Application of First Amendment Principles in the U.S. Law of
Trademarks: Some Lessons to be Learned1
Introduction: The doctrine of freedom of speech in American jurisprudence is an
extremely pivotal one that cuts across various facets of American law and has a
foundational impact on daily life and business. Its pre-eminence as a constitutionally
protected right ensures that the courts accord it the rightful deference in instances
involving the competing rights of parties to an action. Generally, courts endeavor to
avoid such a conflict as much as possible, but when this becomes unavoidable the
outcome of the case is inevitably one that protects and fosters rather than stifles free
speech and its attendant First Amendment objectives2.
The nature of trademark rights and its enforcement ever so often interlocks with the
rights of others to freely express themselves artistically or verbally, raising difficult legal
questions on which of the asserted rights should prevail. The focus of this paper is to
briefly discuss the rational basis of this interplay of rights and interests and to suggest,
with the benefit of decided cases, appropriate standards of review in the event that a real
conflict does in fact arise3.
1
John Onyido, Esq., Associate Partner - S.P.A. Ajibade & Co. Legal Practitioners, Arbitrators and Notaries
Public, Lagos, Nigeria. Based substantially on a seminar paper submitted to the Entertainment & Media
Law Class of the Benjamin N. Cardozo School of Law, New York, 2008.
2
The Supreme Court has stated that prior restraints of pure speech in the form of literary material is
presumptively invalid except in exceptional circumstances. See Near v. Minnesota, 283 U.S. 697; Nebraska
Press Ass’n. v. Stewart, 427 U.S. 539; New York Times v. United States, 403 U.S. 713; Lowe v. SEC, 105
S. Ct. 2557. Also see Trademark Parody: A Fair Use and First Amendment Analysis, Robert J.
Shaughnessy, 1986 72 Va. L. Rev. 1079. Apparently judicial response has been slow and unpredictable.
Section 39 (1) of the 1999 Constitution of the Federal Republic of Nigeria provides for freedom of
expression and the press. See Okogie v. AG Lagos State (1981) 1 N.C.L.R. 105.
3
“The critical question in evaluating claims should be whether the satire or parody has done more than
express an opinion. If personal reputation has been affected by a defamatory statement of fact, then the law
provides a remedy. If the public is likely to be confused as to the source of goods or services in commerce
by the use of a trademark, existing law provides compensation. If a trademark is likely to be diminished in
its ability to distinguish its goods or services, or if a parody has used so much of a copyrighted work that it
has diminished the demand for that work or affected its economic value, then the courts should act. Only
1
Rationale and Theoretical Basis: Trademarks and trade names essentially serve
as source identifiers to distinguish competing goods and services to ensure that
consumers get exactly what they seek and the trademark owners reap adequate benefits
from their investments. The buying public is entitled to be protected from deceptive
conduct in the market place arising from the unlawful adoption of identical or similar
source identifiers by competitors in such manner as to lead to consumer confusion. On
the other hand, trademark owners who invest time, effort and usually substantial funds in
marketing and advertising to develop and to promote their peculiar brand names also
deserve protection against unlawful use of those marks by others that detract from the
investment and attribution that they have earned. Contrary to some views 4, trademark law
has evolved in the English common law and in the United States as a property right,
albeit an intangible or incorporeal right.
Indeed, as far back as 1879 the United States Supreme Court had this to say: “The
right to adopt and use a symbol or a device to distinguish the goods or property made or
sold by the person whose mark it is, to the exclusion of use by all other persons, has been
long recognized by the common law and the chancery courts of England and of this
country, and by the statutes of some of the states. It is a property right for the violation of
which damages may be recovered in an action at law.”5
However, whatever property right the trademark owner enjoyed at common law
was based on use, which resulted in an association in the minds of the public between
when a satiric work meets these well recognized tests should recovery be allowed”. Satiric Appropriation
and the Law of Libel, Trademark, and Copyright: Remedies Without Wrongs, Harriette K. Dorsen, 1986 65
B. U. L. Rev. 923, 964.
4
Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of the
Trade Symbols, Robert C. Denicola, 1982 Wis. L. Rev. 158, 163 and 164.
