Trademarks and
Fair Use:
Some Rules of the Road
Corynne McSherry
Staff Attorney
Trademark Basics
• Trademarks are not copyrights
– What is protected: words, symbols, colors, etc.
used in commerce to designate the source of
goods and services
– Roots in consumer protection and unfair
competition
– Distinct “use” and “fair use” principles
– Distinct approaches to secondary liability
Trademark Use
• Is the mark being used in
commerce?
• Is the mark placed on any
goods, containers, displays or
advertisements?
Noncommercial Use
Nominative Fair Use
“Most useful social and commercial discourse would
be all but impossible if speakers were under threat of
an infringement lawsuit every time they made
reference to a person, company or product by using
its trademark.” The New Kids on the Block v. New
Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir. 1992).
NFU applies where: “a mark user has used
the plaintiff's mark to describe the
plaintiff's product, even if the defendant's
ultimate goal is to describe his own
product . . . .” Cairns v. Franklin Mint Co.,
292 F.3d 1139, 1152 (9th Cir. 2002).
 E.g., “We repair Volkswagens.” and “Soda
lovers say Pepsi tastes better than Coca Cola.”
 Compare “classic” fair use: Essentially a
nontrademark use.
Elements of Nominative
Fair Use
(1) the markholders’ product or service in question is not
readily identifiable without use of the trademark;
(2) only so much of the mark or marks was used as was
reasonably necessary to identify the product or
service; and
(3) the user did nothing that would, in conjunction with
the mark, suggest sponsorship or endorsement by the
trademark holder.
First Amendment Balance
• Lanham Act applies “to artistic works only
where public interest in avoiding consumer
confusion outweighs public interest in free
expression.” Walking Mountain, 353 F.3d at
807.
• Origin: Rogers v. Grimaldi, 875 F.2d 994 (2d
Cir. 1989) (Use of trademark in literary title).
• Adopted by Ninth Circuit in Mattel v. MCA
Records, 296 F.3d 894 (9th Cir. 2002) (use of
trademark in song title).
ESS Entertainment v. Rockstar: Video game
uses animated image based on real strip club.
Fair use?
• No nominative fair use: Rockstar Games
did not design the Pig Pen to identify or
refer specifically to the Play Pen => NFU
defense doesn’t apply
• BUT First Amendment protects use of
Play Pen’s trademarks and trade dress
Linden Labs: Proceed and
Permit Notice
•
“Linden Lab objects to any implication that it would employ lawyers incapable of
distinguishing such obvious parody. Indeed, any competent attorney is well aware
that the outcome of sending a cease-and-desist letter regarding a parody is only to
draw more attention to such parody, and to invite public scorn and ridicule of the
humor-impaired legal counsel. Linden Lab is well-known for having strict hiring
standards, including a requirement for having a sense of humor, from which our
lawyers receive no exception. . . . Notwithstanding the foregoing, it is possible that
your use of the modified eye-in-hand logo for Second Life, even as parody, requires
license from Linden Lab, especially with respect to your sale of goods with the
parody mark at http://www.cafepress.com/getafirstlife/. Linden Lab hereby grants
you a nonexclusive, nontransferable, nonsublicenseable, revocable, limited license
to use the modified eye-in-hand logo (as displayed on http://www.getafirstlife.com/
as of January 21, 2007) to identify only your goods and/or services that are sold at
http://www.cafepress.com/getafirstlife/. This license may be modified, addended, or
revoked at any time by Linden Lab in its sole discretion.”
Secondary Liability
Contributory Liability
• Intentional inducement OR
• Supply with actual or constructive knowledge the
product will be used to infringe a mark
– When service rather than product, court must consider “the
extent of the control exercised by the defendant over the
third party’s means of infringement” Lockheed Martin Corp
v. Network Solutions, Inc. 194 F. 3d 980, 984 (9th Cir. 1999).
– Specifically, there must be “direct control and monitoring of
the instrumentality used by the third party to infringe.” Id.
– No liability where defendant lacked“the power to remove
infringing material” or “directly stop [its]distribution of the
Internet.” Perfect 10 v. Visa Int’l Service Assoc., et al., 494
F3d 788, 807 (9th Cir 2007)
Vicarious Liability
• Defendant and infringer must have:
– Actual or apparent partnership
– Authority to bind each other in transactions
with third parties OR
– Joint ownership or control over infringing
product
The Innocent Infringer
• Limits liability for printers, publishers and
broadcasters who innocently
publish/broadcast infringing ads-- injunctive
relief only.
• Extends to web marketplaces, e.g., eBay, if
no prior knowledge of infringing nature of
seller’s goods or services. Hendrickson v.
eBay, 165 F.Supp.2d 1082 (C.D. Cal. 2001).
Trademark Dilution
• Dilution by blurring or tarnishment
• In practice, tends to follow infringement
• Recent liberalization of standard--only
have to show likelihood of dilution
• ONLY nationally famous marks
• Fair use, noncommercial use and
constitutional limits apply