Rethinking Trademark Fair Use

• Author: William McGeveran
• Position: Associate Professor, University of Minnesota Law School
• Pages: 02

Associate Professor, University of Minnesota Law School. I am grateful for comments and assistance from many colleagues, particularly Barton Beebe, Dan Burk, Guy Charles, Tom Cotter, Stacey Dogan, Terry Fisher, Brett Frischmann, Deborah Gerhardt, Eric Goldman, Mike Grynberg, Laura Heymann, Mark Janis, Sonia Katyal, Mark McKenna, Ruth Okediji, Sean Pager, Lisa Ramsey, Wendy Seltzer, and Jessica Silbey. Portions of the Article were presented at the University of Minnesota Law School's National Trademark Roundtable; at a symposium sponsored by the Fordham Intellectual Property, Media, and Entertainment Law Journal; and at the Fifth Annual Works in Progress in Intellectual Property Colloquium at American University. Early work on this Article was supported by a fellowship at the Berkman Center for Internet and Society at Harvard Law School. I am indebted to able research assistance from law students L. Ashley Aull (Harvard) and David Biggs, David Couillard, and Jennifer Cross (Minnesota).

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I Introduction

Trademark rights have expanded dramatically over time from consumer-oriented safeguards against the diversion of customers to comprehensive protectors of brand identity.¹ Many observers warn that this increased scope of trademark protection threatens free speech, including both dissemination of useful commercial information and discussion, critique, or parody about famous brands and the culture they embody.² Yet final decisions in trademark cases that raised legitimate free speech issues over the last decade or so usually favor defendants who use trademarks for purposes of expression.³ Courts ultimately get these cases right under existing law.

The principal problems lie not in the eventual judicial outcome, but in the process leading up to that outcome. First, doctrines to accommodate free speech values that may arise in trademark cases are overlapping, confusing, volatile, and cumbersome. One prominent trademark practitioner dubs the ungainly collection of doctrines "Frankenlaw."⁴ Even if the result favors speech, it can be impossible to predict in advance which of a half dozen standards a court might apply. Second, these doctrines frequently center on complex fact-intensive analyses that require significant time and money to resolve. In particular, trademark fair use frequently devolves into a clumsy alternate means of asking the fundamental question of trademark law: whether a defendant's use of a plaintiffs mark is likely to confuse consumers about the source or affiliation of the respective parties' Page 52 products. Discussion of trademark doctrine often overlooks the procedural or administrative costs resulting from such involved inquiries.⁵

The lethal combination of uncertain standards with lengthy and costly litigation creates a classic chilling effect upon the unlicensed use of trademarks to facilitate speech, even when such uses are perfectly lawful.6 This effect undoubtedly occurs, though admittedly it is difficult to measure because it occurs far away from the courthouse, through practices that never find their way into any casebook.⁷ Markholders policing their portfolios send cease-and-desist letters attacking virtually any unlicensed use of their trademarks.⁸ From television networks to insurance companies, risk-averse institutional gatekeepers demand expansive rights clearance. Lawyers counsel clients to avoid the trouble of a potential lawsuit. In response to this array of powerful entities, speakers either avoid unlicensed uses of trademarks entirely or withdraw them at the first hint of legal action.

A few recent court decisions demonstrate both the significant speech interests at stake in such cases and the courts' tendency to safeguard those interests with a grab-bag of rationales. Mattel, maker of the BARBIE⁹ doll, sued to enjoin many parodies of this cultural icon, including a series of photographs entitled "Food Chain Barbie," which "portray a nude Barbie in danger of being attacked by vintage household appliances"¹⁰ and a pop song called "Barbie Girl" featuring vapid lyrics supposedly sung by Barbie and Page 53 Ken.¹¹ Panels of the Ninth Circuit used different doctrines to rule for the defendants in both cases. AFLAC, perpetrator of television commercials in which a duck repeatedly "quacks the company's name in a distinctive, nasal tone," sought an injunction against the campaign of a candidate running against Ohio's then-Governor, Bob Taft, for distributing Internet ads in which a cartoon duck with the Governor's head squawked "TaftQuack!" when "ducking" questions.¹² The court protected this core political speech, but relied in part on different reasoning than the Ninth Circuit's BARBIE cases. The Seventh Circuit used still another doctrine to protect sales by the Chicago Tribune of t-shirts carrying a front-page headline, "The joy of six," celebrating the Chicago Bulls' sixth NBA championship.¹³ Fairly consistent favorable outcomes belie the chaotic reasoning in this body of case law.

It is time to rethink trademark fair use. A legal rule that reaches the perfect outcome every time still fails if its operation also systematically discourages the very activities it is intended to protect. The free speech features of trademark law must encompass not only the substantive policy balance already incorporated in core trademark doctrine, but also greater integration of First Amendment requirements, increased predictability in legal standards, and less delay and cost in litigation.¹⁴ This Article advances those goals by proposing pragmatic reforms to the structural factors creating a chilling effect.

Part II of this Article, after some brief definitions of terms, explores the substantive successes and procedural failures of trademark doctrine that create a systematic chilling effect. Part III considers the problems with applying the touchstone "likelihood of confusion" test to free expression. Part IV critiques five individual doctrines that defendants and courts invoke in these cases; with the possible exception of a new statutory rule in federal trademark dilution cases, all of them are volatile and slow.

Finally, Part V suggests new ways of thinking about trademark fair use that focus on the lessons learned from existing doctrines. It proposes less emphasis on achieving the perfect balance between confusion prevention and speech protection in every case, because doing so requires more Page 54 elaborate rules and fact-intensive inquiries. Instead, we should craft simpler affirmative defenses that immunize particular categories of expressive uses, thereby reducing uncertainty and allowing for quick adjudication. We also should rethink other procedures to make defenses available earlier in litigation and with less entanglement in likelihood of confusion issues.

II The Trouble With Trademark Fair Use

A Defining Expressive Uses and Fair Uses

Before moving further, two key concepts, expressive use and fair use, require definition for purposes of this Article.¹⁵

In the standard account, a trademark serves as shorthand to help consumers identify with accuracy the products they want to buy; such reliable indicators reduce inefficient search costs and ensure that producers reap the rewards of satisfying customers because they, not an impostor, retain the benefit of increased goodwill and future repeat purchases.¹⁶ This is the "source identification" function of trademarks.

"Expressive" uses of trademarks convey an articulable message rather than, or in addition to, the traditional function of source identification.17 The boundary is not always obvious and there will be close cases. But, some categories of expressive uses can be identified with relative ease, including: use of a mark (or parts of one) to convey a message unrelated to the markholder (e.g., using the word "apple" to talk about fruit rather than computers); use of a mark to identify a markholder or a product in order to convey a message about it (e.g., the "Food Chain Barbie" photographs and "Barbie Girl" song); or use of a mark to draw on its meaning or associations to illustrate or enliven a message about something else entirely (e.g., the use of the AFLAC allusion in the TaftQuack advertisement). Thus, expressive uses can arise in such diverse situations as comparative advertising, parody, references in books or films, or news reporting. Page 55

This Article sets aside some other important types of uses because they generally fall outside this definition, even though it is possible to imagine particular situations where they might fit. Usually, defendants in these scenarios use a mark and do not surround it with other explicitly communicative matter. For example, a defendant who makes or sells a baseball cap with a YANKEES logo¹⁸ or a t-shirt that says "BARBIE"¹⁹ merely reproduces a trademark and adds no further expressive content or context (although the eventual wearer might do so²⁰). These uses often involve merchandising rights,²¹ and would only be expressive uses if the trademark were altered to add additional articulable expression.²²

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