5
Trade- Mark Cases, 100 U.S. 82, 92 (1879). Note that the Supreme was not introducing a new concept of
property to the Law of Trademarks, but was merely recognizing this as a pre-existing legal attribute.
2
that trademark and the goods to which it is applied. The right acquired based merely on
registration especially on an intent to use basis, is of more recent vintage and in any case
is subject to withdrawal if actual use of the mark is not made within a reasonable period 6.
In more recent times pragmatic and economic justifications have been enunciated
regarding the benefits of trademark adoption. Judge Easterbrook in Scandia Down Corp.
v. Euroquilt Inc.7 opined that:
Trademarks help consumers to select goods. By identifying the source of
the goods, they convey valuable information to consumers at lower costs.
Easily identified trademarks reduce the costs consumers incur in
searching for what they desire, and the lower the costs of search the more
competitive the market. A trademark also may induce the supplier of
goods to make higher quality products and to adhere to a consistent level
of quality.8
The concept of property rights as used should not connote a right that is
unconnected with the use of trademarks to distinguish between competing goods and
services. The use of trademark for its own sake and not as identifiers of source or
sponsorship can create contextual problems and interfere with other competing rights that
would require judicial vigilance. The test of avoidance of consumer confusion has been
effective in achieving the goal of use of trademarks as source identifiers. An area of
trademark law that has been particularly problematic in this regard is trademark dilution
which tends to transcend the traditional objectives of trademark use for distinguishing
6
See the Lanham Act 1946, 15 U.S.C. 1051. The benefit of registration includes 1. Prima facie evidence of
validity of the registered mark and of the registration 2. The registrant’s ownership thereof, and 3. The right
to use the registered mark in commerce in connection with the goods or services specified to the exclusion
of others. However, the registration of a trademark does not alter the essential character of the requirement
of use under US law. Prior to a mark attaining incontestability, the presumption of validity can quite easily
be rebutted and even after it becomes incontestable, it is still subject to the defenses listed under 15 U.S.C.
1115 (b). Compare with Sections 5, 11, 14 and 31 of the Nigerian Trade Marks Act CapT1 Revised Ed.
Laws of the Federation of Nigeria, 2004.
7
772 F.2d 1423 (7th Cir. 1985), cert. denied, 475 U.S. 1147 (1986).
8
Id.
3
and thus the likelihood of confusion test 9 . The development of trademark dilution is
intimately interwoven with the vast influence which very strong marks have on
consumers, psychologically and transformatively.
Nowadays, apart from use of a trademark as an identifier of source, powerful
trademarks cajole associative impressions and thoughts unconnected with the product
itself or its intrinsic utility:
In an information age, even more than in earlier times, consumers adopt
and use the shortest, simplest word that will call to mind a product they
want to talk about, and modern marks have become hugely
informative…Brands may give us a positive inkling as to a proprietor or a
premier provenance, but modern trademarks are equally or more likely to
convey, among a multitude of other messages, personality, purpose,
performance, preparation, properties, price, position and panache…Amid,
indeed a compulsion to achieve economies, I submit that few plants
operate as efficiently in producing goods, as do strong brands in telling
about them.10
Well known and famous trademarks are therefore viewed as deserving of more
extensive protection than your average trademark that is co-extensive with their farreaching influence and peripheral emanations11. Under dilution principles an offending
use of a trademark could be enjoined either because it leads to blurring or tarnishment of
the well-known trademark on the basis that such use may result in loss of ‘commercial
magnetism’ or may portray the famous trademark in less than flattering light12.
9
See Denicola id at 165. 15 U.S.C. 1114 (1) (a).
Dilution Redefined for the Year 2002, Jerre B. Swann, 92 Trademark Rep. 585, 586 to 618 (2002)
International Trademark Association, cited in Trademarks and Unfair Competition, Second Edition, 2007
by Graeme B. Dinwoodie and Mark D. Janis at pg 19. [Emphasis supplied].
