What do a former Beach Boy, a former Playboy Playmate and the members of New Kids on the Block all have in common? Each has been a party to a suit for trademark infringement where the defense of fair use was asserted. This article will explore the concept of nominative fair use of trademarks, examine how it differs from classic fair use of trademarks and highlight how the doctrine was developed and applied in three notable cases in the Ninth Circuit Court of Appeals.
In general, classic fair use is a defense to a valid claim of trademark infringement. Classic fair use is codified in Section 33 of the Lanham Act, the federal trademark statute. 15 U.S.C. § 33(b)(4). The defense of fair use can be invoked if the trademark owner's trademark has a meaning other than as a trademark. The typical example is that of a trademark that has some suggestive or descriptive significance, such as MOBIL. Fair use will permit a junior user to use the word "Mobile" to describe a gas pump that can be easily moved from location to location. While the junior user is using the word "Mobile," it is not using the word as a trademark. Rather, the junior user is using the word to describe a feature of its own product.
Unlike the classic fair use defense, nominative fair use is invoked when the junior user intentionally uses the senior user's trademark in order to identify the senior user's products or services, as well as to promote its own products and services. The doctrine of nominative fair use was first articulated by the Ninth Circuit Court of Appeals in The New Kids on the Block v. New America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). In New Kids, two national newspapers, USA Today and The Star, independently conducted telephone surveys inviting participants to call a 900 telephone number and vote for their favorite member of the New Kids on the Block. Fearing a loss of control of their public image, the five guys from Boston decided to sue both newspapers for trademark infringement, false designation of origin and unfair competition. In replying to the suit, both newspapers asserted a First Amendment right, as well as a claim of fair use of the NEW KIDS ON THE BLOCK trademark.
The New Kids court first examined USA Today's and The Star's use of the NEW KIDS ON THE BLOCK mark in view of the defense of fair use as codified in Section 33(b)(4) of the Lanham Act. 971 F.2d at 306. The New Kids court found that this type of fair use did not apply in the present case since the newspapers were using the NEW KIDS ON THE BLOCK mark to identify the band. 971 F.2d at 308. The court opined that when the senior user's trademark is used to describe the senior user's product, a different type of analysis needs to be employed. Id. The court called this new type of fair use "nominative fair use" and established a three-factor test for determining when nominative fair use applies. Id. The factors are:
(1) The product or service must be one not readily identifiable without 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.
Applying this test to the newspapers' use of the NEW KIDS ON THE BLOCK trademark, the court found that the first factor was satisfied. Id. The court stated that there is no easy way to refer to the popular music band consisting of five young men from Boston except by using the NEW KIDS ON THE BLOCK trademark. Id. Accordingly, the first factor weighed in favor of the newspapers.
The court found that the second and third factors also weighed in favor of the newspapers. The newspapers had used only as much of the NEW KIDS ON THE BLOCK mark as was necessary to identify the band. 971 F.2d at 309. The newspapers did not use the band's distinctive logo. Id. Moreover, the court held that announcements did not contain language that suggested that the contests were sponsored or endorsed by the band. Id. Indeed, the USA Today poll allowed participants the choice to state that the band's members were "a turn off." Id. Accordingly, the newspapers' use of the NEW KIDS ON THE BLOCK mark was considered a nominative fair use of the trademark and the band was unable to stop the use or claim damages.
The nominative fair use doctrine was first applied to Web sites in Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). In Welles, the defendant was the Playboy Playmate of the Year for 1981. Subsequently, Ms. Welles created a Web site to promote herself and to sell erotic photographs of herself. The metatags for the Web site contained the words "Playboy" and "Playmate." Also, the phrase "Playmate of the Year 1981" appeared on the masthead of the Web site, and advertisements for the Web site contained the phrases "Playboy Playmate of the Year 1981" and "Playmate of the Year 1981." Finally, the Web site featured the abbreviation "PMOY '81" as a watermark on the pages of the Web site. Playboy Enterprises viewed these uses of its PLAYBOY, PLAYMATE OF THE YEAR and PMOY trademarks as an infringement and sued Welles for trademark infringement, false designation of origin and unfair competition.
Applying the nominative fair use test articulated in the New Kids case, the court segregated Welles' uses of Playboy Enterprises' trademarks into three categories for analysis. First, the court looked at the masthead and the banner advertisements. The court noted that no descriptive substitute exists for the phrases "Playmate of the Year" and "Playboy Playmate of the Year 1981." 279 F.3d at 802. Thus, the court held that the first factor of the New Kids test weighed in favor of Welles. Id. Welles did not use Playboy Enterprises' distinctive logos or typefaces. Id. As such, the court found that the second factor weighed in favor of Welles. With respect to the third factor, the court found that Welles actually disclaimed any affiliation with or sponsorship by Playboy Enterprises. 279 F.3d at 803. As such, the court held that the third factor weighed in favor of Welles. Thus, the trademarks in the masthead and banner advertisements were nominative fair uses. Id.
