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Rethinking Trademark Fair Use View metadata, citation and similar papers at core.ac.uk brought to you by CORE provided by University of Minnesota Law School Scholarship Repository University of Minnesota Law School Articles Faculty Scholarship 2008 Rethinking Trademark Fair Use William McGeveran University of Minnesota Law School, [email protected] Follow this and additional works at: https://scholarship.law.umn.edu/faculty_articles Part of the Law Commons Recommended Citation William McGeveran, Rethinking Trademark Fair Use, 94 IOWA L. REV. 49 (2008), available at https://scholarship.law.umn.edu/faculty_articles/610. This Article is brought to you for free and open access by the University of Minnesota Law School. It has been accepted for inclusion in the Faculty Scholarship collection by an authorized administrator of the Scholarship Repository. For more information, please contact [email protected]. MCGEVERAN_FINAL 1/11/2009 1:56 PM Rethinking Trademark Fair Use William McGeveran ABSTRACT: The ever-expanding scope and strength of trademark rights has caused justifiable fears of a threat to free expression. In response, concerned scholars generally focus on perfecting the substance of legal rules that balance free speech against other goals. This effort is misplaced because most cases raising these issues in recent years ended in judicial decisions that favored speech. The real danger arises from the procedural structure of trademark law’s various “fair use” doctrines, which generate excessive ambiguity and prolong litigation before ever reaching such positive outcomes. Resulting administrative costs discourage speakers from using trademarks expressively in the first place, creating a classic chilling effect. This Article analyzes problems with trademark fair use comprehensively and recommends pragmatic reform. Instead of adding more bells and whistles to already complex law, we should craft simpler affirmative defenses that reduce uncertainty and allow for quick adjudication. I. INTRODUCTION ......................................................................................... 51 II. THE TROUBLE WITH TRADEMARK FAIR USE ............................................. 54 A. DEFINING EXPRESSIVE USES AND FAIR USES ........................................... 54 B. INCREASING CONFLICT OVER EXPRESSIVE USES ..................................... 56 C. THE GOOD NEWS: CORRECT OUTCOMES ............................................... 59 D. THE BAD NEWS: A CHILLING EFFECT ................................................... 61 Associate Professor, University of Minnesota Law School. I am grateful for comments and assistance from many colleagues, particularly Barton Beebe, Dan Burk, Guy Charles, Tom Cotter, Stacey Dogan, Terry Fisher, Brett Frischmann, Deborah Gerhardt, Eric Goldman, Mike Grynberg, Laura Heymann, Mark Janis, Sonia Katyal, Mark McKenna, Ruth Okediji, Sean Pager, Lisa Ramsey, Wendy Seltzer, and Jessica Silbey. Portions of the Article were presented at the University of Minnesota Law School’s National Trademark Roundtable; at a symposium sponsored by the Fordham Intellectual Property, Media, and Entertainment Law Journal; and at the Fifth Annual Works in Progress in Intellectual Property Colloquium at American University. Early work on this Article was supported by a fellowship at the Berkman Center for Internet and Society at Harvard Law School. I am indebted to able research assistance from law students L. Ashley Aull (Harvard) and David Biggs, David Couillard, and Jennifer Cross (Minnesota). 49 MCGEVERAN_FINAL 1/11/2009 1:56 PM 50 94 IOWA LAW REVIEW [2008] III. THE TROUBLE WITH LIKELIHOOD OF CONFUSION ................................... 66 A. THE VAGUE AND TIME-CONSUMING TEST ............................................. 66 B. THE POOR FIT BETWEEN NORMATIVE VALUES ...................................... 71 IV. EXISTING DOCTRINES ............................................................................... 77 A. TRADEMARK USE THEORY ................................................................... 77 B. DESCRIPTIVE OR “CLASSIC” FAIR USE UNDER SECTION 33(B)(4) ............. 82 C. NOMINATIVE FAIR USE ........................................................................ 88 D. FIRST AMENDMENT BALANCING ........................................................... 97 E. CATEGORICAL STATUTORY EXEMPTIONS ............................................ 104 V. RETHINKING TRADEMARK FAIR USE ........................................................ 109 A. SOME LESSONS FROM THE FAILURE OF CURRENT LAW ......................... 110 1. Distinctions Without Differences ........................................... 110 2. The Gravitational Pull of Likelihood of Confusion .............. 