Reconciling Fair Use and Trademark Use
Cardozo Arts & Entertainment Law Journal, Forthcoming
69 Pages Posted: 11 Dec 2009
Date Written: December 10, 2009
This article looks to early common law, the legislative history of the Lanham Act, and public policy considerations to evaluate the relationship between the Lanham Act’s trademark use requirement and the trademark fair use defense. Although a number of commentators have suggested the contrary, I conclude that requiring infringement plaintiffs to demonstrate a form of trademark use on the defendant’s part is consistent with the fair use defense, which waives liability if the defendant can demonstrate that its use was “in good faith” and “otherwise than as a trademark.” The trademark use and fair use doctrines work together to strike the balance of competing interests that Congress intended to establish in the Lanham Act. The requirement that the plaintiff demonstrate the defendant’s “trademark use,” as historically developed and codified in the Lanham Act, provides a straightforward, objective standard for determining whether consumers are likely to look to the defendant’s application of a contested word or symbol for information about product or service source. It enables courts to avoid protracted, fact-intensive investigation of actual consumer perceptions, and identify cases in which the societal costs of protracted litigation are likely to outweigh potential consumer confusion costs, and dispose of them early in the litigation process. This should limit the chilling effects that threats of protracted, expensive infringement litigation have on marketplace actors seeking to make socially beneficial uses of words or symbols claimed as marks, and protect First Amendment interests by limiting infringement claims, in most cases, to a defendant’s commercial speech.
The fair use defense was developed to accommodate the special concerns that arise when businesses claim exclusive rights in surnames and descriptive words and symbols. A competitive marketplace requires that all marketplace actors be able to use surnames, descriptive and geographically descriptive words and symbols truthfully to communicate relevant information about their goods and services to consumers. Historical analysis of early common law, Lanham Act legislative history, and post-Lanham Act fair use decisions, as well as a line of recent Supreme Court decisions, support the conclusion that the fair use defense focuses on the defendant’s purpose in applying a surname or descriptive word or symbol, not on the likely impact of the use on consumers. The defendant’s purpose is determined through examination of circumstantial evidence.
Thus, even though an infringement plaintiff demonstrates that the defendant made a “trademark use” of its surname, descriptive or geographically descriptive word or symbol (that is, shows that the defendant closely, directly associated the contested word or symbol with products or services that it was advertising or offering for sale, in a manner that was perceptible to consumers and that makes a separate commercial impression), and even though the plaintiff demonstrates that this trademark use is likely to confuse consumers, the defendant can avoid liability by demonstrating that it applied the word or symbol, in good faith, merely for the purpose of describing its own goods or services.
Keywords: trademark, secondary meaning, trademark use, fair use, Lanham act, Trademark Act of 1905, trade name, unfair competition, trademark defenses, trademark infringement, technical trademarks, affixation, use otherwise than as a mark
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By Zohar Efroni