Against Fair Use: The Case for a Genericness Defense in Expressive Trademark Uses

Author:Xiyin Tang
Position:Lecturer, Yale University; Visiting Fellow, Yale Law School Information Society Project; J.D, Yale Law School; B.A., Columbia University
Pages:2021-2063
SUMMARY

The ever-expanding reach of trademark law and the narrowing strictures of trademark law's fair use doctrine demand new ways of thinking about defenses in artistic use cases. Trademark law currently acknowledges two types of expressive use as "fair": works that target or comment upon a trademarked work itself, and works that somehow "transform" the original. Defending a claim of infringement on these... (see full summary)

 
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2021
Against Fair Use: The Case for a
Genericness Defense in Expressive
Trademark Uses
Xiyin Tang
ABSTRACT: The ever-expanding reach of trademark law and the narrowing
strictures of trademark law’s fair use doctrine demand new ways of thinking
about defenses in artistic use cases. Trademark law currently acknowledges
two types of expressive use as “fair”: works that target or comment upon a
trademarked work itself, and works that somehow “transform” the original.
Defending a claim of infringement on these grounds is lengthy, fact-intensive,
and, above all, expensive—thereby chilling protected expression. These
defenses also do not adequately capture numerous modes of modern-day
artistic expression, many of which do not even recognize a unique “original”
to comment upon. This Article argues for increasing the use of genericide or
genericness defenses in expressive use cases.
Genericide is a doctrine in which a formerly-protectable mark is held to be
unprotectable because it no longer signifies the source or producer of the
product (e.g., Aspirin as a product made by Bayer) but instead a category or
genus of product (aspirin as pain reliever that a generic manufacturer can
call their product). Defendants in expressive use cases should argue that the
formerly-protectable mark has become generic in a specific market or industry
as signifying not the producer but a category or genus of product—for
example, that Cristal has become, in the rap industry, generic for champagne.
Rather than claiming transformativeness or critical commentary in the hopes
of winning a fair use defense, artists should emphasize that they did not, for
example, reference Louis Vuitton to target or comment on either the mark itself
or its producer—but rather that Louis Vuitton has become generic in the art
industry as a general way of signaling a luxury product.
This defense would have the advantage of invalidating a trademark once
and for all within a specific industry. The law’s present focus on forcing every
Lecturer, Yale University; Visiting Fellow, Yale Law School Information Society Project;
J.D, Yale Law School; B.A., Columbia University. Many thanks to Barton Beebe, Ian Ayres, Jack
Balkin, and the editors of the Iowa Law Review, especially Robert Fitzgerald, for their helpful
comments and insight. For full-color versions of the graphs featured on pages 2060 and 2061,
please e-mail me at xiyin.tang@yale.edu.
2022 IOWA LAW REVIEW [Vol. 101:2021
expressive use into the fair use defense does art a disservice by recognizing only
one type of expressive use—parody—as “fair.”
I. INTRODUCTION ........................................................................... 2022
II. DEFINING “GENERICIDE AND “GENERICNESS” ........................... 2026
A. THE ECONOMIC RATIONALE OF GENERICIDE ........................... 2026
B. THE EXPRESSIVE MODEL OF GENERICIDE ................................ 2028
C. A SEMIOTIC MODEL OF GENERICIDE ....................................... 2031
III. AGAINST FAIR USE ...................................................................... 2032
A. THE MANY FACES OF FAIR USE ............................................... 2032
1. The Initial Hurdle: “Non-Mark” Uses ........................ 2033
2. “Nominative” and “Classic” Fair Uses ........................ 2034
3. Parodic Fair Uses ......................................................... 2037
4. The Trademark Dilution Revision Act ...................... 2037
B. THE PROBLEM WITH PARODIES AND THE “COMMENTING UPON
THE ORIGINAL REQUIREMENT ...................................................... 2039
1. What is a Parody?......................................................... 2039
2. Gutting the First Amendment .................................... 2040
3. Parody as Commentary: Is That All There Is? ........... 2042
4. The Failure of the Parody Defense: A Case Study .... 2044
IV. GENERICITY IN THE 21ST CENTURY ............................................. 2046
A. WHAT DOES IT ALL MEAN? ................................................... 2046
B. A LOOK AT MATTEL, INC. V. MCA RECORDS, INC. FROM
THE GENERICIDE PERSPECTIVE ............................................... 2048
V. A GENERICNESS APPROACH TO ARTISTIC USE ............................ 2050
A. POTENTIAL CRITIQUES OF THE GENERICIDE DEFENSE .............. 2050
B. GENERIC BY MARKET ............................................................. 2053
C. GENERIC BY CASE .................................................................. 2055
D. GENERICISM AS A FAIR USE FACTOR ........................................ 2058
E. A LAST OBJECTION: IS EVERYTHING FAMOUS . . . GENERIC? .... 2059
VI. CONCLUSION .............................................................................. 2062
I. INTRODUCTION
In recent years, even those outside the legal community have come to
know the two-word phrase “fair use.”1 It’s become the darling child of
1. E.g., Randy Kennedy, Apropos Appropriation, N.Y. TIMES (Dec. 28, 2011),
http://www.nytimes.com/2012/01/01/arts/design/richard-prince-lawsuit-focuses-on-limits-of-
appropriation.html (asking whether Richard Prince’s works are “[t]heft or fair use”); see also 15
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
and satire.
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).

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