112 3. Enforcement Costs .................................................................. 113 B. SAFE HARBORS FOR TRADEMARK FAIR USE ......................................... 115 C. OTHER PROCEDURAL MECHANISMS ................................................... 122 VI. CONCLUSION .......................................................................................... 124 MCGEVERAN_FINAL 1/11/2009 1:56 PM RETHINKING TRADEMARK FAIR USE 51 I. INTRODUCTION Trademark rights have expanded dramatically over time from consumer-oriented safeguards against the diversion of customers to comprehensive protectors of brand identity.1 Many observers warn that this increased scope of trademark protection threatens free speech, including both dissemination of useful commercial information and discussion, critique, or parody about famous brands and the culture they embody.2 Yet final decisions in trademark cases that raised legitimate free speech issues over the last decade or so usually favor defendants who use trademarks for purposes of expression.3 Courts ultimately get these cases right under existing law. The principal problems lie not in the eventual judicial outcome, but in the process leading up to that outcome. First, doctrines to accommodate free speech values that may arise in trademark cases are overlapping, confusing, volatile, and cumbersome. One prominent trademark practitioner dubs the ungainly collection of doctrines “Frankenlaw.”4 Even if the result favors speech, it can be impossible to predict in advance which of a half dozen standards a court might apply. Second, these doctrines frequently center on complex fact-intensive analyses that require significant time and money to resolve. In particular, trademark fair use frequently devolves into a clumsy alternate means of asking the fundamental question of trademark law: whether a defendant’s use of a plaintiff’s mark is likely to confuse consumers about the source or affiliation of the respective parties’ 1. Mark P. McKenna, The Normative Foundations of Trademark Law, 82 NOTRE DAME L. REV. 1839, 1916 (2007) [hereinafter McKenna, Normative Foundations] (“Succinctly stated, modern trademark law is industrial policy intended to protect brand value.”). McKenna’s article offers an interesting and unorthodox historical account of this transformation, arguing that trademark law always emphasizes protection of producers and merchants from diversion of customers, not protection of consumers from marketplace confusion. See id. at 1849–73. 2. For some of the best classic discussions of the overall phenomenon of trademark expansion and its potentially harmful consequences for speech, see generally, e.g., Robert C. Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols, 1982 WIS. L. REV. 158; Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 NOTRE DAME L. REV. 397 (1990); Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. REV. 960 (1993); Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 YALE L.J. 1687 (1999); Jessica Litman, Breakfast with Batman: The Public Interest in the Advertising Age, 108 YALE L.J. 1717 (1999). For related books on this theme that are aimed at the general audience rather than scholars and specialists, see generally DAVID BOLLIER, BRAND NAME BULLIES: THE QUEST TO OWN AND CONTROL CULTURE (2005); KEMBREW MCLEOD, FREEDOM OF EXPRESSION®: OVERZEALOUS COPYRIGHT BOZOS AND OTHER ENEMIES OF CREATIVITY (2005). 3. For this Article’s definition of “expressive uses,” see infra Part II.A. For more on the recent trend in published cases in favor of expressive uses, see infra Part II.C. 4. Jonathan Moskin, Frankenlaw: The Supreme Court’s Fair and Balanced Look at Fair Use, 95 TRADEMARK REP. 848, 875 (2005). MCGEVERAN_FINAL 1/11/2009 1:56 PM 52 94 IOWA LAW REVIEW [2008] products. Discussion of trademark doctrine often overlooks the procedural or administrative costs resulting from such involved inquiries.5 The lethal combination of uncertain standards with lengthy and costly litigation creates a classic chilling effect upon the unlicensed use of trademarks to facilitate speech, even when such uses are perfectly lawful.6 This effect undoubtedly occurs, though admittedly it is difficult to measure because it occurs far away from the courthouse, through practices that never find their way into any casebook.7 Markholders policing their portfolios send cease-and-desist letters attacking virtually any unlicensed use of their trademarks.8 From television networks to insurance companies, risk-averse institutional gatekeepers demand expansive rights clearance. Lawyers counsel clients to avoid the trouble of a potential lawsuit. In response to this array of powerful entities, speakers either avoid unlicensed
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