From: "Enimil, Sandra A." <[log in to unmask]>
Date: Wed, 29 Aug 2012 14:41:15 +0000

Subject: RE: Know when to hold 'em, know when to fold 'em

Trademark owners must absolutely police their mark. But, there is such
a thing as fair use, as an affirmative defense, in Trademark law.
Using a descriptive mark for its primary meaning is considered fair
use-- if I had a product called Sandra's Flax Seed Oil, I cannot sue
another company for using the words flax seed oil in their description
of their own product. Nominative use is a fair use when it's used to
simply  identify another product. Lastly, some uses of trademarks in
parodies may be ok if the use is not directly tied to a commercial
purpose.

None of these seem to be in play here with the cookies/cakes, so I
think Kevin's suggestion would have been better to put other potential
infringers on notice.

Sandra

Sandra A. Enimil,  JD
Head, Copyright Resources Center
Ohio State University
Columbus, OH 43210
Email: [log in to unmask]
Web:  http://library.osu.edu/projects-initiatives/copyright-resources-center/
Blog:   http://library.osu.edu/blogs/copyright/


-----Original Message-----
From: David Groenewegen <[log in to unmask]>
Date: Tue, 28 Aug 2012 12:24:14 +1000

The cakes situation has nothing to do with fair use because it is a
trademark issue, as is pointed out in the article:

"This sort of enforcement is probably typical, says Megan La Belle, an
assistant professor of law at the Catholic University of America,
because the burden of trademark protection always falls on the holder.
"Trademark owners must 'police' their marks, or they risk losing
protection," she adds."

The other example given, with the painter, is not just a fair use
issue either as was noted in a previous article:
http://chronicle.com/article/Appeals-Court-Stiff-Arms-U-of/132235/

"The court also ruled that the university's own actions-displaying and
even selling Mr. Moore's unlicensed works-undermined its ability to
strictly enforce its trademark rights."

Worth noting that the painter had missed out on pretty substantial
revenue while this was happening. This was not "small dollars".

I'm not saying that this wasn't overkill by the university, but
trademark law is not the same as copyright and fair use does not
apply. Not defending the trademarks could cost the uni a lot more.

David

David Groenewegen
Director, Research Data
Australian National Data Service
c/o Monash University VIC 3800 AUSTRALIA
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