11
The first clear and lucid articulation of the rationale for trademark dilution can be found in The Rational
Basis of Trademark Protection -Frank I. Schechter, 40 Harv. L. Rev. 813 (1927). Also see Ringling Bros. –
Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel Development 170 F.3d 449 (4 th Cir.),
cert. denied, 528 U.S. 923 (1999).
12
15 U.S.C. 1125 (c); Moseley v. Secret Catalogue, Inc., 537 U.S. 418 (2003). The Trademark Dilution
Revision Act 2006 introduced the element of likelihood of dilution standard, rejects the doctrine of “niche
fame”, includes non- inherently distinctive marks as deserving of protection and actually defines dilution in
10
4
Application of First Amendment Principles: When however, unauthorized use or
adoption of a trademark does not result in loss of distinctiveness because such use is for
non-trademark purposes or such use is purely in the nature of the exercise of freedom of
speech and no identifiable consumer confusion is envisaged, major problems present
themselves for the courts resolution. Instances of probable areas of conflict include use of
trademarks as parodies, satires 13 , art, news commentary (news reporting) sheer comic
speech and other purely non-commercial speech inclusive of comparative advertising.
Courts have been called upon to unravel such conflicts in a number of cases,
prominent among which is the case of Rogers v. Grimaldi14. There the plaintiff sued
producers and distributors of a movie entitled: ‘Ginger and Fred’ for violation of the
Lanham Act. Both the District court and the Second Circuit held that the offending movie
title did not convey endorsement by the plaintiff and thus there was no false advertising.
The court also held that the title had a real connection to its content and did not violate
state law relating to the right of publicity. In upholding the defendants First Amendment
rights to artistic expression, the District court held rather broadly that the primary purpose
of the alleged offending trademark adoption was not commercial in nature. On further
appeal the Second Circuit made a couple of insightful observations:
1. There is no absolute privilege for artistic expressions against the application of the
Lanham Act since poetic license is not without limits15.
terms of blurring and tarnishment, among others. Louis Vuitton Mallatier S.A. v. Haute Diggity Dog LLC,
No. 1:06cv321 (JCC) (E.D. Va. Nov. 3, 2006); When is Parody Fair Use? Richard Posner, 21 J. Legal
Studies 67, 75 (1992).
13
“ Satire deals with actual cases, mentions real people by name or describes them unmistakably (and often
unflatteringly), talks of this moment and this city, and this special, very recent, very fresh deposit of
corruption whose stench is still in the satirist’s curling nostrils” G. Highet in “The Anatomy of Satire”
quoted by Harriette K. Dorsen id at 923.
14
875 F.2d 994 (1989)
15
Warner Bros. Pictures, Inc. v. Majestic Pictures Corp., 70 F.2d 310 (2d Cir. 1934); Orion Pictures Co. v.
Dell Publishing Co., 471 F. Supp. 392 ( S.D.N.Y. 1979)
5
2. Forms of expression that are more likely to cause confusion or lead to public
deception can be proscribed in appropriate cases16.
3. The First Amendment recognizes the rights of trademark owners and other
owners of creative works to protect them against infringement17.
4. Most times both the artistic and commercial aspects of a work and its title are so
interwoven that more protection of the expressive elements is needed to guarantee
the freedom of speech which both the author and the audience justly deserve18.
5. A confusingly similar title might not necessarily be infringing unless it has
acquired secondary meaning irrespective of its nature, especially where
trademarks are used as part of an artistic expression than on ordinary commercial
products19.
6. The Lanham Act will be construed narrowly to avoid any possible conflict with
Free Speech, regardless of whether alternative modes of expression exist20.
7. The Lanham Act should only be applied where artistic works or other expressive
elements are involved if the public interest in avoiding consumer confusion
exceeds the public interest in free expression21.
The Court of Appeal also wisely noted that courts should be cognizant of the fact
that patrons of expressive and intellectual works like books, movies and art generally do
not purchase them based on their title as they would regular commercial products. They
are more likely to pay closer attention prior to making a commitment to buy, such that
16
Central Hudson Gas & Electric v. Public Service Commission, 447 U.S. 557, 563; 100 S. Ct. 2343, 2350
(1980)
17
Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 -560.
