Using the Trademarks of Others

An important question for bloggers, citizen media creators, and other online publishers is whether trademark law limits their ability to engage in reporting, commentary, criticism, and other forms of political, social, and artistic expression. There is a threat, should trademark law become too robust, that companies and other trademark holders might use it to silence commentary, criticism, and unfavorable reporting. Such a "right to control language" would offend the First Amendment and seriously undermine the quality of public debate on issues of fundamental importance. The good news is that courts have consistently protected the public's right to use the trademarks of others in order to engage in criticism, commentary, news reporting and other forms of noncommercial expression. As long as what you're doing is really commentary, criticism, or reporting (etc.), and not a surreptitious attempt to sell goods or services, or to deceptively attract customers or readers you otherwise would not have had, you should be able to defeat a trademark claim brought against you. The bad news is that the law relating to this intersection of trademark law and free expression is complex and confusing. Neither Congress nor the courts have developed a simple and clear rule that protects your rights to use the trademarks of others for free speech purposes; instead they've developed a complex array of defenses to trademark claims that even lawyers find difficult to untangle. This makes it hard for a defendant to get a trademark lawsuit dismissed quickly with little expense, and it leaves bloggers and citizen media creators vulnerable to intimidation through the unscrupulous use of cease-and-desist letters. (The ideas here are based on William McGeveran's excellent article, Four Free Speech Goals for Trademark Law.)

The following sections briefly explain the legal protections available to you and apply them to some of the common situations you might face in the course of your online activities.

How Trademark Law Protects Your Right to Free Expression

As discussed in detail in What Trademark Covers, the main purpose of trademark law is to avoid consumer confusion, and the fundamental question in any trademark infringement lawsuit is whether the defendant's use of a trademark creates a likelihood of confusion between the defendant's goods or services and the plaintiff's. Therefore, an obvious first line of defense in any trademark infringement lawsuit is that there is no likelihood of confusion. As a general matter, if you are reporting on, commenting on, or criticizing a trademark owner, most ordinary consumers will not be confused about whether the company or organization is the source or sponsor of your work. You can reduce the likelihood of confusion further by avoiding a website design that looks like the trademark owner's site or resembles its product packaging, and you should never festoon your website with a company's logo (but isolated use when relevant to a discussion is OK). You might also place a disclaimer on your site saying that you are not affiliated with the company in question and providing a link to its official site, but this usually isn't necessary unless you operate a gripe site or fan site focusing on the trademark owner. (If you are just writing a post about Company X, there is no need provide a disclaimer just because you use the words "Company X.")

If someone threatens you with a lawsuit or sues you for trademark dilution, then a lack of consumer confusion will not help you. Here, one obvious line of defense is to argue that there is no likelihood of dilution. Federal and state dilution law protects a trademark owner against the whittling away of the distinctiveness of its famous trademark by association with other goods or services; it does not give a trademark owner the right to shut down all unflattering speech about it. If you do not associate a famous trademark with your own goods or services, then there can be no dilution (or at least that's how your argument goes). A court might agree that, by definition, using a trademark for purely expressive purposes (e.g., criticism, commentary, reporting, parody) is not a use in connection with a good or service and thus cannot cause dilution. Your argument on this point is especially strong if you do not host advertisements on your website and do not link to other websites selling goods or services (especially to your own commercial websites). But you might win this point even if you sell advertising, so long as you use the trademark in criticism, commentary, reporting, or other purely expressive activities, and not in advertising or other promotion of your site. This argument overlaps with one of the defenses discussed below -- noncommercial use.

In addition to these general arguments against infringement and dilution, there are a host of other free expression defenses to a trademark claim. This is where the legal terrain gets complicated and the terminology gets a bit arcane. If the explanations below make your eyes glaze over, feel free to skip down to the next section, Some Free Expression Uses of Trademarks, where we explain how these defenses work in practical situations. The important free expression defenses are as follows:

