When is a business name not a copyright infringement?

General Questions
#1

Just a casual curiosity querie:
For sake of this e-mail I’ll call my mother’s next door neighbor “Uriah Purvis Simmons”. He has a small construction company specializing in home repairs and emblazoned on his truck is the company name: UPS Home Repair. (That’s not his real name and those aren’t his real initials, but his real initials are just as well known and the same as a corporate giant.)

He’s a nice guy and does good work and I would never do anything to get him into trouble, but out of curiosity can he do that? Is the fact that the famous/multibilliondollar corp. UPS (or, rather, the company that has the real same name as his initials/small business) is not involved in home repair and instruction enough in and of itself to protect him? Or the fact that a three letter phrase can’t be copyrighted or trademarked? Were he to use , say (using the UPS example) a brown truck with yellow writing and similar font, would that be a problem?

I’ve also wondered about the restaurant RUBY TUESDAYS. Did they have to get special permission from the Rolling Stones to use that or, since it was a title and didn’t use lyrics or melody, was it okay? If I wanted to open a chain of theme restaurants called ELEANOR RIGBY’S, would I have to get Sir Paul’s permission? And could I serve “Yellow Submarine Sandwich”, “Girl With Kaleidoscope Fries”, etc., without getting in trouble? Or if I wanted to have on the logo an old lady waiting by a window with a jar of makeup by the door, could I?

Just curious.

(I do remember there was a nasty dispute with a feminist bookstore called Amazon that predated Amazon.com but was asked to change their name, but since the bookstore still exists obviously they didn’t.)

#2

It’s never a copyright infringment; business names are trademarks.

As fo trademarks, they’re fairly narrowly registered to one or more fields of business; a business in another field can register the same trademark.

The exception, which might apply in this case, is when a mark is requested that’s “confusingly similar” or implies an association with another business. UPS is big enough they might care. But it would be for the courts to decide for sure, and only if UPS makes an issue out of it.

#3

The thing about trademark cases is that the trademark holder can actually lose their trademark in the future if it’s shown that they didn’t “vigorously defend” their trademark every time they came across a possible misuse. So UPS might send him some nasty letters and even perhaps take him to court, even though they know and you know and Uriah knows that no one is going to confuse the two. The judge will probably rule in Uriah’s favor, saying that there’s no chance of confusion, and UPS (the big one), now has it on record that they “vigorously defended” their trademark, even though Uriah still has legal permission to use the name.

What this means for Uriah is that he’s risking a potentially expensive couple of weeks in court, even if it’s likely that in the end, he’ll get to keep using the name.

All of the information in this post gleaned from dinner conversation with my brother-in-law, a fat cat patent attorney. Any misinformation is undoubtedly mine.

#4

Can I get her with onion rings instead?

It would depend at least partly on whether the lawyers could effectively argue that the name was confusing people. If it got to court. But, of course, a small business would be a fool to go up against UPS. If they sue, his best hope is to try to make a big splash in the news out of a big business hasseling an honest man and hope for a good settlement.

#5

I am reminded of a pertinent case from where I live in Florida.

There was a lady who made some really good baked snacks, but I don’t remember the exact name. It was something like “Debbie’s Treats.” (making this name up, I don’t remember the exact name, sorry) A small and local business success.

Well, they disappeared, and it was because Little Debbies sued them for some sort of infringement and won.

I’ve never eaten another Little Debbies since, and never will. But the principal as to the OP does have some bearing. Sorry, but no cites as I don’t have the exact name and could not find anything pertinent in a search.

#6

LiveOnAPlane, is this the case you mentioned? The case was a cancelation of a request for the trademark “Debbie’s Famous Granola.”
There are also cases of Little Debbie (McKee Foods) suing “Little Doobie” and “Liberal Debbie.”

It is my understanding, from reading small business self help books that “Your Name’s Business” (e.g. Bill’s TV Repair) is excluded from being infringement on a trademark.

#7

Usually. But try telling that to Walter Taylor*.

As far as Ruby Tuesday’s is concerned, I doubt they paid anything to the Stones.
Song titles are not copyrightable (titles aren’t; they need to be trademarked). So, really, there was little the Stones could do if RT used the song name (though they may have asked as a courtesy and to forestall any issues down the road).

*Owner of Bully Hill Vinyards, he is prohibited from using his name on his wine, to avoid confusion with Taylor Wineries (owned by Coca Cola). He’s even a member of the same family as the Taylor Wineries, but Coke got a ruling that it would cause confusion with their Winery.

#8

I’m not 100% sure, but yeah, I think you nailed the issue I referred to. Not completely, but that name rings a bell.

Yeah, I do think that was the lawsuit, and I sure do thank you…you don’t even live there, but you picked it up… tres magnifique!!! (or however they say "You the king! in French)

Seriously, thanks.

#9

As stated before, it’s not copyright but trademark, and they have to be seen to be “defended”. Although often it goes to ridiculous extremes. As in this bit from the Congressional Record.

#10

The Master gives his two cents.

#11

I wonder if the University of California, Los Angeles ever heard of a central Tokyo bar/strip joint called UCLA? :smiley:

#12

I wonder if Bob Epstein was made aware of “Super Dave’s Auto Glass” that had been in business here for several years, using his logo and everything. They closed down last year, but I doubt it was from being sued for using Epstein’s trademarks. I’ve also seen failed businesses that traded on images of the Flintstones. I’d be willing to bet they didn’t ask for or receive permission from Hanna-Barbera.

Nitpick: There is no “S” in “Ruby Tuesday” - the song or the restaurant.

#13

The Supreme Court in Canada recently ruled that a restaurant chain named Barbie’s in Montreal doesn’t infringe on Mattel’s trademark.

#14

Nitpik-on-the-nitpik: You mean there’s only one.

#15

Interesting case study:
Nissan Computer Corporation
http://www.nissan.com/

Click on the links up top discussing the lawsuit against them.

#16

Virgin Records / Airways are always making this mistake. There is a decision before the Australian trade mark registry where Virgin opposed a pending trade mark for the use in (from memory) either cleaning or gardening. The hearing officer found the likelihood of confusion to be extremely minimal, because no one would think the cleaning company was endorsed by or associated with Virgin Records / Ariways.

#17

While lots have people have correctly answered that this is a trademark issue and not a copyright issue, I’m wondering about this example in the OP. If I opened a restaraunt as described and used these and numerous Beatles’ references or plays on words, could I get to the point that the Beatles (or whoever owns the copyright on their records) could require me to stop on copyright grounds.

#18

Actually, it would probably be still trademark grounds, or at least the related issue of unfair competiton. The Beatles could sue on the grounds that the restaurant was unfarily trading on the Beatles reputation by improperly suggesting that the Beatles had endorsed the restaurant.