2016] AGAINST FAIR USE 2023
transformativeness and critical commentary meant to save the intellectual
property laws from overreach, oft-cited by courts as an engine of free speech
and First Amendment protection.2 Yet fair use is riddled with problems, as we
all know: it’s a defense, not an affirmative right; there are no bright-line rules;
it’s case-by-case; it’s notoriously unpredictable.3 Nonetheless, everything from
rap songs to chewy dog toys have been saved by fair use, in both the copyright
and trademark infringement contexts.4 In recent years, what I like to call the
“postmodern problem” has highlighted yet another glaring inadequacy of the
fair use doctrine: its insistence that the new work somehow comment on or
transform the original work.5 And yet the postmodern condition suggests that
it is precisely the inability of a work to be unique enough to parody (in which
the copyrighted or trademarked work, with its “original and separate
U.S.C. § 1115(b)(4) (2012) (alleging fair use as a defense to a claim by the holder of a registered
mark); 17 U.S.C. § 107 (2012) (discussing limitations on fair use). Because genericide is strictly
a trademark defense, this Article focuses on fair use case studies in the trademark context.
Nonetheless, fair use case law in the copyright context informs and is quite analogous to that in
the trademark context, including its emphasis on commentary on the original work/mark (i.e.,
parody). See, e.g., Harley–Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999)
(“[W]hatever protection is to be afforded a trademark parody must be informed by t he Supreme
Court’s recent elucidation in the copyright context of parodies allegedly protected by th e defense
of fair use.”); Anheuser–Busch, Inc. v. Balducci Publ’ns, 28 F.3d 769, 774 (8th Cir. 1994)
(comparing the fair use doctrine’s analysis of parodies in the copyright context to the present
trademark parody defense). Therefore, throughout this Article, I sometimes refer to copyright
fair use cases by way of elucidating concepts and critical court decisions on, for example, parody
2. In Eldred v. Ashcroft, 537 U.S. 186, 219 (2003), the Court specifically cites fair use as a
“built-in First Amendment accommodation.” As a result, fair use provides “considerable
latitude for scholarship and comment.” Id. at 190 (citing Harper & Row, Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 560 (1985)).
3. See, e.g., Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1171 (9th Cir. 2012); Dellar v.
Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939) (per curiam); Barton Beebe, An
Empirical Study of U.S. Copyright Fair Use Opinions, 1978–2005, 156 U. PA. L. REV. 549, 552 (2008);
Jessica Litman, Billowing White Goo, 31 COLUM. J.L. & ARTS 587, 596 (2008); David Nimmer,
“Fairest of Them All” and Other Fairy Tales of Fair Use, 66 LAW & CONTEMP. PROBS. 263, 287 (2003).
4. These cases span the range of copyright and trademark, but note the focus on parody
as transformative of the original in both. See Campbell v. Acuff–Rose Musi c, Inc., 510 U.S. 569,
591 (1994); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 261 (4th Cir.
2007). However, with the recent Second Circuit decision in Cariou v. Prince, 714 F.3d 694, 706
(2d Cir. 2013), in which the court held that commentary on the original was not needed for a
fair use defense, the tide may be starting to turn at least in the copyright context where the
emphasis on commentary on the original (but not necessarily transformativeness) distinction is
concerned. Cariou’s implications for fair use in the trademark context (or indeed, even on
copyright fair use doctrine in other circuits) are unclear, however.
5. See, e.g., Anheuser–Busch, 28 F.3d at 774; Cliffs Notes, Inc. v. Bantam Doubleday Dell
Publ’g. Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989); Henley v. DeVore, 733 F. Supp. 2d 1144,
1155 (C.D. Cal. 2010); Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 924 F. Supp. 1559,
1567 (S.D. Cal. 1996), aff’d, 109 F.3d 1394 (9th Cir. 1997).