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Trademarks and

Fair Use:Some Rules of theRoad

CorynneMcSherryStaff Attorney



Trademark Basics• Trademarks are not copyrights

– What is protected: words, symbols, colors,

etc. used in commerce to designate thesource of goods and services

– Roots in consumer protection and unfaircompetition

– 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, displaysor advertisements?



Noncommercial Use







NFU applies where: “a mark user hasused the plaintiff's mark to describethe plaintiff's product , even if thedefendant's ultimate goal is to

describe his own product . . . .”Cairns v. Franklin Mint Co., 292 F.3d1139, 1152 (9th Cir. 2002).

• E.g., “We repair Volkswagens.” and“Soda lovers say Pepsi tastes betterthan Coca Cola.”

•Compare “classic” fair use:

Essentially a nontrademark use.



Elements of NominativeFair Use

(1)the markholders’ product or service in questionis not readily identifiable without use of thetrademark;

• only so much of the mark or marks was used aswas reasonably necessary to identify theproduct or service; and

(3)the user did nothing that would, in conjunctionwith the mark, suggest sponsorship orendorsement by the trademark holder.



First Amendment

Balance• Lanham Act applies “to artistic works

only where public interest in avoidingconsumer confusion outweighs publicinterest in free expression.” WalkingMountain, 353 F.3d at 807.

• Origin: Rogers v. Grimaldi, 875 F.2d 994(2d Cir. 1989) (Use of trademark inliterary 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: Videogame uses animated image based onreal strip club. Fair use?

• No nominative fair use: RockstarGames did not design the Pig Pento identify or refer specifically tothe Play Pen => NFU defensedoesn’t apply

• BUT First Amendment protects useof Play Pen’s trademarks and tradedress







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.”

http://www.cafepress.com/getafirstlife/


http://www.getafirstlife.com/



















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 thedefendant 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 thirdparty to infringe.” Id.

– No liability where defendant lacked“the power toremove infringing material” or “directly stop[its]distribution of the Internet.” Perfect 10 v. VisaInt’l Service Assoc., et al., 494 F3d 788, 807 (9th Cir

2007)



Vicarious Liability

• Defendant and infringer musthave:

– Actual or apparent partnership

– Authority to bind each other intransactions with third parties OR

– Joint ownership or control overinfringing product



The Innocent Infringer

• Limits liability for printers, publishersand 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.2d1082 (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

Documents

EFF: EFF bootcamp CM TM fairuse