Using Third Parties’ : Unpacking Commerciality, Competition, and Confusion By Brooke Erdos Singer and Maxine Sharavsky

I. Introduction ment defenses,8 the following sections provide insight into Drawing the line between permissible and imper- how courts draw the boundary between commercial and missible uses of a third party’s (whether in non-commercial use in various contexts. a competitive context or otherwise) is a matter of some 1. Advertising complexity, involving consideration of the bounds of First Amendment protected speech, the distinctions be- The use of a mark “in connection with a good or ser- tween commercial and non-commercial use, defenses to vice” does not require use of the mark in connection with infringement and dilution that are available for purposes offering a specific product or service: an advertisement’s of allowing competition and critique, and, of course, the general promotion of patronage or intent to enhance con- likelihood of consumer confusion as to the source or en- sumer goodwill is likely to be found to constitute com- dorsement of goods or services. Further complicating the mercial use, as explained by the Seventh Circuit in Jordan 9 analysis is the lack of consistency in the treatment of these v. Jewel Food Stores, Inc. Time, Inc., the publisher of Sports topics from jurisdiction to jurisdiction. Illustrated magazine, published a commemorative issue of the magazine devoted exclusively to Michael Jordan in This article sets forth a basic framework for consider- celebration of his induction into the NBA Hall of Fame. ing whether the use of a third party’s trademark is per- Jewel-Osco supermarket placed a full-page spread in the missible, with particular emphasis on uses in advertising magazine congratulating Jordan on his induction (but not and digital contexts. It also presents some hypothetical advertising any particular product or offer). Jordan sued examples to explore the boundaries and potential pitfalls Jewel-Osco alleging, inter alia, false endorsement under associated with uses of third-party marks.1 the .10 The district court held that the ad was fully protected noncommercial speech, but the Seventh II. A Framework for Use of Third Parties’ Circuit reversed, explaining that “[a]n advertisement is no Trademarks less ‘commercial’ because it promotes awareness or loyalty rather than explicitly proposing a transaction in a A. Distinguishing Between Commercial and Non- specific product or service.”11 Commercial Use Both the Supreme Court’s First Amendment juris- 2. Gripe Sites prudence and the Lanham Act afford a higher level of In Bosley Medical Institute, Inc. v. Kremer12 the Ninth protection to non-commercial speech than to commercial Circuit held that the defendant’s maintenance of a gripe speech, including, in the context of the Lanham Act, with site located at www.BosleyMedical.com (incorporating the respect to uses of third-party trademarks. Under the First plaintiff’s registered trademark), where the defendant “to Amendment, non-commercial speech may be subject to put it mildly, was uncomplimentary of the Bosley Medi- governmental regulation only if the regulation survives cal Institute”13 and its hair restoration services, was not strict constitutional scrutiny.2 Commercial speech also is infringing because the defendant was not using the mark entitled to First Amendment protection,3 but the regula- “in connection with the sale of goods or services” where tion of commercial speech is subject to a less rigorous the defendant’s website “contain[ed] no commercial links level of judicial scrutiny.4 . . . offer for sale any product or service or contain paid advertisements from any other commercial entity.”14 First Amendment protections and the favored treat- However, businesses considering using their competi- ment of non-commercial speech are reflected in the fact tors’ trademarks to critique the competitors’ products and that under the Lanham Act and related case law, it is a services should note that the identity of the critic matters: defense to both and trademark the Bosley holding was based, in large part, on the fact that dilution claims that the challenged use of another’s the defendant was not offering competing services to the trademark is non-commercial. Specifically, with respect public (such that the defendant’s use of the Bosley Medical to trademark infringement claims, it is a defense that the mark could not have misled consumers into purchasing a use of another’s mark is not “on or in connection with competing product).15 a good or service.”5 With respect to claims,6 it is a defense that the use of another’s mark is “noncommercial.”7 Although there is little uniformity in judicial ap- PrintedBROOKE withERDOS permission SINGER is afrom: partner Bright at Davis Ideas &, Spring Gilbert, 2017, LLP in Vol. New 26, York, No.1, proaches to determining whether a use is non-commercial publishedSecretary ofby the the Section, New York and State Chair Bar of Association,the Section’s One Advertising Elk Street, Law for purposes of infringement, dilution, and First Amend- Albany,Committee. New M YorkAXINE 12207 SHARAVSKY is an associate at Davis & Gilbert.

NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No. 1 171 2342 3. Fan Sites beyond purely literal identification of goods and UsingIn Taubman Third Co. v. Webfeats Parties’,16 the defendant, Trademarks: a web services Unpacking to permit the use of certain figurative expressions, designer, operated a website using the name of the plain- such as the words “love potion” to advertising a perfume tiff’sCommerciality, shopping mall as its domain Competition, name; the website anddespite Confusion the ownershisp by a competing fragrance com- 24 includedBy Brooke information Erdos aboutSinger the and mall Maxineand links Sharavskyto the pany of a trademark registration for LOVE POTION. In 25 websites of tenant stores. The defendant described the KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. the Supreme Court held that a party raising a descriptive site as a “fan site” with no commercial purpose, but it ment defenses,8 the following sections provide insight into I. Introduction fair use defense does not have the burden to negate a like- contained links to the defendant’s web design business how courts draw the boundary between commercial and Drawing the line between permissible and imper- lihood of consumer confusion,26 although the ability of the and to his girlfriend’s apparel business. The inclusion of non-commercial use in various contexts. thesemissible links uses led ofthe a Sixththird party’sCircuit trademarkto conclude (whether that, “though in party claiming infringement to prove a likelihood of con- a competitive context or otherwise) is a matter of some 27 minimal[ly],” the defendant was using the plaintiff’s sumer1. Advertising confusion is relevant to the fair use analysis. markcomplexity, in a commercial involving manner. consideration17 The courtof the wasbounds clear, of First Amendment protected speech, the distinctions be- The availabilityuse of a mark of “inthe connectiondescriptive withfair use a good defense or ser - however, that aside from the commercial links on the providesvice” does reasonable not require comfort use of theto businesses mark in connection that third withpar- website,tween commercial it found “no and use non-commercial ‘in connection withuse, defensesthe ad- to infringement and dilution that are available for purposes ties’offering (including a specific their product competitors’) or service: trademark an advertisement’s ownership vertising’ of goods and services” and that the Lanham of allowing competition and critique, and, of course, the ofgeneral terms promotion that are descriptive of patronage or suggestive or intent to of enhance key goods con - Act therefore could not properly be invoked.18 Case law likelihood of consumer confusion as to the source or en- orsumer services goodwill in an isindustry likely to will be foundnot prevent to constitute the use comof the- regarding fan sites or other fan content is limited, likely dorsement of goods or services. Further complicating the samemercial terms use, to as describe explained such by thegoods Seventh or services Circuit in in a non-Jordan because, as a practical matter, businesses stand to benefit 9 analysis is the lack of consistency in the treatment of these trademarkv. Jewel Food manner. Stores, Inc. However, Time, businessesInc., the publisher expecting of toSports rely from fan content and thus are more likely to tolerate or topics from jurisdiction to jurisdiction. onIllustrated a descriptive magazine, fair usepublished defense a mustcommemorative take care to issueuse the encourage it and/or to resolve conflicts with fan content of the magazine devoted28 exclusively to Michael Jordan in 19 terms “in good faith,” meaning, according to at least creatorsThis without article sets litigation. forth a basic framework for consider- somecelebration circuits, of withouthis induction intent into “to thetrade NBA on Hallthe good of Fame. will ing whether the use of a third party’s trademark is per- Jewel-Osco supermarket placed a full-page spread in the 4. Social Media Platforms of the trademark owner by creating confusion as to the missible, with particular emphasis on uses in advertising sourcemagazine of the congratulating goods or services.” Jordan 29on To his avoid induction any inference (but not andCourts digital have contexts. not directly It also presents addressed some the hypothetical commerciality ofadvertising lack of good any faith, particular businesses product expecting or offer). to Jordan rely on sued a de - ofexamples content postedto explore on socialthe boundaries media and and other potential user-gen pitfalls- scriptiveJewel-Osco fair alleging, use defense inter shouldalia, false avoid endorsement using more under of the 1 eratedassociated content with platforms, uses of third-party but generally marks. speaking, such thirdthe Lanham party’s Act.mark10 Thethan district is required. court Forheld instance, that the thead wasuse content, when published by or on behalf of a business, offully a third protected party’s noncommercial particular stylization speech, ofbut a word,the Seventh as op- is treated in the same manner, for trademark purposes, posedCircuit to reversed, just the wordexplaining itself, thatwould “[a]n not advertisement be appropriate is inno II. A Framework for Use of Third Parties’ 20 as otherTrademarks commercial content promoting the business. theless context ‘commercial’ of a descriptive because it fair promotes use, as brand it would awareness be incon or- Insofar as businesses use their (and their sponsored in- sistentloyalty with rather the than concept explicitly of describing proposing the a transactionbusiness’s own in a A. Distinguishing Between Commercial and Non- 11 fluencers’) social media pages to build support for their goodsspecific (although, product or as service.” described below, some uses of third Commercial Use , products, and services in much the same manner parties’ stylizations may constitute nominative fair use). as theyBoth use the their Supreme websites Court’s and other First Amendmentonline advertising, juris- 2. Gripe Sites businessesprudence andshould the assumeLanham that Act theirafford uses a higher of third-party level of C. InNominative Bosley Medical Fair Institute, Use Inc. v. Kremer12 the Ninth trademarksprotection to on non-commercial social media platforms speech thanwill beto commercialtreated as CircuitNominative held that fairthe defendant’suse as a defense maintenance to trademark of a gripein- commercialspeech, including, uses for in Lanham the context Act ofpurposes the Lanham (although, Act, with fringementsite located isat awww.BosleyMedical.com judicial creation: it was first (incorporating developed the dependingrespect to useson the of context,third-party such trademarks. uses may be Under susceptible the First byplaintiff’s the Ninth registered Circuit