PIJIP Faculty Director Christine Haight Farley has authored a paper with University of San Diego Law Professor Lisa P. Ramsey, which has been published by the American University Law Review.  The paper examines the tension between trademark protection and freedom of expression, and proposes a trademark fair use defense. 

Click here for an early draft of the paper.

Abstract

The First Amendment right to free speech limits the scope of rights in trademark law. This Article discusses different types of thresholds in trademark infringement disputes: the threshold requirement for application of a speech-protective trademark test and, if that test applies, the higher threshold that must be satisfied by a trademark owner to prevail on an infringement claim. The Ninth Circuit’s version of the Rogers test is such an interpretation of the "likely to cause confusion" requirement in the infringement statutes that has definite advantages over the multi-factor likelihood of confusion test in trademark disputes involving expressive works. However, this Article proposes that Congress or the Supreme Court adopt an alternative test for protecting First Amendment interests in trademark law with a broader gateway requirement and a more clear standard for infringement that is directly tied to the statute's text.

Our proposed trademark fair use defense would apply to any informational or expressive use of words, names, or symbols claimed by another as a mark in connection with any goods or services, and not solely to use of that mark in part of an expressive work or in connection with the sale of certain types of products. If this threshold requirement of our test is satisfied, this use of the mark should be presumptively a fair use unless the accused infringer’s expression is (1) a false statement about its products (including false claims of sponsorship, endorsement, or approval) or (2) is likely to mislead reasonable persons about the source of the goods, services, or message. This more holistic approach to protecting speech interests in the trademark enforcement context should increase clarity and predictability in trademark law, and will enable courts to dispose of speech-harmful claims as a matter of law on a motion to dismiss or summary judgment motion. Our two-prong test avoids consideration of the “artistic relevance” of this use of the plaintiff’s mark, is more clear than the term “explicitly misleading” in the Rogers test, and contains an infringement standard that incorporates the text of the Lanham Act. It arguably does a better job balancing the public interest in avoiding consumer confusion against the public interest in free expression than the Rogers test or a speech-protective contextual analysis of the numerous likelihood of confusion factors in trademark disputes that implicate the First Amendment.

Citation

Farley, Christine Haight and Ramsey, Lisa P., Raising the Threshold for Trademark Infringement to Protect Free Expression (March 22, 2023). American University Law Review, Vol. 73, 2023