Q: We have recently learned that a disgruntled former employee has made a new social media page to disparage the District. His posts have included several calls to action for change in the District and a few nasty posts about particular board members. The profile picture he used is a picture of the district logo turned backwards. We have had a handful of people call the administration building and tell us they liked the page on accident thinking it was one of the District’s social media pages and were confused by the posts. Can we do anything to stop the former employee from using our logo on these social media cites?
A: Yes, the District may send the former employee a cease and desist letter requesting he stop using the District’s service mark and name in a manner that causes confusion.
The District’s logo constitutes a service mark that associates the item with the school district. Service marks are used to distinguish goods, services and speech from competitors or other sources. The use of service marks is becoming more important as organizations increase their online presence through social media. The relative ease of copying or downloading a service mark for an individual’s own use makes regulation even more critical.
Intellectual property laws protect organizations’ ability to prevent others from using the mark in a way that creates a likelihood of confusion. In some cases, however, an individual or outside organization may use an entity’s service mark if the use qualifies as “fair use.” Examples of fair use include criticism, parody, and comparison, among others. For example, if Organization B wishes to criticize Organization A, it may be able to use Organization A’s logo to identify which organization B is criticizing. However, fair use is not an absolute protection against an infringement claim. Even where criticism, parody, or another fair use is present, the ultimate test is whether the use of the service mark creates a probability or likelihood of confusion in the minds of the viewers as to the source of the message, good, or service. Where confusion exists, the use infringes upon the owner of the service mark and the use is impermissible.
In the scenario above, the former employee is using the District’s logo turned backwards on its website to criticize board members and encourage change in the District. On the one hand, this may seem to suggest that the logo falls under the fair use exception for criticism and parody of the mark; however, when considering the probability or likelihood of confusion, the test fails. The phone calls from several viewers of the social media page provide evidence that the use of the mark is in fact causing substantial confusion as to the source of the posts.
In situations such as these, the District’s first option is to send a cease and desist letter to the user of the service mark. A cease and desist letter shows that the District is aware of the use of its service mark and that the District objects. It also provides the individual with an opportunity to cease using the District’s logo prior to the initiation of litigation. If the individual does not stop the use, then the District may wish to seek legal redress through an infringement lawsuit. When in need, consult your school district’s attorney for drafting of cease and desist letters.