intrademark), New Kids onwhere the Block the defendant v. News Am. “to toAmendment, descriptive ornon-commercial nominative fair speech use defenses, may be subjectdiscussed to Publ’g,put it mildly, Inc., where was uncomplimentary the court described of it the as Bosleythe use Medi of an-- 13 furthergovernmental below, or regulation may not onlygive riseif the to regulation a likelihood survives of con - other’scal Institute” mark as and “the its only hair word restoration reasonably services, available was not to 2 sumerstrict constitutional confusion). scrutiny. Commercial speech also is describeinfringing a particularbecause the thing.” defendant30 Although was not nominative using the mark fair entitled to First Amendment protection,3 but the regula- “in connection with the sale of goods or services” where That the use of a third party’s mark is commercial in use can take many forms, of particular interest from a tion of commercial speech is subject to a less rigorous the defendant’s website “contain[ed] no commercial links nature does not automatically make it impermissible; as commercial perspective is the by a busi- level of judicial scrutiny.4 . . . offer for sale any product or service or contain paid discussed below, one of several other available defenses ness of competitors’ trademarks for purposes of referring advertisements from any other commercial entity.”14 may Firstapply. Amendment protections and the favored treat- to the competitor or its goods or services in comparative However, businesses considering using their competi- ment of non-commercial speech are reflected in the fact advertising. Such uses generally are permissible so long tors’ trademarks to critique the competitors’ products and B.that underDescriptive the Lanham Fair Use Act and related case law, it is a as the comparison does not disparage the competitor, services should note that the identity of the critic matters: defenseThe classicto both or trademark “descriptive” infringement fair use defense and trademark to trade - make claims that are inaccurate or untruthful or mislead the Bosley holding31 was based, in large part, on the fact that markdilution infringement claims that under the challenged the Lanham use Act of another’sinvolves the consumers, or cause consumers to be confused about the the defendant was not offering competing services to the usetrademark of another’s is non-commercial. mark not as a trademark Specifically, (i.e., with not respect to refer source of goods or services or the relationship between the public (such32 that the defendant’s use of the Bosley Medical toto the trademark trademark infringement owner or its claims, goods it or is services),a defense butthat sole the- businesses. Nominative uses in comparative advertising mark could not have misled consumers into purchasing a lyuse as ofa descriptoranother’s markof the is advertiser’s not “on or inown connection goods.21 withFor ex - can include consumer surveys, references to the brand in competing product).15 ample,a good in or Sorensen service.” v.5 WithWD-40 respect Co.,22 toa chemicaltrademark company’s dilution stating facts about products or services, and assurances as useclaims, of the6 it word is a defense “inhibitor” that theto describe use of another’s its corrosion mark inhi is - to the advertiser’s product’s compatibility with a competi- bition“noncommercial.” product was 7found to be a descriptive fair use and tor’s product. not an infringement of the registered mark THE INHIBI- BROOKEIn ENewRDOS KidsSINGER the is aNinth partner Circuit at Davis set & Gilbert, forth aLLP three-factor in New York, TOR Althoughowned by there a company is little sellinguniformity other in corrosion judicial ap inhibi- - nominativeSecretary of the fair Section, use test,and Chair requiring of the Section’sthat (i) theAdvertising plaintiff’s Law tionproaches products. to determining23 Courts also whether have extended a use is non-commercial descriptive Committee. MAXINE SHARAVSKY is an associate at Davis & Gilbert. for purposes of infringement, dilution, and First Amend- CONTINUED ON PAGE 23

18NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No. 1 NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No.17 2 1 Using Third Parties’ Trademarks: Unpacking nominative uses of third parties’ marks, whether in com- parative advertising or otherwise, will do the following: Commerciality, Competition, and Confusion nominative uses of third parties’ marks, whether in com- Using Third Parties’ Trademarks: Unpacking 1. Use the mark for the sole purpose of identifying CONTINUED FROM PAGE 18 parative advertising or otherwise, will do the following: Commerciality, Competition, and Confusion the competitor or its goods or services, not as an CproductONTINUED or FROM service PAGE not 18 readily be identified without the 1. Useindicator the mark of the for source the sole of purposethe speaker’s of identifying goods or useUsing of the trademark; Third (ii) theParties’ defendant has Trademarks:used only so Unpackingtheservices competitor or to suggest or its goods any association or services, between not as an the productmuch of orthe asnot is readily necessary be identified to identify without the product the indicatorspeaker and of the the source mark owner.of the speaker’s goods or useorCommerciality, service; of the trademark; and (iii) the (ii) defendant the defendant Competition,has not has done used anything only so and servicesConfusion or to suggest any association between the 2. Use only so much of the mark as is necessary to muchthatBy Brookewould of the suggest mark Erdos as the is Singer necessaryplaintiff and had to identify Maxinesponsored the Sharavsky orproduct en- speaker and the mark owner. achieve the intended reference. The use of a word ordorsed service; the and defendant. (iii) the33 defendant Businesses has expecting not done to anything rely on 2. Usemark only only so is much a more of conservativethe mark as is approach necessary where to thatthe defensewould suggest should bethe aware, plaintiff however, had sponsored that there or isen a- lack 8 I. Introduction ment defenses,achievepracticable. the the intended following reference. sections Theprovide use ofinsight a word into dorsedof consistency the defendant. among 33the Businesses circuits in expecting the application to rely of on the Drawing the line between permissible and imper- how courtsmark draw only theis a boundarymore conservative between approachcommercial where and thenominative defense shouldfair use be defense aware, (although however, thethat principles there is a unlack- missible uses of a third party’s trademark (whether in non-commercial3. practicable.Where third use parties’ in various contexts. or stylized word marks ofderlying consistency the New among Kids thefactors circuits remain in the relevant application across of the the a competitive context or otherwise) is a matter of some are used, particularly those of competitors, avoid nominativecircuits). fair use defense (although the principles un- 1. 3. AdvertisingWhere third parties’ logos or stylized word marks complexity, involving consideration of the bounds of altering the form in which the mark appears from derlying the New Kids factors remain relevant across the arethe used,form traditionallyparticularly thoseused byof competitors,the mark owner. avoid43 FirstIn Amendment particular, in protected 2016 the speech,Second Circuitthe distinctions held in be- The use of a mark “in connection with a good or ser- circuits). vice” doesaltering not requirethe form use in ofwhich the mark the mark in connection appears from with Internationaltween commercial Information and non-commercialSystems Security Certificationuse, defenses to 4. Make sure there is adequate substantiation for 43any offeringthe a specificform traditionally product or service: used by an the advertisement’s mark owner. Consortium,infringementIn particular, Inc. and v. in Securitydilution 2016 the University, that Second are available Circuit LLC34 thatheld for purposesa in modi - claims regarding the mark owner or its goods or general promotion of patronage or intent to enhance con- Internationalfiedof allowing likelihood-of-confusion Informationcompetition Systems and analysis, critique, Security usingand, Certification of the course, Polaroid the 4. Makeservices. sure there is adequate substantiation for any Consortium,factorslikelihood35 to oftheInc. consumer extent v. Security applicable, confusion University,36 asstill toLLC should the34 sourcethat apply a modi or inen -- sumer claimsgoodwill regarding is likely theto be mark found owner to constitute or its goods com or- fiedthedorsement nominativelikelihood-of-confusion of goods fair use or contextservices. analysis, but Further with using thecomplicating the addition Polaroid of the mercial5. services.Where use, as practicable, explained by include the Seventh disclosure Circuit as toin theJordan 35 36 9 factorsfactorsanalysis substantially to is thethe extentlack of similar applicable, consistency to the inNewstill the shouldKids treatment factors. apply of37 in theseThis v. Jewel ownerFood Stores, of the Inc. mark Time, and aInc., disclaimer the publisher as to any of Sports en- 5. Where practicable, include disclosure as to the themeanstopics nominative that,from injurisdiction the fair Second use context to Circuit, jurisdiction. but a with use thatthe additioncomplies of Illustrateddorsement magazine, or publishedsponsorship a commemorative of the speaker by issue the 37 owner of the mark and a disclaimer as to any en- factorswith each substantially of the nominative similar tofair the use New factors Kids factors.still could This of the magazinemark owner. devoted exclusively to Michael Jordan in This article sets forth a basic framework for consider- dorsement or sponsorship of the speaker by the meansbe impermissible that, in the toSecond the extent Circuit, it is a likely use that to result complies in con - celebration of his induction into the NBA Hall of Fame. ing whether the use of a third party’s trademark is per- D. Newsmark Reporting owner. and Commentary withsumer each confusion of the nominative when considered fair use in factors light of still the could Polaroid Jewel-Osco supermarket placed a full-page spread in the missible, with particular emphasis on uses in advertising magazine congratulating Jordan on his induction (but not befactors. impermissible Conversely, to thea nominative extent it is use likely that to would result notin con pass- Separate from nominative use (but often overlap- and digital contexts. It also presents some hypothetical D.advertising News Reportingany particular and product Commentary or offer). Jordan sued sumermuster confusion under the when Ninth considered Circuit’s approach in light of (for the example, Polaroid ping with it) are news reporting and news commentary, factors.examples Conversely, to explore a thenominative boundaries use and that potential would not pitfalls pass which,Jewel-OscoSeparate under alleging, from the Federal nominative inter Trademarkalia, falseuse (but endorsement Dilution often overlap Act under of -1995, because it uses a third party’s rather than1 just its associated with uses of third-party marks. pingthe Lanham with it) Act.are news10 The reporting district court and heldnews that commentary, the ad44 was mustername, which under may the Ninth be more Circuit’s of the approachmark than (for necessary example, to are statutory defenses to trademark dilution claims. which,fully protected under the noncommercial Federal Trademark speech, Dilution but the Act Seventh of 1995, becauseidentify itthe uses relevant a third product party’s orlogo service) rather might than justneverthe its - Although there is very little case law on this defense, a areCircuit statutory reversed, defenses explaining to trademark that “[a]n dilution advertisement claims.44 is no name,lessII. be Awhich permissible Framework may be under more for the Useof theSecond of mark Third