NOTICE TO PUBLISHERS AND INTELLECTUAL PROPERTY RIGHTS HOLDERS
If you are a publisher or intellectual property rights holder and consider the sending of solicitations and/or offering for sale display art by Showmark Media Ltd. (“Showmark”) violates your copyright, trademark or other intellectual property rights, before notifying Showmark of your concerns, please read the following information about Showmark’s business practices.
FREEDOM OF SPEECH AND COPYRIGHT FAIR USE
Showmark’s display art are original works of authorship that neither contain original works of authorship from third parties nor are derivative works created from third party works. Showmark creates original works of display art based upon factual information contained in third party business newspapers and magazines.
As such, Showmark’s display art is protected under various laws, including, but not limited to the U.S. First Amendment. In terms of First Amendment rights, Showmark creates original works of art by incorporating and transforming factual non-copyrightable information contained in various business newspapers and magazines into display art and awards. Such original transformative expressive artistic works are protected under Freedom of Speech. Showmark’s web site clearly demonstrates how Showmark portrays to potential customers its display art. Showmark only refers to the name of the newspaper or magazine which originates the information and does not incorporate any source indicating logos in its art work. Additionally, Showmark is not reproducing or replicating any copyrighted list or information in total, but merely referring to the fact that such a list or information was compiled and a particular individual or business entity was named on the list. The use by Showmark of such no-n-copyrightable factual information would clearly fall into the fair-use exception under the U.S. Copyright Act.
NOMINATIVE FAIR USE OF TRADEMARK
More importantly, U.S. courts would find that Showmark’s use of the name of any web site or publications on display art awards is a nominative, descriptive fair use. As evidence by the examples of Showmark’s display art on the Showmark web site, Showmark uses the phrase “AS PUBLISHED IN” to accurately and fairly describe the name of the originator of the information used in the display art awards. As indicated above, Showmark never creates the false impression that Showmark is the originator of the award.
There is a strong public interest in allowing competitors to make free use of the English language either to name another party or to fairly describe their goods or services. Under the doctrine of fair use, a third party may use a name or phrase where such third party’s use is solely to name or describe defendant’s goods or services. The fair-use defense is embodied in the Lanham Act Section 1115(b)(4) which provides a specific defense to registrant’s exclusive right to use the mark where: “[U]se of the name, term or device charged to be an infringement is a use, otherwise than as a mark . . . of a term or device that is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.”
The key to the fair-use defense is the concept of “use otherwise than as a trademark.” The use of a word such as “joy” which is in the public domain is only unfair when a competitor uses it in its trademark or secondary sense. A competitor is free to use the word in its common or primary sense. Here, Showmark’s use of “AS PUBLISHED IN” is not used in a trademark sense to indicate the source of Showmark’s products or services, but in a purely nominative sense. This is clearly evidenced by Showmark not incorporating any 3rd party of publisher’s logos and the use of the designation “AS PUBLISHED IN.”
Thus, no consumer would believe that another publication is the source of the display art and consequently, there would be no likelihood of confusion between the uses. Further, numerous cases have held that the addition of a disclaimer may avoid a likelihood of confusion. In this instance, Showmark uses a prominent disclaimer of sponsorship and affiliation between itself and the publisher of any magazine, newspaper or web site. Finally, please note that physical awards are not manufactured until the consumer orders the award and, at such time, Showmark further explains that Showmark is not affiliated with the actual publisher of the magazine, newspaper or web site. In addition, any mock-up award created is virtual – it is not publicly displayed or made available for viewing except to the award recipient via an access code
SHOWMARK’S BUSINESS ACTIVITIES WHICH AVOID ANY LIKELIHOOD OF CONFUSION
· Affiliation of Sponsorship – Showmark’s e-mail and phone call solicitations neither indicate that there is any affiliation nor sponsorship between Showmark and the publisher. For example, Showmark’s solicitations include the following or similar disclaimer of affiliation and sponsorship, as well as acknowledgement of third party trademark rights:
- Unsubscribe “Opt-Out” Feature - Showmark’s e-mail solicitations include the ability for recipients to unsubscribe in order not to receive further e-mail solicitations. In the event of an “opt-out,” Showmark promptly removes such recipient from receiving further e-mails. The following is an example of Showmark’s opt-out feature:
To unsubscribe from any follow-up emails from SHOWMARK related to the above mentioned recognition in __________________, please Click Here.
- CAN-SPAM - Showmark Media LLC conducts its business in full compliance with the U.S. CAN-SPAM Act, and each and every advertisement letter contains the automatic unsubscribe link which immediately cancels any letter regarding the recognition.
- Awards – Showmark does not manufacture any award until a customer, i.e., the recipient of an award, orders an award through Showmark. Further, the information contained on the award are facts - that a certain person or company won an award based upon being named in a list published by a certain magazine, newspaper or information. The person named has the right to ask Showmark to manufacture such award featuring such factual information. In other words, the purchaser of the award does not experience any likelihood of confusion when buying the Showmark manufactured awards and is not likely to believe that Showmark’s display awards are approved or associated with any other publisher.
- Custom Graphics – Showmark does not use any 3rd party logos or graphics on its awards.
All Showmark awards use custom designed graphics.
- Disclaimer – Showmark’s web site and e-mail solicitations all prominently feature a disclaimer of affiliation with any trademark owner listed in the solicitations. Such disclaimers are not in “fine print,” but are placed in similar locations and in similar point size to its competitors. Many U.S courts have approved use of similar disclaimers to avoid any potential likelihood of confusion. In addition, Showmark Media has never, under any circumstances, explicitly declared or intended to indicate any association with any publisher. In confirmation of this, each and every solicitation correspondence or communication sent by Showmark to potential customers regarding any recognition it sells plaques contains statements of non-affiliation.
- Consumer Complaints – In the event that your company has experienced consumer complaints or instances of actual confusion, please note that U.S. courts would not consider a few isolated instances of actual confusion as strong evidence of likelihood of confusion between the marks. Showmark, in its follow-up solicitations to potential customers, prominently indicates the lack of any affiliation or sponsorship, thus remedying any potential initial interest confusion. Further, in the event that Showmark does receive an inquiry regarding affiliation or sponsorship, Showmark responds to the recipient that Showmark is not affiliated with the publisher and acknowledges that the publisher is the source of the information.
If the above does not address your concerns, please send an email to Showmark indicating your specific issues at customerservice@showmark.com.
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