7.1 Fair Use Defenses: Classic and Nominative
3 min read•july 25, 2024
Fair use defenses in trademark law protect free speech and promote competition. allows of terms, while permits necessary references to trademarks. These defenses balance trademark rights with public interest.
Courts consider factors like necessity, good faith, and potential confusion when evaluating fair use claims. Landmark cases have shaped the application of these defenses, ensuring trademarks don't monopolize language or hinder legitimate market communication.
Fair Use Defenses in Trademark Law
Classic vs nominative fair use
Top images from around the web for Classic vs nominative fair use
Digital Piracy - Canadian Copyright Law: Fair Use and Fair Dealing in Canadian Law (Part 2 ... View original
Is this image relevant?
Doctrine Of Fair Use - Free of Charge Creative Commons Legal 6 image View original
Is this image relevant?
Fair Use and Blurred Lines Between Common Law and Civil Law Countries | infojustice View original
Is this image relevant?
Digital Piracy - Canadian Copyright Law: Fair Use and Fair Dealing in Canadian Law (Part 2 ... View original
Is this image relevant?
Doctrine Of Fair Use - Free of Charge Creative Commons Legal 6 image View original
Is this image relevant?
1 of 3
Top images from around the web for Classic vs nominative fair use
Digital Piracy - Canadian Copyright Law: Fair Use and Fair Dealing in Canadian Law (Part 2 ... View original
Is this image relevant?
Doctrine Of Fair Use - Free of Charge Creative Commons Legal 6 image View original
Is this image relevant?
Fair Use and Blurred Lines Between Common Law and Civil Law Countries | infojustice View original
Is this image relevant?
Digital Piracy - Canadian Copyright Law: Fair Use and Fair Dealing in Canadian Law (Part 2 ... View original
Is this image relevant?
Doctrine Of Fair Use - Free of Charge Creative Commons Legal 6 image View original
Is this image relevant?
1 of 3
- Classic fair use defense
- Defendant uses descriptive term in primary sense to describe own product or service
- Not employed as trademark to identify source of goods or services
- Examples: "micro color" for permanent makeup pigments, "sweet-tart" for cranberry juice flavor
- Nominative fair use defense
- Defendant uses plaintiff's trademark to refer to plaintiff's product or service
- Necessary when no other reasonable way exists to identify the product or service
- Examples: using band name in reader poll, former Playmate referencing "Playboy" title on website
- Key differences
- Purpose: Descriptive (classic) vs referential (nominative) use
- Relationship to mark: Own description vs referring to plaintiff's product
- Necessity: Alternative terms available (classic) vs no practical alternative (nominative)
Case law of fair use defenses
- Classic fair use examples
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004)
- "Micro color" used to describe permanent makeup pigments
- Supreme Court ruled some consumer confusion doesn't preclude fair use defense
- Sunmark, Inc. v. Ocean Spray Cranberries, Inc. (1995)
- "Sweet-tart" described cranberry juice flavor
- Court found descriptive use, not
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004)
- Nominative fair use examples
- (1992)
- Newspaper used band name in reader poll
- Ninth Circuit established three-factor test for nominative fair use
- Playboy Enterprises, Inc. v. Welles (2002)
- Former Playmate used "Playboy" and "Playmate" on her website
- Court ruled nominative fair use for necessary reference to past title
- (1992)
Factors in fair use determination
-
Classic fair use factors
- Use descriptive of defendant's goods or services
- Defendant's good faith intent
- Prominence and presentation of mark in defendant's use
- Degree of likely confusion caused by use
-
Nominative fair use factors (New Kids on the Block test)
- Product not readily identifiable without use of mark
- Only so much of mark used as reasonably necessary for identification
- No suggestion of endorsement or sponsorship by trademark holder
-
Additional considerations
- Commercial vs non-commercial use
- First Amendment concerns and expressive uses
- Competitive relationship between parties
Balance of rights in fair use
- Protecting free speech
- Allows criticism, commentary, and news reporting using trademarks
- Prevents monopolization of language by trademark owners
- Supports parody and artistic expression (political cartoons, satire)
- Promoting competition
- Permits descriptive use of terms in marketing and
- Prevents unfair marketplace advantages for trademark owners
- Allows comparative advertising and product references (side-by-side comparisons)
- Limiting trademark rights
- Prevents overreach of trademark protection
- Ensures trademarks serve intended purpose of source identification
- Balances exclusive rights with public interest in free use of language
- Consumer benefits
- Increases access to product and service information
- Facilitates consumer choice through comparative advertising
- Supports market efficiency by allowing accurate product descriptions (ingredient lists, technical specifications)
Key Terms to Review (17)
Accurate Representation: Accurate representation refers to the truthful and precise portrayal of a trademarked product or brand, especially when using that mark in comparative advertising or for descriptive purposes. This concept is essential in determining whether the use of a trademark is permissible under fair use defenses, as it ensures that consumers are not misled about the nature or quality of the goods being represented.