Circuit’s than Parties’ necessary approach to if Southern District of California court has extended it be- Althoughless ‘commercial’ there is becausevery little it casepromotes law on brand this defense,awareness a or identifythe PolaroidTrademarks the relevantfactors suggest product that or service)no confusion might is neverthe likely. - yond traditional news media to a blogger who reported less be permissible under the Second Circuit’s approach if Southerncriticallyloyalty rather onDistrict a companythan of explicitly California that resellsproposing court goods has a extended transactionon eBay. 45it beThe in- a A. Distinguishing Between Commercial and Non- 11 the PolaroidIn January factors 2017, suggest the Supreme that no Court confusion denied is likely. the peti- yondcourtspecific traditionalstated product that ornewsthe service.” content, media notto a theblogger format, who should reported be Commercial Use 38 45 tion for certiorari in Security University, leaving busi- criticallyexamined on for a companypurposes ofthat determining resells goods whether on eBay. material The InBoth January the Supreme 2017, the Court’s Supreme First Court Amendment denied the juris peti- - court2. Gripestated Sitesthat the content, not the format, should be nesses uncertain as to the appropriate nominative38 use constitutes journalism and that the blogger’s article was tionanalysis,prudence for certiorari particularly and the in Lanham Security in national Act University afford advertising a, higher leaving campaigns level busi of- examinedIn Bosley for Medicalpurposes Institute, of determining Inc. v. Kremer whether12 the material Ninth nesses uncertain as to the appropriate nominative use written “for the purpose of conveying information to the orprotection other multi-jurisdictional to non-commercial speech. speech A thanconservative to commercial ap- constitutesCircuit held46 journalism that the defendant’s and that the maintenance blogger’s article of a gripe was analysis, particularly in national advertising campaigns public.” proach,speech, therefore,including, would in the includecontext ofconsideration the Lanham of Act, the with writtensite located “for atthe www.BosleyMedical.com purpose of conveying information (incorporating to the the or other multi-jurisdictional speech. A conservative ap- 46 traditionalrespect to useslikelihood-of-confusion of third-party trademarks. factors 39Under as well the as First of public.”E.plaintiff’s Parody registered trademark), where the defendant “to proach, therefore, would include consideration of the theAmendment, nominative non-commercial fair use factors inspeech determining may39 be subjectappropriate to put itThe mildly, Federal was Trademark uncomplimentary Dilution ofAct the of Bosley 1995 and Medi the- traditional likelihood-of-confusion factors as well as of E. Parody 13 comparativegovernmental trademark regulation uses only and if the would regulation not assume survives that Trademarkcal Institute” Dilution and its Revision hair restoration Act of 2006 services, also provide was not the nominative fair use factors2 in determining appropriate40 The Federal Trademark Dilution Act of 1995 and the becausestrict constitutional the use is nominative, scrutiny. Commercial there is no confusion. speech also is ainfringing statutory because dilution the defense defendant for parody. was not47 Although using the themark comparative trademark uses and would 3not assume that Trademark Dilution Revision Act of 2006 also provide entitled to First Amendment protection, but the regula40 - statute“in connection does not with expressly the sale protect of goods parody, or services” courts typically where becauseThe theTrademark use is nominative, Dilution Revision there is Actno confusion. of 2006 codified a statutory dilution defense for parody.47 Although the tion of commercial speech is subject to a less rigorous recognizethe defendant’s parody website as fully “contain[ed] protected speech. no commercial48 In addition links thelevel nominative of judicial fair scrutiny. use doctrine4 as a complete defense in statute. . . offer does for salenot expresslyany product protect or service parody, or courtscontain typically paid The Trademark Dilution41 Revision Act of 2006 codified to the First Amendment interests at stake, courts have rec- trademark dilution suits, although it remains solely a recognize parody as fully protected speech.48 In addition14 the nominative fair use doctrine as a complete defense in ognizedadvertisements that since from parody any other “must commercial convey two entity.” simultane - common-lawFirst Amendment defense in protections the context and of infringementthe favored treat suits.- to the First Amendment interests at stake, courts have rec- trademark dilution suits,41 although it remains solely a ousHowever, and contradictory businesses considering messages—that using it their is the competi original- but Thement codification of non-commercial of fair use speech in the aredilution reflected context in the spe fact- ognized that since parody “must convey two simultane- common-law defense in the context of infringement suits. alsotors’ thattrademarks it is not theto critique original” the49 —likelihoodcompetitors’ ofproducts confusion and is cificallythat under references the Lanham and permits Act and use related of famous case law, marks it is ina ous and contradictory messages—that it is the original but The codification of fair use in the dilution context spe- services should note that the identity50 of the critic matters: defense to both trademark infringement and trademark low where a parody is effective.49 cificallycomparative references advertising and permits and in use parodying, of famous criticizing, marks in or alsothe Bosleythat it holdingis not the was original” based, in—likelihood large part, onof confusionthe fact that is dilution claims that the challenged use of another’s 50 comparativecommenting advertisingon the owner and of inthe parodying, famous mark criticizing, or on the or lowF.the defendantwhereConsiderations a parody was not is Regarding effective.offering competing Use of Third services-Party to the trademark is non-commercial.42 Specifically, with respect owner’s goods or services. public (such that the defendant’s use of the Bosley Medical commenting on the owner of the famous mark or on the F. ConsiderationsMarks in Special Regarding Contexts Use of Third-Party to trademark infringement42 claims, it is a defense that the owner’sGiven goods the lack or services. of a uniform judicial approach to nom- mark could not have misled consumers into purchasing a use of another’s mark is not “on or in connection with 1. MarksKeyword in Special Advertising15 Contexts inative fair use, and5 taking into account the principles that competing product). a goodGiven or theservice.” lack of With a uniform respect judicial to trademark approach dilution to nom - 1. KeywordKeyword advertising Advertising platforms such as Google Ad- inativeallclaims, of the fair6 itcircuits’ isuse, a defense and approaches taking that intothe have useaccount ofin another’scommon, the principles prudentmark is that WordsKeyword allow an advertising advertiser platforms to “purchase” such asparticular Google Adsearch- Using Third Parties’ Trademarks: Unpacking allnominative“noncommercial.” of the circuits’ uses of approaches 7third parties’ have marks, in common, whether prudent in com - parative advertising or otherwise, will do the following: Words allow an advertiser to “purchase” particular search Commerciality, Competition, and Confusion Although there is little uniformity in judicial ap- BROOKE ERDOS SINGER is a partner at Davis & Gilbert, LLP in New York, NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No. 1 23 CONTINUED FROM PAGE 18 proaches1. Use to the determining mark for the whether sole purpose a use is of non-commercial identifying Secretary of the Section, and Chair of the Section’s Advertising Law NYSBAfor purposesthe Bright competitor of Ideas infringement, or| Spring its goods dilution, 2017 or services,| Vol.and First26 not | AmendNo. as an 1 - Committee. MAXINE SHARAVSKY is an associate at Davis & Gilbert. 23 product or service not readily be identified without the indicator of the source of the speaker’s goods or use of the trademark; (ii) the defendant has used only so services or to suggest any association between the much of the mark as is necessary to identify the product NYSBAspeaker Bright and Ideas the | mark Spring owner. 2017 | Vol. 26 | No. 1 173 or service; and (iii) the defendant has not done anything 2. Use only so much of the mark as is necessary to that would suggest the plaintiff had sponsored or en- achieve the intended reference. The use of a word dorsed the defendant.33 Businesses expecting to rely on mark only is a more conservative approach where the defense should be aware, however, that there is a lack practicable. of consistency among the circuits in the application of the nominative fair use defense (although the principles un- 3. Where third parties’ logos or stylized word marks derlying the New Kids factors remain relevant across the are used, particularly those of competitors, avoid circuits). altering the form in which the mark appears from the form traditionally used by the mark owner.43 In particular, in 2016 the Second Circuit held in International Information Systems Security Certification 4. Make sure there is adequate substantiation for any Consortium, Inc. v. Security University, LLC34 that a modi- claims regarding the mark owner or its goods or fied likelihood-of-confusion analysis, using the Polaroid services. factors35 to the extent applicable,36 still should apply in the nominative fair use context but with the addition of 5. Where practicable, include disclosure as to the factors substantially similar to the New Kids factors.37 This owner of the mark and a disclaimer as to any en- means that, in the Second Circuit, a use that complies dorsement or sponsorship of the speaker by the with each of the nominative fair use factors still could mark owner. be impermissible to the extent it is likely to result in con- D. News Reporting and Commentary sumer confusion when considered in light of the Polaroid factors. Conversely, a nominative use that would not pass Separate from nominative use (but often overlap- muster under the Ninth Circuit’s approach (for example, ping with it) are news reporting and news commentary, because it uses a third party’s logo rather than just its which, under the Federal Trademark Dilution Act of 1995, 44 name, which may be more of the mark than necessary to are statutory defenses to trademark dilution claims. identify the relevant product or service) might neverthe- Although there is very little case law on this defense, a less be permissible under the Second Circuit’s approach if Southern District of California court has extended it be- the Polaroid factors suggest that no confusion is likely. yond traditional news media to a blogger who reported critically on a company that resells goods on eBay.45 The In January 2017, the Supreme Court denied the peti- court stated that the content, not the format, should be tion for certiorari in Security University,38 leaving busi- examined for purposes of determining whether material nesses uncertain as to the appropriate nominative use constitutes journalism and that the blogger’s article was analysis, particularly in national advertising campaigns written “for the purpose of conveying information to the or other multi-jurisdictional speech. A conservative ap- public.”46 proach, therefore, would include consideration of the traditional likelihood-of-confusion factors39 as well as of E. Parody the nominative fair use factors in determining appropriate The Federal Trademark Dilution Act of 1995 and the comparative trademark uses and would not assume that Trademark Dilution Revision Act of 2006 also provide because the use is nominative, there is no confusion.40 a statutory dilution defense for parody.47 Although the statute does not expressly protect parody, courts typically The Trademark Dilution Revision Act of 2006 codified 48 the nominative fair use doctrine as a complete defense in recognize parody as fully protected speech. In addition trademark dilution suits,41 although it remains solely a to the First Amendment interests at stake, courts have rec- common-law defense in the context of infringement suits. ognized that since parody “must convey two simultane- The codification of fair use in the dilution context spe- ous and contradictory messages—that it is the original but also that it is not the original”49—likelihood of confusion is cifically references and permits use of famous marks in 50 comparative advertising and in parodying, criticizing, or low where a parody is effective. commenting on the owner of the famous mark or on the F. Considerations Regarding Use of Third-Party 42 owner’s goods or services. Marks in Special Contexts Given the lack of a uniform judicial approach to nom- 1. Keyword Advertising inative fair use, and taking into account the principles that Keyword advertising platforms such as Google Ad- all of the circuits’ approaches have in common, prudent Words allow an advertiser to “purchase” particular search

NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No. 1 23 terms for purposes of ensuring that links to websites owners can use a form to report infringements.57 Twitter controlledUsing by theThird advertiser Parties’ and featuring theTrademarks: advertiser’s has a similarUnpacking form.58 products or services are the top results for searches that includeCommerciality, the purchased search terms. Competition, One technique some and3. User Confusion-Generated Content businessesBy Brooke have Erdos employed Singer is to and purchase Maxine their Sharavskycompeti- User-generated content (UGC) is, broadly speaking, tors’ trademarks as search terms so that a search for the any form of content produced by consumers through the competitor’s mark yields, as the top result, the “sponsor- use of an online platform (social media or otherwise). ment defenses,8 the following sections provide insight into ing”I. advertiser’sIntroduction website rather than that of the competi- Examples of UGC include social media posts, discussion how courts draw the boundary between commercial and tor/trademarkDrawing the owner. line between permissible and imper- forum posts, chats, tweets, blog content, digital images, non-commercial use in various contexts. missible uses of a third party’s trademark (whether in audio files, and video files.59 There is no explicit special le- a competitiveAlthough courtscontext have or otherwise) made clear is that a matter purchasing of some gal1. treatmentAdvertising of the use of third-party trademarks in UGC; trademarkscomplexity, as involving keyword consideration advertising search of the termsbounds con of- analysis of such uses should include consideration of The use of a mark “in connection with a good or ser- stitutesFirst Amendment the use of a protected trademark speech, in commerce the distinctions (despite bethe- commerciality, likelihood of confusion, and the defenses 51 vice” does not require use of the mark in connection with keywordtween commercial purchase notand being non-commercial consumer-facing), use, defenses such to described herein. In many cases, by virtue of its creation offering a specific product or service: an advertisement’s purchasesinfringement are notand necessarily dilution that infringing; are available rather, for thepurposes ap- by consumers, UGC is non-commercial and nominative general promotion of patronage or intent to enhance con- propriateof allowing inquiry competition is whether and the critique, purchase and, of of a course, competi the- in nature and therefore likely to constitute permissible sumer goodwill is likely to be found to constitute com- tor’slikelihood trademark of consumer for keyword confusion advertising as to the purposes source orgives en- use. Case law on use of trademarks in UGC is limited, mercial use, as explained by the Seventh Circuit in Jordan risedorsement to a likelihood of goods of orconsumer services. confusion Further complicating as to the source the but at least one court has, in dicta, acknowledged the im- of the advertiser’s paid search result.52 v. Jewel Food Stores, Inc. 9 Time, Inc., the publisher of Sports analysis is the lack of consistency in the Addressing treatment ofthat these portance of protecting consumers’ rights to use UGC as a question requires fact-based analysis of the particular Illustrated magazine, published a commemorative issue topics from jurisdiction to jurisdiction. vehicle for discussing trademarked products.60 heading and content of the paid search result: if seeing of the magazine devoted exclusively to Michael Jordan in the searchThis article result sets(or itsforth heading, a basic before framework clicking for on consider the - celebration of his induction into the NBA Hall of Fame. result)ing whether would the lead use a consumerof a third party’sto make trademark incorrect inferis per-- III.Jewel-Osco Hypotheticals supermarket placed a full-page spread in the encesmissible, regarding with particular the source emphasis of the result on uses or the in associationadvertising magazineThe following congratulating hypotheticals Jordan areon hisintended induction to illumi (but not- betweenand digital the contexts. trademark It alsoowner presents and the some party hypothetical controlling nateadvertising certain anyof the particular principles product discussed or offer). above. Jordan Although sued theexamples search result,to explore then the the boundaries keyword, togetherand potential with thepitfalls someJewel-Osco aspects alleging, of these inter examples alia, false are endorsementbased on case under law, the 1 10 searchassociated result with to which uses of it third-partyis linked, could marks. constitute trade- circumstancesthe Lanham Act. and Theparties district are entirelycourt held fictional. that the Further, ad was mark infringement. Advertisers purchasing competitors’ thefully discussion protected of noncommercial these examples speech, is for limitedbut the illustrativeSeventh trademarksII. A Framework as advertising for keywordsUse of Third should Parties’ take care purposesCircuit reversed, only and explaining therefore thatintentionally “[a]n advertisement omits consid is- no that theTrademarks web results to which paid search terms are linked erationless ‘commercial’ of other factors because and it areaspromotes of law brand that awarenesswould be or make the source of the web result clear by, for example, relevantloyalty rather to a complete than explicitly legal analysis. proposing It isa transactionnot intended in to a A. Distinguishing Between Commercial and Non- 11 including the name of the party controlling the website constitutespecific product legal advice or service.” applicable to any particular real-life Commercial Use in the page heading (and not including the competitor’s situation. 2. Gripe Sites nameBoth in the the page Supreme heading). Court’s First Amendment juris- prudence and the Lanham Act afford a higher level of In BosleyExample Medical A: CompanyInstitute, Inc. A, av. manufac Kremer12- the Ninth 2.protection Social to Media non-commercial and Vanity speech URLs than to commercial Circuit heldturer that of energy the defendant’s drinks, is maintenanceinterested in of a gripe speech,Many including, social media in the platforms context ofallow the Lanhamusers to Act,select with site locatedproducing at www.BosleyMedical.com a video, which it will (incorporating post on the “vanityrespect URLs,”to uses ofpersonalizing third-party trademarks.the URL that Under redirects the toFirst a plaintiff’sits registered YouTube, trademark),Facebook, and where other the social defendant “to particularAmendment, social non-commercial media account. speech For example, may be Janesubject Doe to put it mildly,media was channels, uncomplimentary in which real-life of the conBosley- Medi- mightgovernmental choose, for regulation her personal only Facebookif the regulation page, www.survives cal Institute”sumers13 and (not its paid hair actors) restoration are approached services, was not 2 facebook.com/janedoestrict constitutional scrutiny.; an automotive Commercial repair speech shop also called is infringingin becausepublic and the asked defendant to compare was not Company using the mark 3 Johnentitled Doe to Auto First Body Amendment Shop might protection, choose, forbut its the business regula- “in connectionA’s product with thewith sale a competing of goods or product services” where Facebooktion of commercial page, www.facebook.com/johndoeauto). speech is subject to a less rigorous53 the defendant’ssold by Companywebsite “contain[ed] B and to discuss no commercial their links 4 Businesseslevel of judicial would scrutiny. be well-advised to avoid claiming . . . offer reactionsfor sale any (in producthopes of or demonstrating service or contain that paid advertisementsCompany from A’s any product other iscommercial preferred). entity.” Com- 14 competitors’First Amendment trademarks protections as vanity andURLs. the Although favored treat the - However,pany businesses A approaches considering you for using counsel their prior competi - usement of ofcompetitor non-commercial trademarks speech in post-domainare reflected inpaths the factis 54 tors’ trademarksto beginning to critique production the competitors’ and asks for products tips and largelythat under untested the Lanham in court, Act such and usesrelated are case very law, likely it is to a be services onshould limiting note its that risk the of identityinfringing of thethe critictrade matters:- considereddefense to bothcommercial trademark in nature infringement and do notand appear trademark to be 55 the Bosleymarks holding of Company was based, B. inWhat large suggestions part, on the fact that susceptibledilution claims to available that the fair challenged use defenses. use of another’s Further, there the defendantcan you was offer not Company offering competing A? services to the wouldtrademark seem is to non-commercial. be a strong case Specifically,for consumer with confusion respect public (such that the defendant’s use of the Bosley Medical whereto trademark consumers infringement are accustomed claims, to it typingis a defense in the that name the Discussion: First, Company A must understand that mark could not have misled consumers into purchasing a ofuse an of individual another’s or mark business is not as “on a post-domainor in connection path with to posting the video in social media channels only (as op- competing product).15 reacha good the or social service.” media5 With page respect controlled to trademark by that individual dilution posed to, for example, posting it on Company A’s primary 56 orclaims, business.6 it is a In defense addition that to the (or usein lieu of another’s of) raising mark any is website or running it as a network television ad) will not Lanham“noncommercial.” Act claims7 that may be available, a trademark make the video a non-commercial use for purposes of owner typically need look no further than the platform trademark analysis. Company A should characterize its BROOKE ERDOS SINGER is a partner at Davis & Gilbert, LLP in New York, termsAlthough of use for there a venue is little for uniformityreporting alleged in judicial trademark ap- use as a nominative fair use in the context of comparative proaches to determining whether a use is non-commercial Secretary of the Section, and Chair of the Section’s Advertising Law infringements. Facebook, for example, established a advertising and look to comply with the strictures neces- for purposes of infringement, dilution, and First Amend- Committee. MAXINE SHARAVSKY is an associate at Davis & Gilbert. trademark dispute resolution process wherein trademark sary to qualify for such fair use protection.

24NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No. 1 NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No.17 4 1 Assuming the video will be accessible nationwide, it reviews by name, (ii) includes an image mayUsing not be clear Third to Company Parties’ A which jurisdiction’s Trademarks: law Unpackingof the brand’s primary logo, and (iii) would apply if Company B brought a trademark infringe- shows a picture of herself holding the mentCommerciality, claim, so Company A should Competition, assume that both and Confusionbeauty item in its original packaging. Are likelihood-of-confusionBy Brooke Erdos Singer factors andand the Maxine factors specificSharavsky to her uses of the beauty brands’ trademarks nominative fair use will apply and should consider its use permissible, assuming the Ninth Circuit’s of Company B’s marks from both a confusion perspec- New Kids factors apply to any nominative ment defenses,8 the following sections provide insight into tiveI. andIntroduction a nominative use perspective. Since the circuits use analysis? how courts draw the boundary between commercial and agreeDrawing that advertisers the line usingbetween a third permissible party’s trademarkand imper -in a non-commercial use in various contexts. nominativemissible uses manner of a third must party’s not use trademark more of the(whether third party’s in Discussion: Although Suzie is an individual presenting a competitive context or otherwise) is a matter of some commentary and criticism, her blog is commercial in na- mark than is necessary to identify the product or service, 1. Advertising Companycomplexity, A shouldinvolving consider consideration how it can of the limit bounds its use of of ture insofar as it promotes Suzie’s services as a makeup The use of a mark “in connection with a good or ser- CompanyFirst Amendment B’s marks protected while still speech, achieving the distinctions its intended be - artist. Therefore, Suzie is not subject to the heightened vice” does not require use of the mark in connection with purpose.tween commercial For example, and it non-commercial would be impossible use, defenses to reliably to protection afforded to non-commercial speech, but she offering a specific product or service: an advertisement’s illustrateinfringement for viewers and dilution a consumer that are drinking available from for apurposes bottle of may be able to characterize her uses of the brands’ marks general promotion of patronage or intent to enhance con- Companyof allowing B’s competition product without and critique, showing and, the of bottle, course, includ the - as nominative fair use. As an initial matter, to avoid sumer goodwill is likely to be found to constitute com- inglikelihood any word of consumermarks, logos, confusion or trade as dress to the embodied source or onen - “do[ing] [any]thing that would, in conjunction with the mercial use, as explained by the Seventh Circuit in Jordan ordorsement in it. (The of bottle goods should or services. be shown Further the waycomplicating it ordinarily the mark, suggest sponsorship or endorsement by the trade- v. Jewel Food Stores,61 Inc. 9 Time, Inc., the publisher of Sports appearsanalysis when is the distributedlack of consistency by Company in the B, treatment not altered of thesein mark holder,” Suzie ought to include easily visible, Illustrated magazine, published a commemorative issue anytopics manner.) from jurisdiction In contrast, to it jurisdiction.probably is not necessary for clear disclaimers on the blog explaining that she is not of the magazine devoted exclusively to Michael Jordan in Company A to approach customers inside Company B’s endorsed by or provided with other benefits by any of the This article sets forth a basic framework for consider- celebration of his induction into the NBA Hall of Fame. physical premises, thereby showing the used brands she reviews. Assuming no implication of sponsor- ing whether the use of a third party’s trademark is per- Jewel-Osco supermarket placed a full-page spread in the to outfit the Company B store. ship or endorsement, Suzie’s use of the brands’ names missible, with particular emphasis on uses in advertising constitutesmagazine congratulating classic nominative Jordan use on in his that induction the name (but of thenot andTo digital guard contexts. against confusionIt also presents as to somethe ownership hypothetical of brandadvertising is, practically any particular speaking, product “the oronly offer). word Jordan reasonably sued Companyexamples B’sto explore trademarks, the boundaries Company andA may potential want to pitfalls con- availableJewel-Osco to alleging,describe inter[the] aliaparticular, false endorsement thing.”62 Without under 1 siderassociated whether with it isuses practicable of third-party to include marks. a text disclaimer usingthe Lanham the brand Act. name,10 The districtreaders courtwill not held be that able the to usead was Su- in the video making clear that the Company B name and zie’sfully commentaryprotected noncommercial because they speech,will not but be ablethe Seventh to identify anyII. otherA Framework Company B formarks Use depicted of Third in theParties’ video are the whatCircuit she reversed, is reviewing. explaining The use that of “[a]n the packaging advertisement image, is no propertyTrademarks of Company B. althoughless ‘commercial’ less clear-cut because than it thepromotes use of brandthe name, awareness is also or arguablyloyalty rather necessary than explicitlyto identify proposing the product a transaction (thereby allow in a - A. Finally,Distinguishing but perhaps Between most importantly, Commercial Company and Non A- ingspecific readers product to identify or service.” it by appearance11 while shopping). Commercial Use should be sure that it can substantiate the claims made The appropriateness of Suzie’s use of the logos is more or impliedBoth the in theSupreme video. Court’s For example, First Amendment if 80 percent juris of the- questionable2. Gripe Sites than her use of the brand names and pack- individualsprudence and approached the Lanham in production Act afford a identify higher levelCompany of agingIn images, Bosley Medical as the applicableInstitute, Inc. product v. Kremer or service12 the Ninth would B’sprotection product to as non-commercial the favored product, speech Company than to commercial A should stillCircuit be “readilyheld that identifiable the defendant’s without maintenance use of the of[logo],” a gripe63 considerspeech, including,refraining infrom the postingcontext theof the ad. Lanham Likewise, Act, Com with- and,site located relatedly, at www.BosleyMedical.comSuzie has seemingly used (incorporating more of the mark the panyrespect A should to uses payof third-party close attention trademarks. to the nature Under of the the First thanplaintiff’s necessary registered to identify trademark), the product where or the service. defendant64 “to statementsAmendment, individuals non-commercial make about speech Company may be B’ssubject prod to- put it mildly, was uncomplimentary of the Bosley Medi- uctsgovernmental and refrain regulation from including only if any the statementsregulation survivesthat are cal Institute”Given that13 andin the its Ninth hair restoration Circuit the services, New Kids was test not untruestrict constitutional or likely to mislead scrutiny. viewers2 Commercial of the video speech (e.g., also a is “replacesinfringing the because multi-factor the defendant test that was the notNinth using Circuit the mark typi- 65 statemententitled to that First Company Amendment B’s product protection, tastes3 but more the regulasugary- cally“in connection employs to with determine the sale consumer of goods or confusion,” services” where the thantion thatof commercial of Company speech A, if isCompany subject to A’s a lessproduct rigorous in fact applicationthe defendant’s of the website New Kids “contain[ed] test in this no case commercial may result links containslevel of judiciala higher scrutiny. sugar concentration4 than that of Com- in. . .a offer determination for sale any that product there isor aservice likelihood or contain of confusion paid pany B). fromadvertisements a legal perspective from any where, other commercialfrom a practical entity.” perspec14 - First Amendment protections and the favored treat- tive,However, there businessesmay have been considering none. The using application their competi of the- ment ofExample non-commercial B: Suzie speech Smith isare a reflectedbeauty blog in the- fact Secondtors’ trademarks Circuit’s combinedto critique Polaroidthe competitors’ and nominative products use and that underger thewho Lanham reviews Act new and products related shecase finds law, it is a considerations,services should usingnote that the theordinarily identity applicable of the critic likelihood- matters: defensewhile to both shopping. trademark She infringement selects all of and the trademark of-confusionthe Bosley holding factors, was might based, have in largeresulted part, in on a differentthe fact that dilutionproducts claims that to reviewthe challenged without useinput of fromanother’s andthe defendant more permissive was not outcome offering regardingcompeting Suzie’s services use to of the the trademarkany is brands non-commercial. and is not sponsored Specifically, or with pro- respect brandpublic logos.(such that the defendant’s use of the Bosley Medical to trademarkvided infringementwith any free claims,products it isor a other defense that the mark could not have misled consumers into purchasing a use of another’sbenefits by mark any is brands. not “on The or inblog connection includes with Example C: In an attempt at search op- competing product).15 a good oran service.”“About Me”5 With tab respect that identifies to trademark Suzie dilution timization, AB Gaming purchases a key- claims,6as it ais traineda defense makeup that the artist use availableof another’s for mark is word for “XY Adventures,” the name of “noncommercial.”hire by appointment.7 On the blog, in ad- a competing video game enterprise. As a dition to sharing her views on various consequence of AB’s keyword purchase, BROOKE ERDOS SINGER is a partner at Davis & Gilbert, LLP in New York, Althoughaspects there of the is product,little uniformity including in thejudicial pric -ap- the first result arising from a Google Secretary of the Section, and Chair of the Section’s Advertising Law proachesing, to branding,determining size, whether and product a use is quality, non-commercial search for “XY Adventures” is a page Committee. MAXINE SHARAVSKY is an associate at Davis & Gilbert. for purposesshe (i) of identifies infringement, each of dilution, the brands and sheFirst Amend- entitled “What You Need to Know About

NYSBANYSBA Bright Bright IdeasIdeas | | SpringSpring 20172017 | | Vol.Vol. 2626 | | No.No. 11 25175 XY.” Visitors who click on the search mercial speech, is entitled to a significant degree—and Usingresult Thirdare taken to Parties’a web page controlled Trademarks: many Unpackingtypes—of protection from a trademark perspective; by ABC that compares its games to those businesses need not assume that they have no right to Commerciality,of XY, including discussing Competition, (accurately) andcriticize Confusion third-party products and services due solely to By Brookesome defectsErdos thatSinger have and been Maxinefound in Sharavsky the commercial nature of their critiques. However, given XY’s product software. The page is locat- the inconsistent law across jurisdictions as to when speech

