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Trademarks and

Fair Use:
Some Rules of the

Staff Attorney
Trademark Basics
• Trademarks are not copyrights
– What is protected: words, symbols, colors,
etc. used in commerce to designate the
source of goods and services
– Roots in consumer protection and unfair
– Distinct “use” and “fair use” principles
– Distinct approaches to secondary liability

Trademark Use
• Is the mark being used in
• Is the mark placed on any
goods, containers, displays
or advertisements?

Noncommercial Use

Nominative Fair Use

“Most useful social and commercial discourse

would be all but impossible if speakers were
under threat of an infringement lawsuit every
time they made reference to a person,
company or product by using its trademark.”
The New Kids on the Block v. New Am. Publ’g,
Inc., 971 F.2d 302, 306 (9th Cir. 1992).

NFU applies where: “a mark user has
used the plaintiff's mark to describe
the plaintiff's product, even if the
defendant's ultimate goal is to
describe his own product . . . .”
Cairns v. Franklin Mint Co., 292 F.3d
1139, 1152 (9th Cir. 2002).
• E.g., “We repair Volkswagens.” and
“Soda lovers say Pepsi tastes better
than Coca Cola.”
• Compare “classic” fair use:
Essentially a nontrademark
Elements of Nominative
Fair Use
(1)the markholders’ product or service in question
is not readily identifiable without use of the

• only so much of the mark or marks was used as

was reasonably necessary to identify the
product or service; and

(3)the user did nothing that would, in conjunction

with the mark, suggest sponsorship or
endorsement by the trademark holder.

First Amendment
• Lanham Act applies “to artistic works
only where public interest in avoiding
consumer confusion outweighs public
interest in free expression.” Walking
Mountain, 353 F.3d at 807.
• Origin: Rogers v. Grimaldi, 875 F.2d 994
(2d Cir. 1989) (Use of trademark in
literary 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: Video
game uses animated image based on
real strip club. Fair use?
• No nominative fair use: Rockstar
Games did not design the Pig Pen
to identify or refer specifically to
the Play Pen => NFU defense
doesn’t apply
• BUT First Amendment protects use
of Play Pen’s trademarks and trade
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 Linden Lab hereby grants
you a nonexclusive, nontransferable, nonsublicenseable, revocable, limited license
to use the modified eye-in-hand logo (as displayed on
as of January 21, 2007) to identify only your goods and/or services that are sold at This license may be modified, addended, or
revoked at any time by Linden Lab in its sole discretion.”

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 the
defendant 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 third
party to infringe.” Id.
– No liability where defendant lacked“the power to
remove infringing material” or “directly stop
[its]distribution of the Internet.” Perfect 10 v. Visa
Int’l Service Assoc., et al., 494 F3d 788, 807 (9th Cir
Vicarious Liability
• Defendant and infringer must
– Actual or apparent partnership
– Authority to bind each other in
transactions with third parties OR
– Joint ownership or control over
infringing product

The Innocent Infringer
• Limits liability for printers, publishers
and 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.2d
1082 (C.D. Cal. 2001).
Trademark Dilution
• Dilution by blurring or tarnishment
• In practice, tends to follow
• Recent liberalization of standard--
only have to show likelihood of
• ONLY nationally famous marks
• Fair use, noncommercial use and
constitutional limits apply