Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP Rotating Header Image

Finally a Fair Description of Fair Use

Going back to my class, last week we were discussing nominative and classic fair use in trademark law. I was operating on several days of very little sleep (with less to follow), and as a result prattled on like a blithering idiot when seeking to explain these concepts.

Based on this, I promised to formulate an accurate, clear and concise description of the two. The following is my follow-up on this subject to my class:

I promised to give you a more concise summary of fair use and nominative fair use following our last class. Honestly, between my addled, sleep-deprived state and the confused explanation, I would be surprised if anyone understood what the hell I was saying. I’m certain I didn’t. Anyway, here’s another – more thoughtful – crack at it, along with some citations to assist.

Classic fair use is a defense available to one who, in good faith, uses in a descriptive sense rather than its trademark sense a term that is protected by trademark law. See e.g. Zatarian’s Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983) (“fish fry” could be used by competitor as a descriptive term in spite of protected mark, “Fish-Fri”); see also Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (“classic fair use” concerns the defendant’s use of the plaintiff’s mark to describe the defendant’s own product).

In keeping with the rule set forth in Zatarian, that defense requires proof of three elements. Zatarian, supra; see also Car-Freshner Corp. v. S.C. Johnson & Son, Inc. 70 F.3d 267 (2d Cir. 1995) (same). These are as follows:

First, the term must be used in its descriptive sense. See Packman v. Chicago Tribune, Co., 267 F.3d 628, 641 (7th Cir. 2001) (newspaper’s use of “The joy of six” as headline to describe the happiness associated with basketball team’s sixth championship held to be descriptive use); Radio Channel Networks, Inc. v. Broadcast.com, Inc., 1999 WL 124455 (SDNY 1999), aff’d without opinion, 201 F.3d 432 (2d Cir. 1999) (use of term “radio channel” to label one of several website categories of streaming programming held to be descriptive). Note that this defense is not limited to descriptive marks.

Second, for the fair use defense to apply, the use must have been made in good faith. EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 66 (2d Cir 2000); Radio Channel, supra, (knowing use of terms in which another claims a trademark will not constitute bad faith if the challenged terms are used in their descriptive sense).

And third, the term is not used as a trademark. See TCPIP Holding Co., Inc. v. Haar Communications, Inc., 244 F. 3d 88, 104 (2d Cir. 2001) (use of term as web url precluded finding of fair use).

Now we also talked about how fair use applied when comparing two products. You’ll recall how I used the example of the Coke v. Pepsi blind challenge. This was intended to illustrate the use of a trademark to truthfully describe another party’s goods. See e.g. Triangle Publications v. Knight-Ridder Newspapers, 626 F. 2d 1171, 1176 (5th Cir. 1980) (“comparative advertising, when truthful and nondescriptive, is a source of important information to consumers and assists them in making rational purchase decisions”). Thus a mark may be used in good faith to describe a product rather than identify it with a particular source. Id.; see also Smith v. Chanel, Inc., 402 F. 2d 562 (9th Cir. 1968) (duplicate fragrance).

Nominative fair use, on the other hand, concerns the defendant’s use of the plaintiff’s mark to describe the plaintiff’s product. Cairns, supra, 292 F.3d at 1150. The Ninth Circuit has held a commercial user is entitled to a nominative fair use defense where he meets three requirements: (1) the product or service in question is one not readily identifiable without the use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids on the Block v. News America Pub., 971 F.2d 302, 308 (9th Cir. 1992). So, with nominative fair use, we’re asking whether the defendant could reasonably identify the plaintiff mark-holder without the use of its trademark. If not, the use is likely to be protective as nominative. Thus, for example, “[j]ust as it is virtually impossible to refer to the New Kids on the Block, the Chicago Bulls, Volkswagens, or the Boston Marathon without using the trademarked names” it would also be virtually impossible for example a Black Flag tribute band to refer to music it played without using the words Black Flag (as in “playing the music of . . .). Brother Records v. Jardine, 318 F.3d 900, 908 (9th Cir. 2003).

I hope this clarifies matters. More confusion when class tomorrow, so stay tuned.

Jonathan Pink leads the Entertainment, Media and Internet team at Bryan Cave, LLP. He litigates copyright, trademark, patent and business issues for film makers, musicians, music publishers, labels and motion picture/television production companies. He may be reached at 310-576-2258 or at jonathan.pink@bryancave.com.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

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