ed at the URL www.abgames.com/why- is commercial and8 as to trademark defenses such as nomi- I. Introductionwe-win/, has the AB logo at the top, and nativement defenses, fair use, a the customized following consideration sections provide of facts insight and into a how courts draw the boundary between commercial and Drawingappears the in line the between color scheme permissible typical and of AB imper - detailed search for supporting cases involving comparable non-commercial use in various contexts. missibleproduct uses of branding.a third party’s The XYtrademark name is (whether used in facts is in order each time the use of a third party’s trade- a competitive context or otherwise) is a matter of some on the website solely to reference XY in marks1. Advertising is contemplated. complexity,comparing involving and consideration critiquing its ofproduct the bounds of- of The use of a mark “in connection with a good or ser- First Amendmentferings. No protected XY logos speech, or other the XY distinctions marks be- Endnotes vice” does not require use of the mark in connection with tween commercialare used on and the non-commercialwebsite in any manner. use, defenses Is to 1.offering This aarticle specific focuses product on use or of thirdservice: parties’ an trademarksadvertisement’s from a infringementAB’s keyword and dilution advertising that are useavailable of XY forAd -purposes U.S. law perspective. The analysis may differ for trademark uses general promotion of patronage or intent to enhance con- of allowingventures’ competition trademark and permissible?critique, and, of course, the outside the United States, including for advertisers undertaking likelihood of consumer confusion as to the source or en- sumerglobal goodwill campaigns is likely or those to targeted be found at non-U.S. to constitute jurisdictions. com- Discussion:dorsement of AB goods Games or services.is using the Further XY Adventures complicating the 2.mercial The use,government as explained must demonstrate by the Seventh a compelling Circuit state in interest Jordan in 9 trademarkanalysis is inthe two lack ways: of consistency (i) as a purchased in the treatment advertising of these v. Jewelregulating Food Stores, non-commercial Inc. Time, speech, Inc., and the the publisher regulation mustof Sports be keywordtopics from and jurisdiction (ii) on the ABto jurisdiction. website for purposes of com- Illustratednarrowly magazine, tailored to published achieve that ainterest. commemorative See, e.g., Citizens issue United paring AB to XY. That the nominative use of the XY mark of thev. magazineFEC, 558 U.S. devoted 310, 340 (2010); exclusively FEC v. Wis. to MichaelRight to Life, Jordan Inc., 551 in This article sets forth a basic framework for consider- U.S. 449, 464 (2007); Austin v. Michigan State Chamber of Commerce, on the AB website itself presents accurate critique and is celebration494 U.S. 652,of his 655 induction (1990); Boos intov. Barry the, 485 NBA U.S. Hall 312, 334of Fame.(1988) fairlying whether limited thein degree use of aand third unlikely party’s to trademark result in consumer is per- Jewel-Osco(plurality); supermarket First Nat’l Bank placed v. Bellotti a ,full-page 435 U.S. 765, spread 786 (1978); in the confusionmissible, withas to particularthe source emphasis of the website on uses is irrelevantin advertising to magazineBuckley congratulating v. Valeo, 424 U.S. 1, Jordan 44-45 (1976). on his induction (but not theand analysis digital contexts.of whether It alsothe usepresents of the some mark hypothetical in keyword 3.advertising See Bigelow any v. Virginiaparticular, 421 U.S.product 809, 818-26 or offer). (1975); Jordan Va. State sued Bd. advertisingexamples to presents explore athe likelihood boundaries of confusion and potential as to pitfalls the Jewel-Oscoof Pharmacy alleging, v. Va. Citizens inter Consumeralia, false Council, endorsement Inc., 425 U.S. under 748, 1 sourceassociated of the with website uses ofto third-partywhich the purchased marks. keyword is the Lanham758-70 (1976); Act. see10 Thealso Edenfield district v. court Fane, 507 held U.S. that 761, the 767 ad(1993) was fully(“The protected commercial noncommercial marketplace, like speech, other spheresbut the of Seventh our social linked. In Rescuecom, the Second Circuit stated that “[i]f and cultural life, provides a forum where ideas and information theII. searcherA Framework sees a different for Use brand of nameThird as Parties’ the top entry Circuitflourish. reversed, Some ofexplaining the ideas and that information “[a]n advertisement are vital, some of is no in responseTrademarks to the search for ‘Rescuecom,’ the searcher is less ‘commercial’slight worth. But because the general it promotesrule is that thebrand speaker awareness and the or likely to believe mistakenly that the different name which loyaltyaudience, rather not than the government,explicitly proposing assess the value a transaction of the information in a appearsA. Distinguishing is affiliated with Between the brand Commercial name sought and inNon the- specificpresented. product Thus, or even service.” a communication11 that does no more than Commercial Use propose a commercial transaction is entitled to the coverage of the search and will not suspect, because the fact is not ad- First Amendment.”). Both the Supreme Court’s First Amendment juris- 2. Gripe Sites equately signaled by [the] presentation [of the entry], that 4. The test, as articulated in Central Hudson Gas & Elec. Corp. v. Public 66 12 thisprudence is not theand most the Lanham relevant Act response afford toa higherthe search.” level of InServ. Bosley Comm’n Medical, 447 U.S. Institute, 557, 566 Inc.(1980), v. requires,Kremer with the respect Ninth to protection to non-commercial speech than to commercial Circuitspeech held that that is lawful the defendant’s and not misleading maintenance (a prerequisite of a togripe First speech, Thatincluding, concern in maythe context be all the of themore Lanham salient Act, if the with site locatedAmendment at www.BosleyMedical.com protection), that (i) the asserted (incorporating governmental the titlerespect of the to searchuses of result third-party bears, trademarks.in fact, the same Under name the the First plaintiff’sinterest registered is substantial; trademark), (ii) the regulation where directly the defendant advances such “to searcherAmendment, was looking non-commercial for: a result speech titled may “What be subjectYou Need to interest; and (iii) the regulation is not extensive than necessary to put itserve mildly, such wasinterest. uncomplimentary of the Bosley Medi- togovernmental Know About regulation XY” is unclear only asif the to itsregulation source and survives in no cal Institute”13 and its hair restoration services, was not way indicates that the source2 could be AB. Some consum- 5. 15 U.S.C. § 1125(a)(1) (defining trademark infringement as the strict constitutional scrutiny. Commercial speech also is infringinguse of another’s because mark the defendant“on or in connection was not with using any goodsthe mark or ers may assume that clicking on the result3 will lead them entitled to First Amendment protection, but the regula- “in connectionservices” in a with confusing the saleor misrepresentative of goods or services” manner). where to a website controlled by (and offering firsthand infor- tion of commercial speech is subject to a less rigorous 6.the defendant’sThe Lanham Act website defines “contain[ed] dilution as a claim no availablecommercial to the links 4 mationlevel of about) judicial XY. scrutiny. That the consumer would promptly . . . offerowners for of sale a famous any productmark against or serviceuses of a orsimilar contain mark paid that, discover her error once she reached the website does not advertisementsirrespective of from any likelihood any other of confusion,commercial is likely entity.” to impair14 First Amendment protections and the favored treat- resolve the issue; she has already, by the time of her dis- However,the distinctiveness businesses of considering the famous mark using (“dilution their bycompeti blurring”)- ment of non-commercial speech are reflected67 in the fact or harm the reputation of the famous mark (“dilution by covery, experienced initial interest confusion. AB Games tors’ trademarks to critique the competitors’ products and that under the Lanham Act and related case law, it is a tarnishment”). 15 U.S.C. § 1125(c)(1)-(2). should revise the title of its search result page such that services should note that the identity of the critic matters: defense to both trademark infringement and trademark 7. 15 U.S.C. § 1125(c)(3)(C). there is complete clarity as to the source of the page (e.g., the Bosley holding was based, in large part, on the fact that dilution claims that the challenged use of another’s “Welcome to AB Games” or “AB Games: How We Win”). 8.the defendantFurther complicating was not the offering commerciality competing analysis services is that the to the trademark is non-commercial. Specifically, with respect term “commercial” is used to represent multiple concepts in public (such that the defendant’s use of the Bosley Medical to trademark infringement claims, it is a defense that the overlapping bodies of law, including First Amendment case law, IV. Conclusion marktrademark could not non-infringement have misled caseconsumers law, trademark into purchasing dilution case a use of another’s mark is not “on or in connection with 15 5 competinglaw, and product). case law regarding the meaning of “use in commerce” a goodUse orof service.”a third party’s With trademarkrespect to trademark can be a powerful dilution for purpose of determining the limits of Congressional regulation. toolclaims, to allow6 it is aor defense enhance that a critique the use ofof aanother’s business markor its is For a detailed discussion of the multiple and conflicting ways products“noncommercial.” or services,7 whether from the perspective of the concept of commerciality is defined and used, see Jennifer E. a disgruntled consumer, a public informer, or a savvy Rothman, Commercial Speech, Commercial Use, and the Intellectual BROOKE ERDOS SINGER is a partner at Davis & Gilbert, LLP in New York, competitor.Although In particular,there is little businesses uniformity should in judicial take some ap- Quagmire, 101 Va. L. Rev. 1929 (2015). Secretary of the Section, and Chair of the Section’s Advertising Law comfortproaches in to the determining knowledge whether that commercial a use is non-commercial speech, not- 9. Jordan v. Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir. 2014). Committee. MAXINE SHARAVSKY is an associate at Davis & Gilbert. withstandingfor purposes ofits infringement,subsidiary position dilution, relative and First to non-com Amend-- 10. Id. at 511.

26NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No. 1 NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No.17 6 1 11. Id. at 518. 29. Int’l Stamp Art, Inc. v. United States Postal Serv., 456 F.3d 1270, 1274 (11th Cir. 2006); see also Kelly-Brown v. Winfrey, 717 F.3d 295, 312 12. Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005). Using Third Parties’ Trademarks: (2dUnpacking Cir. 2013). 13. Id. at 674. Commerciality, Competition, and30. New Confusion Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 14. Id. at 678. See also Lamparello v. Falwell, 420 F.3d 309 (4th Cir. (9th Cir. 1992). 2005) (rejecting a claim that the defendant’s use of the domain By Brooke Erdos Singer and Maxine Sharavsky 31. Claim substantiation, while important in all advertising, is name “fallwell.com” to operate a criticizing Reverend especially critical in the comparative advertising context, where Jerry Falwell constituted trademark infringement). Although the advertising is likely to draw the competitor’s attention. In such holding was ultimately based on an absence of likelihood ment defenses,8 the following sections provide insight into I. Introduction addition to the spectre of private claims under the Lanham Act of confusion rather than a determination that the use was not how and/orcourts its draw counterparts the boundary at the state between level, competitors commercial also could and commercial,Drawing the the linediscussion between of confusion permissible cited the and fact imper that the- site non-commercialraise claims with use the in National various Advertising contexts. Division of the Council missiblewas being uses used of a solely third to party’s criticize trademarkthe markholder, (whether not to capture in of Better Business Bureaus, and false advertising may be subject a competitivethe markholder’s context customers or otherwise) and profits. is Ida .matter at 317-18. of some 1. toAdvertising regulatory discipline by the Federal Trade Commission. 15.complexity, Bosley, 403 involving F.3d at 679-80. consideration Consumers also of maythe boundsbe able to of avail 32. New Kids, 971 F.2d at 308. Firstthemselves Amendment of non-trademark protected speech,protections the in distinctionsconnection with be - The use of a mark “in connection with a good or ser- tweentheir commercial public posting and of (non-libelous, non-commercial non-defamatory, use, defenses non- to 33.vice” Id does. not require use of the mark in connection with slanderous) gripe content. Consider, for instance, the Consumer infringement and dilution that are available for purposes 34.offering Int’l Info.a specific Sys. Sec. product Certification or service: Consortium, an Inc. advertisement’s v. Sec. Univ., LLC , Review Fairness Act of 2016 (15 U.S.C. § 45b), enacted in 2016 to general823 F.3dpromotion 153 (2d Cir. of 2016).patronage or intent to enhance con- of allowingprotect consumers’ competition ability and to “share critique, their and,honest of opinions course, about the a likelihoodbusiness’s of products, consumer services, confusion or conduct, as to in the any source forum, includingor en- 35.sumer The goodwill Second Circuit’s is likely Polaroid to be factors found are to (1) constitute strength of thecom senior- dorsementsocial media.” of goods Federal or Trade services. Commission, Further Consumer complicating Review the mercialuser’s use, trademark; as explained (2) similarity by the of Sevenththe marks; Circuit (3) proximity in Jordan of the products and their competitiveness9 with one another; (4) evidence analysisFairness is Act:the Whatlack Businessesof consistency Need to Knowin the (Feb. treatment 2017), https:// of these v. Jewel Food Stores, Inc. Time, Inc., the publisher of Sports www.ftc.gov/tips-advice/business-center/guidance/consumer- Illustratedthat the magazine, senior user maypublished “bridge thea commemorative gap” by developing issue a topicsreview-fairness-act-what-businesses-need-know from jurisdiction to jurisdiction. . Certain states product in market of the alleged infringer’s product; (5) evidence had similar bills prior to the enactment of the CRFA. See, e.g., Cal. of theof magazineactual confusion; devoted (6) evidence exclusively that the to imitative Michael mark Jordan was in Civ.This Code article § 1670.8. sets forth a basic framework for consider- celebrationadopted ofin badhis faith;induction (7) quality into of the the NBAdefendant’s Hall product;of Fame. and ing whether the use of a third party’s trademark is per- (8) sophistication of buyers in the relevant market. Polaroid Corp. 16. Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003). Jewel-Osco supermarket placed a full-page spread in the missible, with particular emphasis on uses in advertising magazinev. Polarad congratulating Elecs. Corp., 287 JordanF.2d 492, on495 his (2d inductionCir. 1961). (but not 17. Id. at 775. and digital contexts. It also presents some hypothetical 36.advertising The Second any Circuit particular acknowledged product that or certain offer). of Jordan the Polaroid sued 18.examples Id. to explore the boundaries and potential pitfalls Jewel-Oscofactors are alleging, “a bad fit” inter in the alia nominative, false endorsement use context. Int’l under Info. Sys., 823 F.3d at 168. 19.associated Some businesses with uses have of established third-party written marks. policies1 specifically the Lanham Act.10 The district court held that the ad was applicable to the development and distribution of fan content. 37.fully See protected also Century noncommercial 21 Real Estate Corp. speech, v. Lendingtree, but the Inc. Seventh, 425 F.3d That approach is particularly popular in the gaming industry. 211 (3d Cir. 2005), in which the Third Circuit treated nominative II. See,A e.g.,Framework Epic Games’ policyfor Use (https://www.epicgames.com/ of Third Parties’ Circuitfair reversed,use as an affirmative explaining defense, that applicable“[a]n advertisement only after a plaintiff is no about/fan-art-policy/);Trademarks Dungeons & Dragons policy (http:// less ‘commercial’proves a likelihood because of confusion, it promotes and articulated brand awarenessits own test with or dnd.wizards.com/articles/features/fan-site-kit); Habbo policy loyaltyfactors rather derived than from explicitly the New Kidsproposing test. Id. at a 222. transaction For a more in in- a A. (https://help.habbo.com/hc/en-us/articles/221643408-Habbo-Distinguishing Between Commercial and Non- specificdepth product discussion or ofservice.” the Second11 Circuit’s analysis of nominative Fansite-Policy).Commercial Use fair use, see Jonathan Bloom and Jessica Falk, Second Circuit Weighs in on Nominative Fair Use, Certification Marks, Bright Ideas, Fall 20. For example, the FTC treats social media content as commercial 2. Gripe Sites Both the Supreme Court’s First Amendment juris- 2016, Vol. 25, No. 2, at 30-33. content in the context of endorsements and social influencer 12 prudencespeech, andwhere the a lack Lanham of transparency Act afford can aresult higher in consumer level of 38. InInt’l Bosley Info. Sys. Medical, 823 F.3d Institute, 153, cert. Inc. denied v. ,Kremer 2017 U.S. LEXISthe Ninth 521 (U.S. protectionconfusion to as non-commercial to the independence speech of the speaker than to on commercial a particular CircuitJan held9, 2017). that the defendant’s maintenance of a gripe See e.g., In the Matter of Lord & Taylor, LLC speech,product including, or service. in the, context of the Lanham Act, with 39.site locatedMost jurisdictions at www.BosleyMedical.com have established likelihood-of-confusion (incorporating the respect(FTC to 2016) uses (treating of third-party content posted trademarks. by Lord & UnderTaylor-sponsored the First plaintiff’sfactors registeredanalogous to trademark), the Second Circuit’s where Polaroid the defendant factors. See, “to e.g. , inter alia Amendment,influencers on,non-commercial , Instagram speech as commercial may be content subject subject to put itInterpace mildly, Corp. was v. uncomplimentaryLapp, Inc., 721 F.2d 460, of 463 the (3d Bosley Cir. 1983); Medi AMF,- to regulation); In the Matter of Warner Bros. Home Entertainment, Inc. v. Sleekcraft13 Boats, 599 F.2d 341, 348-49 (9th Cir. 1979); Helene governmentalInc. regulation only if the regulation survives cal Institute” and its hair restoration services, was not (FTC 2016) (treating influencer postings on YouTube as Curtis Indus. v. Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir. strictcommercial constitutional content scrutiny. subject to 2regulation). Commercial speech also is infringing because the defendant was not using the mark 3 1977). 21.entitled 15 U.S.C. to First § 1115(b)(4). Amendment protection, but the regula- “in connection with the sale of goods or services” where tion of commercial speech is subject to a less rigorous 40. Note also that the Second Circuit made clear that “confusion” 22. Sorensen v. WD-40 Co., Case No. 14-3067 (7th Cir. June 11, 2015). the defendant’sanalysis applies website not only “contain[ed] with respect to no the commercialsource of goods, links but 4 level of judicial scrutiny. . . . offeralso withfor salerespect any to productsponsorship, or affiliationservice or or containconnection paid between 23. Id. advertisementsthe parties. Int’l from Info. any Sys., other 823 F.3d commercial at 161. entity.”14 24. DessertFirst Amendment Beauty, Inc. v. Fox protections, 568 F. Supp. and 2d 416 the (S.D.N.Y. favored 2008) treat - 41.However, 15 U.S.C. businesses § 1125(c)(3)(A). considering using their competi- ment(stating of non-commercial that the defendant speech “did not are use reflected ‘love potion’ in asthe a fact tors’ trademarks to critique the competitors’ products and thattrademark under the because Lanham the source Act and of its related fragrance case products law, itwas is nota 42. 15 U.S.C. § 1125(c)(3)(A)(i)-(ii). id. services should note that the identity of the critic matters: defenseidentified to both by that trademark term” ( atinfringement 424) and that the and words trademark were 43. See, e.g., Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. instead used “to describe the effects that the products may have the Bosley holding was based, in large part, on the fact that dilution claims that the challenged use of another’s 1994) (defendant’s use of a modified form of the famous “leaping [when] worn by the wearer” (id. at 425). the defendant was not offering competing services to the trademark is non-commercial. Specifically, with respect deer” trademark of Deere and Company constituted dilution of a 25. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. publicfamous (such mark). that the defendant’s use of the Bosley Medical to trademark infringement claims, it is a defense that the 111 (2004). 44.mark 15 could U.S.C. not§ 1125(c)(3)(B). have misled There consumers is no explicit into statutory purchasing news a 26.use Idof. atanother’s 114. mark is not “on or in connection with reporting defense to15 trademark infringement claims, but most 5 competing product). a good or service.” With respect to trademark dilution news reporting and commentary is, by its nature, likely to be 27. The Supreme Court remanded the case for further proceedings 6 subject to a nominative use defense. claims,on the it issue is a ofdefense confusion, that specifically, the use of whether another’s a cosmetics mark is 7 “noncommercial.”seller’s use of the term “microcolor” was likely to result in 45. See BidZirk, LLC v. Smith, No. 6:06 709-HMH, 2007 U.S. Dist. consumer confusion with a competitor’s incontestable trademark LEXIS 78481 (D.S.C. Oct. 22, 2007) (holding that an article titled registrationAlthough forthere MICRO is little COLORS). uniformity Id. at 124. in judicial ap- BROOKE“Special ERDOS Report:SINGER isYou a partner Gotta Be at Berserk Davis & to Gilbert, Use an LLP eBay in ListingNew York, SecretaryCompany! of the Section,The Whole and Story,” Chair depictingof the Section’s BidZirk’s Advertising trademark Law and 28.proaches 15 U.S.C. to §determining 1115(b)(4). whether a use is non-commercial for purposes of infringement, dilution, and First Amend- Committee.relating M theAXINE author’s SHARAVSKY experience is an associate utilizing atan DaviseBay listing& Gilbert. company

