The Trademark Fair Use Reform Act
University of Minnesota Law School
April 5, 2010
Boston University Law Review, Forthcoming
Minnesota Legal Studies Research Paper No.10-22
Sweeping assertions of exclusive trademark rights in brand names and images have a pernicious chilling effect on free expression, including fictional portrayals, commentary, political speech, parody, and comparative advertising. Some disputes lead to lawsuits. More often, speakers capitulate to litigation threats, even when the substance of the legal claims they face is very weak. As demonstrated in the author’s previous work, existing trademark “fair use” doctrines are not simple defenses that end suits quickly and cheaply, and many defendants cannot bear the resulting costs of protracted litigation.
Observers have proposed a variety of improvements to trademark fair use, but this Article focuses intensively on the decision-making structure of trademark law and ways to reduce its burdensome effects. The analysis draws on theoretical and doctrinal literature about administrative and error costs, rules and standards, and the design of independent defenses. Building on this foundation, the Article argues that reform of trademark fair use should emphasize the reduction of administrative costs and the risk of erroneous findings of liability for speech; should favor clear ex ante rules over more complex ex post standards; and should strive to separate consideration of fair use from the adjudication of the prima facie likelihood of confusion case. It then proposes categorical safe harbors for certain uses of trademarks as a central innovation, complemented by other broader standards. An Appendix contains draft language meant to start the discussion about such defenses.
Traditionally, trademark law has eschewed per se exceptions. Much of its design assumes that avoidance of consumer confusion is imperative, even if high administrative costs and unpredictability result. However, this Article shows that trademark law can reduce administrative costs and improve protection of free speech without an unacceptable increase in the likelihood of consumer confusion. While safe harbors alone cannot resolve every case involving speech interests, at least they prevent the easy cases from contributing to the chilling effect. More generally, the analysis here demonstrates that categorical defenses deserve a greater role in the adjudication of trademark disputes.
Keywords: Trademark, fair use, nominative use, First Amendment, free speech, safe harbors, affirmative defensesAccepted Paper Series
Date posted: April 6, 2010
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