October 8, 2017

Fair Use Under the Trademark Laws (NYLJ.com)

Fair Use Under the Trademark Laws
Howard Wintner, New York Law Journal

The doctrine of fair use is usually associated with the copyright laws. There is, however, also a doctrine of fair use under the trademark laws. There are two branches of trademark fair use. One is descriptive fair use, which is often referred to as classic fair use. The other is nominative fair use. In classic fair use, the defendant uses the plaintiff's trademark to describe its own product or service. Nominative fair use occurs when the defendant uses the plaintiff's trademark to describe the plaintiff's product or service, even though its ultimate goal is to describe its own product or service. This article will discuss descriptive or classic fair use. The doctrine of nominative fair use is worthy of another article.

The common law classic fair use defense is codified in 15 U.S.C. §1115(b)(4). It provides that it is a defense to an infringement claim that "the name, term or device charged to be an infringement is a use otherwise than as a mark … of a term or device which is descriptive of and used fairly and in good faith only to describe the good or services of such party, or their geographic origin." To qualify as a descriptive fair use, defendant must have made use of plaintiff's mark: (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith. See, e.g., EMI Catalogue Partnership v. Hill, Holliday, Conners, Cosmopulos , 228 F. 3d 56, 64 (2d Cir. 2000).The central rationale for a fair use defense is to prevent a monopoly of a descriptive term which anyone should have right to use. See, e.g., Something Old, Something New v. QVC, 1999 WL 1125063 at *7 (S.D.N.Y., Dec. 8, 1999); Dessert Beauty v. Fox , 568 F. Supp. 2d 416, 426 (S.D. N.Y. 2008).

The following cases within the Second Circuit illustrate the application of the descriptive fair use doctrine.

'Cosmetically Sealed'

In Cosmetically Sealed Industries v. Chesebrough-Pond's USA , 125 F. 3d 28 (2d Cir. 1997), the plaintiff's mark was "SEALED WITH A KISS" for a lip gloss. The defendant, as part of a promotional campaign for its lipstick, used the words "Seal it with a kiss!!" The display invited consumers to take a postcard, place a lipstick imprint of her lips on it, and mail it. Beneath the slot holding the postcards were the words "[t]ake this postcard and send it to the one you love." The words "Seal it with a Kiss!!" appeared next to the postcards. The Second Circuit found as a matter of law that the use of these words was a protected, descriptive use. The Second Circuit reasoned that the "phrase conveys the instruction to seal by kissing the complimentary postcard to signify the amorous sentiment conveyed to the recipient of the card." The words were used in a descriptive sense "to describe the action the sellers hope[d] consumers [would] take using their product."

'Dessert Beauty'

In Dessert Beauty, 568 F. Supp. 2d 416, one party (Fox) owned the trademark "LOVE POTION" for perfumed essential oils. The other party (DBI) launched a line of beauty products that included two fragrance products described as "love potion fragrance" and "belly button love potion fragrance." The court granted summary judgment in favor of DBI. The court first stated that DBI had used the phrase in a non-trademark fashion because the source of its products was not identified by that term. Instead, the source of its products was indicated by its own trademark "DESSERT" (with a TM symbol next to it), together with a stylized logo, which were prominently displayed. In contrast, the TM symbol did not appear next to the words "love potion." The court stated that words on a "product's packaging generally do not serve as a trademark where there is also a conspicuously visible trademark that clearly serves that function." The court then found that the phrase was used in a descriptive sense. The words by themselves were descriptive and had a dictionary definition. The court found it significant that the "term 'love potion' is a common term in the English language," and was used by many other persons in the cosmetics field. The court also found it of consequence that the phrase "love potion" was used with other words. The court then turned its attention to the third classic fair use factor, defendant's good faith. Fox argued that the fact that DBI: (1) did not conduct a trademark search before it started using the phrase, and (2) failed to discontinue its use after it received cease and desist letters, evidenced bad faith. The court found that neither of these facts was sufficient to raise an issue of fact on the good faith factor.