Advertising: Advertising is a form of communication that aims to promote products, services, or ideas to potential consumers. It plays a crucial role in establishing brand identity and can influence consumer perception and purchasing decisions. Effective advertising often relies on trademarks to create recognition and differentiate products in the marketplace.
Classic fair use: Classic fair use is a legal doctrine that allows limited use of copyrighted material without permission from the copyright owner, primarily for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. It serves as a defense against infringement claims and is grounded in the idea that not all uses of copyrighted work should be prohibited when they serve the public interest and do not harm the market value of the original work.
Consumer Perception: Consumer perception refers to the way individuals interpret and make sense of branding, products, and trademarks based on their experiences, beliefs, and attitudes. This concept is crucial in determining how consumers view the distinctiveness of a trademark, its association with quality, and its likelihood to cause confusion with other marks in the marketplace.
Context of Use: Context of use refers to the specific circumstances and settings in which a trademark is applied or encountered. This concept is crucial because it influences how consumers perceive and interpret a mark, especially when evaluating fair use defenses and determining the likelihood of confusion between similar marks. Understanding the context helps to clarify the intended message of the trademark and can significantly impact legal outcomes in trademark disputes.
Descriptive use: Descriptive use refers to the manner in which a trademark is employed in a way that describes the goods or services rather than indicating their source. This type of use is important in distinguishing between fair uses of a trademark and infringing uses, as it can affect the validity of fair use defenses and how trademarks are managed in digital spaces.
Identification vs. Source Designation: Identification vs. source designation refers to the distinction between using a trademark solely to identify the product or service versus using it to indicate its source or origin. This concept is crucial in understanding fair use defenses, where the intention behind using a trademark can determine if the use is permissible under trademark law.
Likelihood of Confusion: Likelihood of confusion is a legal standard used to determine whether consumers might mistakenly believe that goods or services come from the same source due to similar trademarks. This concept is central in trademark law, as it influences decisions on registration, infringement claims, and overall brand protection.
Mattel, Inc. v. MCA Records, Inc.: Mattel, Inc. v. MCA Records, Inc. is a landmark case from 2002 where the Ninth Circuit Court ruled on trademark issues related to the use of the Barbie trademark in a song titled 'Barbie Girl' by the band Aqua. The case examined the balance between trademark rights and First Amendment protections, establishing important precedents regarding fair use and expressive works.
Media: In the context of trademark law, media refers to various forms of communication channels, including print, digital, and broadcast platforms, that disseminate information to the public. Media plays a crucial role in shaping perceptions of brands and can significantly impact the likelihood of confusion among consumers, especially when discussing fair use defenses such as classic and nominative fair use.
New Kids on the Block v. News America Publishing, Inc.: This case involved the famous boy band 'New Kids on the Block' and a newspaper that used their name in a promotional campaign. The court ruled in favor of the band, establishing important legal principles regarding nominative fair use in trademark law. This case highlighted how a trademark can be used by others for identification without infringing on the original owner's rights when certain conditions are met.
Nominative fair use: Nominative fair use is a legal doctrine that allows the use of a trademarked term to refer to the actual goods or services of the trademark owner, without implying any endorsement or affiliation. This concept is crucial when balancing trademark rights with free speech and expression, particularly in contexts where the trademark is necessary to identify the goods or services being discussed.
Non-commercial purpose: Non-commercial purpose refers to the use of a trademark or other intellectual property in a way that does not intend to generate profit or commercial gain. This concept is essential in evaluating fair use defenses, particularly when determining whether the use of a trademark serves a public benefit rather than a business objective. It helps to differentiate between uses that might infringe on trademark rights and those that can be considered fair under specific legal frameworks.
Secondary meaning: Secondary meaning refers to the acquired distinctiveness of a mark that enables it to identify the source of a product or service rather than simply describing the product itself. This concept plays a vital role in trademark law, as it allows certain marks that may not initially qualify for protection to gain legal recognition over time through extensive use and consumer association.
Trademark dilution: Trademark dilution refers to the weakening of a trademark's distinctiveness or reputation due to unauthorized use by others, even when there is no likelihood of confusion. This concept protects famous marks from uses that may tarnish or blur their uniqueness, ensuring that they maintain their strong association in the minds of consumers.
Trademark use: Trademark use refers to the application of a trademark in commerce to identify and distinguish goods or services from those of others. This concept is crucial because it determines whether a mark has been used in a way that qualifies for protection under trademark law. Trademark use can affect defenses against infringement claims, the legitimacy of licensing agreements, and the regulation of commercial speech, as it establishes the context in which trademarks are recognized and enforced.
Using a trademark to refer to the trademarked product: Using a trademark to refer to the trademarked product occurs when a brand's trademark is used in a descriptive manner, often to identify or describe the specific goods or services associated with that mark. This usage can be a critical aspect of fair use defenses in trademark law, particularly when distinguishing between classic fair use and nominative fair use, where the intent and context of the usage matter significantly.