18
Mattel, Inc. v. MCA Records, Inc. 296 F.3d 894.
19
Trademarks and Unfair Competition, J. McCarthy, Section 10.2 (1984). Strong marks are usually coined
or invented words which are suggestive, arbitrary or fanciful. Weak marks are generally descriptive.
20
Silverman v. CBS, 870 F.2d 40, 48 (2d Cir. 1989); Stop the Olympic Prison v. United States Olympic
Committee, 489 F. Supp. 1112 (S.D.N.Y. 1980). “ We cannot indulge the facile assumption that one can
forbid particular words without running a substantial risk of suppressing ideas in the process” See Cohen v.
California, 403 U.S. 15, 26; 91 S. Ct. 1780, 1788 (1971).
21
This last point constitutes the real test for resolving the competing interests of the trademark owner to
protection of its trademark and the right of the public to free expression. But note that the public interest is
actually what is considered as most important.
6
any alleged confusion whether induced by initial interest or impelled by residual memory
are certain to dissipate22.
In Cliff Notes, Inc. v. Bantam Doubleday Dell Pub. Group, Inc.23, the publisher of a
study guide sued the authors and publishers of a parody of their work, alleging that
consumers would be deceived as to the source or authorship of the parody. The Court of
Appeal took the view, setting aside a preliminary injunction entered by the District Court,
that: “[T]aking into account that somewhat more risk of confusion is to be tolerated when
a trademark holder seeks to enjoin artistic expression such as a parody, the degree of
risk of confusion between Spy Notes and Cliff Notes does not outweigh the well
established public interest in parody.”24
The court also observed that the main objective of a parody as an expressive work
rather than a commercial exploitation of the trademark of another, involves enough
appropriation of the underlying work in the effort to comment or criticize by imitation.
Thus an effective parody should convey in one clean sweep two divergent messages that
‘it is the original, but also that it is not the original and is instead a parody’. Failure to
do so effectively and to ensure that consumers capture the message that a parody is
intended, is likely to lead to consumer confusion which strengthens the allegation of
trademark infringement. When viewed as articulated above a parody defense involves
merely an element of the usual likelihood of confusion analysis25.
22
Theoretical assumptions regarding consumer confusion or deception involve the concepts of initial or
post interest confusion and the doctrine of imperfect recollection of the title or packaging of desired
products.
23
886 F.2d 490 (1989).
24
Id at 495.
25
Cardtoons, L.C. v. Major League Baseball Players Ass’n., 95 F3d 959 (10th Cir. 1996).
7
On the other hand, the action in Yankee Pub. Inc. v. News America Pub. Inc.26,
involved claims for trademark infringement, false designation of origin, unfair
competition, unjust enrichment and trademark dilution respectively. The District court as
part of its decision held that the publishers of “The Old Farmer’s Almanac” failed to
establish consumer confusion based on the adoption of a caricature of that trade dress by
the defendant. While applying the Polaroid factors to the question of likelihood of
confusion the court noted that:
When another’s trademark (or a confusingly similar mark) is used without
permission for the purpose of source identification, the trademark law
generally prevails over the First Amendment. Free speech rights do not
extend to labeling or advertising products in a manner that conflicts with
the trademark rights of others. In these circumstances, the exclusive rights
guaranteed by the trademark law is generally superior to the general free
speech rights of others.27
This case also adds a further clarification regarding the scope of protection that
should be accorded free speech interests. In response to plaintiffs perceptive argument
that there was really no parody involved in this case, the court clarified that the deference
that trademark law accords to free speech whether as expressive art or not, is not limited
to parodies but extends to all ‘bona fide efforts to communicate’. Since the courts will not
pass judgment on the quality and efficacy of expressive works, equal protection exists for
both exquisitely articulated expressions and so called poorly executed attempts28. Further,
on the question of the state dilution claim, the court found no evidence of weakening or
watering down of the plaintiffs mark on the justification that no loss of distinctiveness is
26
809 F. Supp. 267 (1992).
Id. at 276.