NYSBANYSBA Bright Bright IdeasIdeas | | SpringSpring 20172017 | | Vol.Vol. 2626 | | No.No. 11 27177 such as BidZirk, qualified for a news reporting defense under 15 55. Contrast Bosley, 403 F.3d at 679, where the holding was based on U.S.C. § 1125(c)(3)(B)). the non-commercial nature of the use and that the defendant was Using Third Parties’ Trademarks: notUnpacking offering competing services to the public. 46. Id. at *17-18. 56. See Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 47.Commerciality, 15 U.S.C. § 1125(c)(3)(A)(ii). Competition, and Confusion 1036, 1062 (9th Cir. 1999) (explaining that initial interest confusion 48.By BrookeSee, e.g., Mattel, Erdos Inc. v. SingerMCA Records and, 296 Maxine F.3d 894 (9th Sharavsky Cir. 2002); online, even if later corrected, can damage a plaintiff trademark Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d owner because web surfers who navigate to the defendant’s site 252, 260 (4th Cir. 2007); People for the Ethical Treatment of Animals by mistake may not bother to course-correct). v. Doughney, 263 F.3d 359 (4th Cir. 2001); Jordache Enters. v. Hogg ment defenses,8 the following sections provide insight into I. Introduction 57. See Facebook’s trademark report form at https://www.facebook. Wyld, Ltd., 828 F.2d 1482 (10th Cir. 1987). Drawing the line between permissible and imper- how com/help/contact/284186058405647.courts draw the boundary between commercial and 49. People for the Ethical Treatment of Animals, 263 F.3d at 366 (internal non-commercial use in various contexts. missible uses of a third party’s trademark (whether in 58. See Twitter’s trademark report form at https://support.twitter. quotations and citation omitted). a competitive context or otherwise) is a matter of some com/forms/trademark. 50. Louis Vuitton, 507 F.3d at 261. 1. Advertising complexity, involving consideration of the bounds of 59. Kyle S. Richardson, The Content Corner: How to Leverage User- 51.First See Amendment Rescuecom Corp. protected v. Google, Inc.speech,, 562 F.3d the 123, distinctions 127 (2d Cir. be2009);- TheGenerated use ofContent a mark to Resonate “in connection With Your Audience with a, U.S.good Technology or ser- tweenNetwork commercial Automation, and Inc. non-commercial v. Advanced Sys. Concepts, use, defenses Inc., 638 F.3d to vice”Transformation does not require Service—DigitalGov use of the mark (July in 11, connection 2016), https:// with 1137, 1145 (9th Cir. 2011). offeringwww.digitalgov.gov/2016/07/11/how-to-leverage-user- a specific product or service: an advertisement’s infringement and dilution that are available for purposes generated-content-to-resonate-with-your-audience/. 52.of allowingSee Rescuecom competition, 562 F.3d at and 130 (“[A] critique, defendant and, must of course, do more the than general promotion of patronage or intent to enhance con- use another’s mark in commerce to violate the Lanham Act. The 60.sumer See goodwill Stevo Design, is Inc.likely v. SBR to Mktg.be found, 968 F. to Supp. constitute 2d 1082 com(D. Nev.- likelihoodgist of a ofLanham consumer Act violation confusion is an unauthorized as to the source use, which or en - 2013). dorsement‘is likely toof causegoods confusion…as or services. to Furtherthe origin, complicating sponsorship, or the mercial use, as explained by the Seventh Circuit in Jordan 61. New Kids, 971 F.2d at 308.9 analysisapproval is the of . lack. . goods of consistency[or] services.’”). in the treatment of these v. Jewel Food Stores, Inc. Time, Inc., the publisher of Sports 62. Id. 53.topics Google+, from LinkedIn,jurisdiction Twitter, to jurisdiction. Pinterest, and Instagram also Illustrated magazine, published a commemorative issue provide for the selection of personalized URLs. See, e.g., Ericka 63.of theId .magazine devoted exclusively to Michael Jordan in How to Claim Vanity URLs for Your Social Media Accounts Lewis,This article sets forth a basic framework for consider, - 64.celebration Id. of his induction into the NBA Hall of Fame. ing whetherAdhere Creative the use (Sept. of a15, third 2015), party’s https://www.adherecreative. trademark is per- Jewel-Osco supermarket placed a full-page spread in the 65. Int’l Info. Sys., 823 F.3d at 166. missible,com/blog/bid/187942/How-To-Claim-Vanity-URLs-For-Your- with particular emphasis on uses in advertising Social-Media-Accounts. magazine congratulating Jordan on his induction (but not and digital contexts. It also presents some hypothetical 66.advertising Rescuecom any, 562 particular F.3d at 131. product or offer). Jordan sued 54.examples In 2009, to Major explore League the Baseball boundaries manager and Tony potential La Russa suedpitfalls 67. See Brookfield Commc’ns, 174 F.3d at 1062 (explaining that web Twitter and the holder of an account that used La Russa’s name Jewel-Osco alleging, inter alia, false endorsement under associated with uses of third-party marks.1 surfers who navigate10 to the defendant’s site by mistake will find a in its post-domain path, i.e., twitter.com/TonyLaRussa). La Russa the Lanhamproduct offering Act. similarThe district enough court to plaintiff’s held that“such the that ad a sizeable was v. Twitter, Inc. and Does 1-25, Case No. CGC-09.488101 (Cal. Super. fullynumber protected of consumers noncommercial who were speech,originally but looking the forSeventh [plaintiff]’s II. Ct.A filed Framework May 6, 2009). for The Usecase ultimately of Third settled, Parties’ however, Circuitproduct reversed, will simply explaining decide to that utilize “[a]n [defendant’s] advertisement offerings is no without a ruiling on the merits. http://www.dmlp.org/sites/ less ‘commercial’instead.”). because it promotes brand awareness or citmedialaw.org/files/2009-06-26-La%20Russa%20Notice%20Trademarks of%20Voluntary%20Dismissal.pdf. loyalty rather than explicitly proposing a transaction in a A. Distinguishing Between Commercial and Non- specific product or service.”11 Commercial Use Both the Supreme Court’s First Amendment juris- 2. Gripe Sites prudence and the Lanham Act afford a higher level of In Bosley Medical Institute, Inc. v. Kremer12 the Ninth protection to non-commercial speech than to commercial Circuit held that the defendant’s maintenance of a gripe speech, including, in the context of the Lanham Act, with site located at www.BosleyMedical.com (incorporating the respect to uses of third-party trademarks. Under the First plaintiff’s registered trademark), where the defendant “to Amendment, non-commercial speech may be subject to put it mildly, was uncomplimentary of the Bosley Medi- governmental regulation only if the regulation survives cal Institute”13 and its hair restoration services, was not strict constitutional scrutiny.2 Commercial speech also is infringing because the defendant was not using the mark entitledABOUT to FirstTHE AUTHORSAmendment protection,3 but the regula- “in connection with the sale of goods or services” where tion of commercial speech is subjectA fitting to a lessand rigorouslasting tribute to athe deceased defendant’s lawyer website or loved “contain[ed] one can no be commercial made links Brooke Erdos4 Singer is a partner in the Intellectual Maxine Sharavsky is an associate in the Intellectual level of judicial scrutiny. through a memorial contribution. . .to offer The for New sale Yorkany product Bar Foundation… or service or contain paid Property and Advertising, Marketing & Promotions advertisementsProperty from and any Advertising, other commercial Marketing &entity.” Promotions14 First Amendment protections and the favored treat- Practice Groups. She may be reached at However, businessesPractice Groups. considering She may using be reached their atcompeti - ment of non-commercial speech are reflected in the fact 212.468.4940 or [email protected]. tors’ trademarks212.468.4845 to critique or [email protected]. the competitors’ products and that under the Lanham Act and related case law, it is a services should note that the identity of the critic matters: defenseThis to both meaningful trademark gesture infringement on the part and of trademarkfriends and associates will be appreciated by the family of the deceased. the Bosley holding was based, in large part, on the fact that dilutionThe claims family that will the be challenged notified that use a ofcontribution another’s has been made and by whom, although the contribution amount the defendant was not offering competing services to the trademarkwill isnot non-commercial. be specified. Specifically, with respect public (such that the defendant’s use of the Bosley Medical to trademark infringement claims, it is a defense that the Memorial contributions are listed in the Foundation Memorialmark could Book notat the have New misled York consumers Bar Center into in Albany. purchasing a use of another’s mark is not “on or in connection with Inscribed bronze plaques are also available to be displayedcompeting in the distinguished product).15 Memorial Hall. a good or service.”5 With respect to trademark dilution claims,6 it is a defense that the use of another’s mark is “noncommercial.”7

BROOKE ERDOS SINGER is a partner at Davis & Gilbert, LLP in New York, AlthoughTo make there your is contribution little uniformity call The in judicial Foundation ap- at proaches to determining whether a use is non-commercial Secretary of the Section, and Chair of the Section’s Advertising Law (518) 487-5650 or visit our website at www.tnybf.org Lawyers caring. Lawyers sharing. for purposes of infringement, dilution, and First Amend- Committee. MAXINE SHARAVSKYAround the is anCorner associate and Around at Davis the & State. Gilbert.

28NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No. 1 NYSBA Bright Ideas | Spring 2017 | Vol. 26 | No.17 8 1