to know and understand trademark law, the Lehman Act, and things like trade dress infringement.
Especially if you’re in marketing.
All opinions are that of the author and do not necessarily reflect those of Deck Ape...or anyone else. Arrr!