28
“…good burlesque or bad, penetrating satire or blundering buffoonery, is not for us to decide. It is
fundamental that courts may not muffle expression by passing judgment on its skill or clumsiness, its
sensitivity or coarseness; nor on whether it pains or pleases.” See University of Notre Dame v. Twentieth
Century Fox Film Corp., 22 A.D.2d 452 at 458; 256 N.Y.S.2d 301 at 307 ( 1965).
27
8
occasioned when trademarks are used in an artistic or creative format, since the
trademark in question continues to be used to reference the owner and its goods or
services.
Suggested Standard of Review: In Cliff Notes 29 , as justification for issuing a
preliminary injunction to restrain the sale or distribution of the offensive parody, the
District Court as a threshold matter applied the eight-factor balancing test recommended
in Polaroid Corp. v. Polarad Elec. Corp.30, and finding that there was a likelihood of
confusion also held that the plaintiff had demonstrated a likelihood of success on the
merits and irreparable injury to its goodwill and reputation. In reviewing the District
Court’s grant of an injunction for a possible abuse of discretion, the Second Circuit
correctly observed that the application of the Polaroid factors, which had its origins in
purely commercial transactions without reference to First Amendment considerations,
was inappropriate. It however incorrectly, in the present writer’s view, added that in such
cases the Polaroid factors should be applied with due regard to First Amendment
concerns31.
Also in Yankee Publishing Incorporated32, after finding as an initial matter that the
right of artistic expression and commentary protected by First Amendment considerations
trumped the plaintiffs property rights regardless of traits of confusion, Judge Leval still
felt compelled to address the Polaroid eight-factor test on Plaintiffs insistence to ascertain
likelihood of confusion. The court pointed out that: “If the factors are examined with
recognition that their purpose is to ensure a broad examination of the central issue of
29
886 F.2d 490 (1989).
287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820; 82 S. Ct. 36.
31
Cliff Notes at 495, footnote 3.
32
809 F. Supp. 267.
30
9
whether consumer confusion is likely, they confirm the conclusion that New York’s joke
did not cause likely confusion.”33
It is suggested that once it becomes apparent from the facts of a given case that the
relevant speech or expression is protected, especially in the face of the Defendant’s
Motion to dismiss on First Amendment grounds, there is clearly no need to review the
Polaroid factors to determine the likelihood of consumer confusion. Such a conclusion is
likely to be reached where the use is not for trademark purposes or where it merely draws
attention to the owner of the trademark, the likelihood of consumer confusion will
probably be non-existent and even if traces abound is likely to be overcome. When
however, the expressive nature of the use is doubtful or is underscored by commercial
aspirations that do not serve any public purpose or is purely in bad faith, then a review of
the factors is indicated.
Conclusion:
As much as the need to protect intellectual property rights as
encapsulated within the laws relating to trademarks is indispensable in the modern socioeconomic climate, the equally competing and perhaps more important need to ensure the
free and unencumbered flow of information and the dissemination of ideas requires a
delicate balancing process. These sometimes competing rights are not antithetical when
the proper legal rules are applied.
As Judge Kozinski has observed:
The point is that any doctrine that gives people property rights in words,
symbols and images that have worked their way into our popular culture
must carefully consider the communicative functions those marks
serve…Words and images do not worm their way into our discourse by
accident; they’re generally thrust there by well orchestrated campaigns
intended to burn them into our collective consciousness. Having embarked
on that endeavor, the originator of the symbol necessarily-and justly- must
33
Id at 273.
10
give up some measure of control…This does not imply a total loss of
control, however, only that the public’s right to make use of the word or
image must be considered in the balance as we decide what rights the
owner is entitled to assert.34
34
Trademarks Unplugged, by Alex Kozinski, 68 N.Y.U.L. Rev. 960 (1993). Also see Mattel, Inc. v. MCA
Records, Inc 296 F.3D 894, 900 (2002).
11