Recommended Reading: Professors Farley and Ramsey: "Raising the Threshold for Trademark Infringement to Protect Free Expression"

Professor Christine Haight Farley of American University - Washington College of Law, and Professor Lisa P. Ramsey of the University of San Diego School of Law have just published an article on a very timely topic: "Raising the Threshold for Trademark Infringement to Protect Free Expression," 72 American University Law Review 1179 (2023). [Download pdf here]

Abstract

The First Amendment right to free speech limits the scope of rights in trademark law. Congress and the courts have devised various defenses and common law doctrines to ensure that protected speech is exempted from trademark infringement liability. These defensive trademark doctrines, however, are narrow and often vary by jurisdiction. One current example is the speech-protective test first articulated by the Second Circuit in Rogers v. Grimaldi, expanded by the Ninth Circuit, and recently restricted by the Supreme Court in Jack Daniel’s Properties v. VIP Products to uses of another’s mark within an expressive work that do not designate the source of the accused infringer’s products. The Rogers test prevents a finding of infringement if this use is artistically relevant to the underlying work and does not explicitly mislead consumers as to the source or content of the work. This categorical rule has definite advantages over the multi-factor likelihood of confusion test in trademark disputes involving expressive works, but—like other speech-protective doctrines—this test has limitations and shortcomings.

This Article therefore proposes an alternative test for protecting First Amendment interests in trademark law that better balances the public interest in avoiding consumer confusion against the public interest in free expression. This proposed broad trademark fair use test 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. If this threshold requirement is satisfied, this use is not infringing 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 a reasonable person 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 early in a lawsuit.

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TTABlogger comment: Also recommended: Lisa Ramsey's recent guest blog post, "Resolving Conflicts Between Trademark and Free Speech Rights After Jack Daniel’s v. VIP Products," on Professor Eric Goldmans' blog (here)

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Text Copyright John L. Welch 2023.