The second of the categories related to the metatags on the Web site. Welles included the words "Playboy" and "Playmate" in the metatags for the Web site. The terms were not repeated extensively in the metatags. Since the terms "Playboy" and "Playmate" describe Welles' affiliation with Playboy Enterprises, the court found that the first factor weighed in her favor. 279 F.3d at 803. Moreover, since Welles did not overuse the terms in the metatags, nor did their use suggest sponsorship by Playboy Enterprises, the court found that the second and third factors weighed in her favor as well. 279 F.3d at 804. Accordingly, Welles' use of the marks in the metatags was a nominative fair use of Playboy Enterprises' trademarks.
Finally, the court focused on Welles' use of the "PMOY '81" abbreviation as a watermark on her Web site. Playboy Enterprises uses the "PMOY" abbreviation to refer to "Playmate of the Year." Welles' Web site repeated the abbreviation on the wallpaper for the Web site; however, her image was not used before or after any of the images. The court held that Welles did not need to repeatedly use "PMOY '81" to describe her prior affiliation with Playboy Enterprises. 279 F.3d at 804. Rather, "Playboy Playmate of the Year 1981" was adequate. Id. Accordingly, the court held that Welles' use of "PMOY '81" failed the first prong of the nominative fair use test and remanded the matter to the district court to determine whether or not Welles' use of that abbreviation was an infringement of Playboy Enterprises' trademark rights in the PMOY trademark.
Coming back to the music realm, the Ninth Circuit again addressed the question of nominative fair use in Brother Records, Inc. v. Jardine, 318 F.3d 900 (9th Cir. 2003). In Brother Records, the defendant, a former member of the Beach Boys, created a new band and sought to use the name "Beach Boys Friends and Family." The remaining Beach Boys objected to Jardine's use of the BEACH BOYS trademark in this fashion and demanded that Jardine stop using the "Beach Boys Friends and Family" mark. Jardine refused and the Beach Boys sued.
Jardine contended that his use of the BEACH BOYS trademark was protected by the defenses of classic fair use and nominative fair use. 318 F.3d at 903. The court rejected Jardine's assertion that the classic fair use defense protected his use of the BEACH BOYS mark and analyzed his use of the BEACH BOYS mark using the nominative fair use test. Id. The court's reasoning centered on the fact that Jardine was using the BEACH BOYS mark to identify the Beach Boys' music and entertainment services with the goal of promoting his own musical act. 318 F.3d at 904. Turning to the New Kids test, the court held that Jardine's use of the BEACH BOYS trademark satisfied the first prong of the test. 318 F.3d at 908. There is no viable alternative for Jardine: He must use the BEACH BOYS trademark to identify his prior affiliation with the band. Id. Moreover, Jardine did not adopt any of the Beach Boys' former logos or distinctive trade dress. Accordingly, his use of the BEACH BOYS trademark also satisfied the second prong. Id.
Where Jardine fails the New Kids test is on the third prong. Jardine's promotional materials displayed the words BEACH BOYS more prominently than the words "Family and Friends." Id. The court also found that Jardine's use of the BEACH BOYS trademark was designed to suggest that his band was sponsored by the Beach Boys. Id. Finally, Jardine's use of the BEACH BOYS mark actually caused confusion among concert goers and event organizers. Id. In failing the third prong, the court found that Jardine's use of the BEACH BOYS trademark was not protected by the nominative fair use defense.
On October 6, 2003, the U.S. Supreme Court declined to hear Jardine's appeal in this case, and therefore the decision of the Ninth Circuit Court of Appeals stands. More importantly, so does the Ninth Circuit's doctrine of nominative fair use. Like the fair use doctrine in copyright law, nominative fair use requires a court to balance the need to use another's trademark versus the greed that may result in overuse of the trademark. The Ninth Circuit's test assists lawyers and judges in striking this delicate balance. In the case of the former Playboy Playmate and the five guys from Boston, the balance was struck. However, the former Beach Boy was not so wise, and, like a new surfer, was not able to find his balance and was knocked off his surfboard by a wave of litigation.
Michael J. Smith is an Associate in the intellectual property practice group of Akin Gump Strauss Hauer & Feld LLP in the Philadelphia office. The author would like to thank Kristyne Bullock, Ann Gillespie and Jim Salerno for their review and input on drafts of this article.