In Arnold v. ABC, 2007 WL 210330 (S.D.N.Y. 2007), the court granted defendants' motion to dismiss on the grounds of descriptive fair use. There, the plaintiff owned a trademark for the phrase "WHAT'S YOUR PROBLEM?," for a reality television show providing solutions to real people's problems. The principal defendant was the ABC television network. ABC broadcasted a well-known television show, "Boston Legal." As part of its advertisements for the show, it used the phrase "WHAT'S YOUR PROBLEM?" The court reasoned that it is not required that a word or phrase describes a characteristic or, for that matter, necessarily anything about the defendant's goods for purposes of a fair use defense. The court stated that in the advertisement, '"WHATS YOUR PROBLEM?"' appeared immediately above the phone number "1-877-SUE-2-WIN", indicating that the phrase was used descriptively to indicate that the program was "about fictional lawyers in a fictional law firm offering legal services." The court cited the Supreme Court's decision in KP Permanent Make-Up v. Lasting Impressions I , 543 U.S. 111, 122 (2004) to the effect that "[i]f any confusion with plaintiff's television show might result, 'that is the risk that plaintiff accepted when [she] decided to indentify [her show] with a mark that uses a well known descriptive phrase." 1 The court further reasoned that the fact that defendant had engaged in a descriptive fair use was clearly evidenced by the prominent display of the show's title and ABC's own famous and recognizable mark, as well as large photos of the show's three stars. Finally, the court concluded that the third element of the test, a use in good faith, was met. In reaching its conclusion in this regard, the court reasoned that it was highly doubtful that ABC sought to "conflate its show … with plaintiff's little known, local cable-access television program."

'EMI Catalogue'

In contrast, in EMI Catalogue, the Second Circuit denied a summary judgment motion in a case which had some similarities to the cases discussed which had sustained a fair use defense. There, the plaintiff owned the rights to the famous swing, jazz song, "Sing, Sing, Sing (With a Swing)," popularized by Benny Goodman, a swing clarinetist. The defendants were a well-known manufacturer of golf clubs and equipment (Spalding), and the advertising firm it retained to create a commercial for a new line of golf clubs. The commercial "be[gan] with a close-up of the head of an iron addressing a ball and an image of irons in a golf bag, followed by the phrase "Swing, Swing, Swing." The district court granted summary judgment, finding that the use of the phrase "Swing, Swing, Swing" constituted fair use. The district court found that the "words 'Swing, Swing, Swing' followed by images of three golfers swinging 'describe[d] the action which Spalding hope[d] golfers [would] take using their product.'" The Second Circuit disagreed for two reasons. First, while the Second Circuit agreed that "Swing" was undoubtedly descriptive of the action of hitting a golf club, the use of the alliterative phrase "Swing, Swing, Swing" was not. The Second Circuit believed that the use of the alliterative phrase was superfluous and that the "ordinary term for [this] action involves the single word 'swing', 'hit', 'stroke' or 'shot.'" The Second Circuit believed that the fact that there were alternate and even more appropriate ways to describe the desired action defeated a fair use defense. Second, the Second Circuit found that there were issues of fact as to the good faith factor. The court focused on the fact that defendants originally sought to use the "Sing, Sing, Sing" song as background music for the commercial. However, after concluding that the license fee to do so was too high, defendants decided to use a less expensive "Benny Goodman-type song." The Second Circuit concluded that the defendants' conduct created an issue of fact as to whether they acted in bad faith in order to seek to "capitalize on plaintiff's good will." Moreover, the fact that there were alternate descriptive terms, and a decision was made not to use them, suggested bad faith. The EMIcourt agreed with the district court that the use in the commercial of Spalding's logo was evidence of its good faith, but nevertheless concluded that there was a question of fact as to this element of the defense.

  1. In KP Permanent, the U.S. Supreme Court found that some possibility of consumer confusion was compatible with fair use. The Supreme Court did not reach the question of what quantum of confusion might defeat a classic fair use defense. Rather, it stated that it "suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant's use … of it cannot realistically be called descriptive." Thus, it appears likely that the greater the likelihood of confusion, the less likely the word or term will be found to be a descriptive fair use.

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