Fair use of Trademarked Phrase/Name

[KayZahn]

What is the name of your state (only U.S. law)? AZ

I need advice and opinions on whether or not I can use a domain name that includes a phrase that is a trademarked phrase? The TM is also the Name of a Television series that I am blogging about as a long term project.

The television series was: The Joy of Painting, with Bob Ross (found on Public Television and DVDs etc)
In this long running series, beloved artist and instructor Bob Ross would paint an entire landscape from beginning to end in only 30 minutes. His voice was slow and calming. Millions of people watched just for the relaxation. The show still airs in many markets and there are THOUSANDS of "certified" instructors all over the world who carry on Bob's style of work. Bob Ross dies in 1995?ish.

While both the title/phrase The Joy of Painting, and the name Bob Ross are both trademarked, the company the owns the TMs seems to NOT defend it, or if they do they haven't done a very good job. Their domain name is www.BobRoss.com. The domain name TheJoyofPainting.com goes to some art supply store in the UK, the Youtube Channel TheJoyOfPainting is NOT them, and etc.

For background, I DID contact the company (I can post the email I sent and their reply if anyone is interested) I directed their attention to my blog and it's doman

The Joy of The Joy of Painting

where I am blogging about my attempt to paint ALONG with along with all of the episodes of The Joy of Painting television series. It has links to the videos that I create of myself doing the painting and the sped up and put to music.

In that email I asked the company if I could use small snippets of the episodes IN MY videos to add context. I offered to put in proper credits and even links to their web site where they sell product.

The reply was polite and thanked me for "asking" permission, suggesting that too often people don't, but they denied my request to use the clips. IN ADDITION they told me that since The Joy of Painting was a registered trademark I needed to change MY domain name TheJoyofTheJoyofPainting.com

Now as I understand the legal concept, it is an acceptable use if I am using the phrase or title in reporting about the subject, and if I'm not selling anything in competition with the holder, and I am not trying to confuse the end user into thinking that I am affiliated with, or am the same as their company.

I have put their TM information in my descriptions and put what I thought was an appropriate disclaimer.

My request of anyone here is 2 fold. ONE: Opinions or comments please, and TWO: Please visit the blog and tell me if you were confused as to whether or not I was Bob Ross or the Company who Produced The Joy of Painting television series.

again, please check out
The Joy of The Joy of Painting: Series Video

thanks for looking and commenting and sharing your time and attention

KayZahn
Kay Zahn

 

[FlyingRon]

There's no concept of "fair use" in trademarks.
If your user of their name can lead to confusion or dilution of the mark, they can attempt to enjoin your use. Also the domain name rights are not bound by the sane rule of law. You have a 50/50 chance of losing the domain regardless of the trademark law.

 

[divgradcurl]

FlyingRon is incorrect. There is fair use for trademarks, but it is quite different from fair use in copyrights.

Trademark fair use typically covers the use of a trademark to describe a trademarked product or service. It's okay, for example, to refer to an IBM laptop as an IBM laptop -- there is no trademark infringement there.

Your use of the trademark in the URL, however, does not fall neatly under the typical boundaries of trademark fair use. So there are two issues to consider -- first, under the domain name arbitration proceedings, there is no requirement that they slavishly follow trademark law in the first place, so its more difficult to predict what might happen. Second, the relationship between fair use and likelihood of confusion is complicated, so again, it can be tough to predict what might happen if you ended up in court over this.

 

[KayZahn]

Thanks so much for the opinions. I'm feeling fairly confident in my ability to defend my use of their trademarked name in the way I do. The questions are, will they make me, and if they do try, is it worth fighting for.

I'm thinking of doing nothing (sorry I even asked them in the first place, "no good deed" and all) and just assume they won't do anything. Their history implies that they won't even try.

Unless of course they object via a domain name dispute that sounds a little less clear if they make their case there. But considering that they don't even own the domain namesake of their actual trademark (thejoyofpainting.com) as it goes to a supplier in the UK, they may just ignore me there too.

Thanks again to any and everyone. I didn't realize FREE anything existed and since I've paid my share of attorneys over the years, this type of conversation is refreshing.

regards
KayZahn
Kay Zahn