  • Descriptive Fair Use: Found at 15 U.S.C. § 1115(b)(4), the descriptive fair use defense protects your ability to use ordinary words to describe your own goods or services, even if those words happen to be part of someone's trademark. It also protects the use of your own name in connection with your business or other activities. In KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), the U.S. Supreme Court made clear that this defense applies to bar liability even if some consumer confusion results. Examples of descriptive fair use include using the term "sweet-tart" to describe a cranberry drink despite a candy company's "SweeTarts" trademark for candy; and using the domain name samadamsformayor.com despite a beer company's "Sam Adams" trademark for beer (see our database entry). In another interesting case from our legal threats database, Andrew Oh-Willeke of the Wash Park Prophet blog used the expression "Mr. Trademark" to make fun of a man who files a lot of questionable trademark lawsuits. A few days later, the vice-president of a trademark search firm called "Mr. Trademark ®" wrote Oh-Willeke to complain about the blog's use of his company's trademark. Mr. Oh-Willeke correctly stood his ground, arguing that he was not using the words "Mr. Trademark" to sell goods or services, but to describe an individual unrelated to Mr. Trademark ®. Because Oh-Willeke was not referring to his own goods or services but to a third party, this case presents a slight variation on the usual case of descriptive fair use, but the underlying reason for prohibiting liability still applies.
  • Nominative Fair Use: The nominative fair use defense protects your ability to use a trademark to refer to a trademark owner or its goods or services for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising. Courts impose three requirements on defendants who want to take advantage of the nominative fair use defense: (1) the trademark owner, product, or service in question must not be readily identifiable without use of the trademark; (2) the defendant must use only as much of the mark as is necessary to identify the trademark owner, product, or service; and (3) the defendant must do nothing that would suggest sponsorship or endorsement by the trademark owner. This defense works against trademark infringement lawsuits. The federal dilution statute, found at 15 U.S.C. § 1125(c)(3)(A), also makes nominative fair use a complete defense to trademark dilution claims. Some examples of nominative fair use include a newspaper's use of the "New Kids on the Block" trademark to create and report on polls asking readers questions about the musical group's popularity; another newspaper's use of the trademark "Boston Marathon" in order to report on the sporting event; and a photographer's use of "Barbie" dolls in parody photographs that criticized Mattel's famous toy and the values she represents. Another example from our database is law blogger Eric Turkewitz's use of the Avis and Hertz logos in a blog post about a lawsuit involving these two companies. (Note, however, that there is some question about whether using a logo, rather than just a textual reference, would qualify as a fair use under the three-part test outlined above.)
  • News Reporting and News Commentary: The news reporting and news commentary defense, found at 15 U.S.C. § 1125(c)(3)(B), is a complete defense to a trademark dilution claim. The law is not clear on what exactly qualifies as news reporting and news commentary, but one court has applied this defense to stop a dilution claim against a blogger who wrote critical commentary about a company that resells items on eBay. See BidZirk, LLC v. Smith, 2007 WL 3119445 (D.S.C. Oct. 22, 2007). There is no explicit news reporting defense to trademark infringement claims, but courts are likely to protect the use of a trademark in news reporting and commentary based on the nominative fair use defense and because there is no likelihood of confusion.
  • Noncommercial Use: There are two types of noncommercial use defenses: one for trademark infringement and one for trademark dilution.
  • If someone sues you for trademark infringement, you can defend yourself by arguing that you did not use the trademark "in connection with a good or service." Unfortunately, different courts have widely different views about what qualifies as "use in connection with a good or service" on the Internet. Some courts have found that simply registering a domain and diverting consumers away from another website may constitute "use in connection with a good or service." Other courts have rejected this view, but found that hosting advertisements or linking to commercial websites is sufficient to create "use in connection with a good or service." For example, in Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005), the court held that a gripe site that hosted no advertising, did not directly link to any commercial websites, and was devoted to critical commentary was not "a use in connection with a good or service." It therefore dismissed the plaintiff's trademark infringement lawsuit against the gripe site operator. In another case, Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003), the defendant ran a number of websites relating to a shopping mall coming to his area. On one site, he included a link to his girlfriend's shirt business, and the court held that this was sufficient for the website and its domain name to be a "use in connection with a good or service." On another site, with the domain name "taubmansucks.com," the defendant included no commercial links, and the court concluded that this website and its domain name were "purely an exhibition of Free Speech" and not a "use in connection with a good or service."
  • If someone sues you for trademark dilution, you can argue that your use of the famous trademark was "noncommercial." Congress created this defense, found at 15 U.S.C. § 1125(c)(3)(C), out of concern that dilution claims would impinge on the First Amendment rights of critics and commentators. Following Congress's lead, the courts have interpreted this defense broadly, holding that the term "noncommercial" applies to any speech that does more than propose a commercial transaction. It is easier to show that your use of a trademark fits into this category than to show that it was not "in connection with a good or service." Under this test, if you use a trademark owner's famous trademark to report on, comment on, or criticize the trademark owner or its goods or services, your use is likely "noncommercial," even if you host advertising or link to commercial sites. This defense would also likely protect you if you used a trademark owner's famous mark in a parody or other work of political or artistic expression. Note, however, that some early cases took a more restrictive view, and found that some gripe sites were "commercial" because of advertising and links to commercial websites. While most recent cases have moved away from this view, the precise state of the law in this area is uncertain.
  • First Amendment Defenses: Courts have recognized a number of additional "First Amendment" defenses in particular situations. For example, in Rogers v. Grimaldi, 875 F2d 994 (2d Cir. 1989), the Second Circuit Court of Appeals held that a filmmaker could use Ginger Rogers' trademark (her name) in the title of a film called "Ginger and Fred," even though the film was not primarily about Rogers. The court indicated that trademark law should be applied to artistic works "only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." The specific details of these defenses is beyond the scope of this guide; the point to keep in mind is that courts may act to protect your right of free expression even if what you are doing doesn't fit nicely into one of the categories above.

Some Free Expression Uses of Trademarks

So how does all this apply in the real world? This section gives some guidance on how the free expression defenses may apply to your activities.

News Reporting

Trademark law does not let a trademark owner exert its trademark rights to stop news reporting about it or its products or services. You see proof of this everyday on the front pages of newspapers, the homepages of news websites, and countless blogs. Mainstream reporters and non-traditional journalists routinely report on earnings announcements, job lay-offs, and accounting scandals without worrying that they are infringing or diluting the trademarks of the companies and organizations they report on. There are several legal bases for this result: there is no risk of confusion between the news source and the trademark owner; nominative fair use protects this use of the trademark owner's mark; and the federal dilution statute expressly exempts "news reporting and news commentary" from a dilution claim. See 15 U.S.C. § 1125(c)(3)(B). As noted above, one court has held that a blogger's critical commentary on a company qualified as "news reporting and news commentary." See BidZirk, LLC v. Smith, 2007 WL 3119445 (D.S.C. Oct. 22, 2007). This is just one case, however, and it remains to be seen how the courts will define "news reporting and news commentary" in the face of different kinds of new media that blur the distinction between reporter and consumer of news.

There is a wrinkle. It is a common practice for bloggers to use the logo of a company when they post about it. For example, TechCrunch often does this:

Although the practice is widespread, it is beginning to draw fire from trademark owners. As noted above, late last year a representative of Avis requested that law blogger Eric Turkewitz cease-and-desist from using its logo in a post about a lawsuit involving the company (see Turkewitz's post). The law is not entirely clear on this point. The nominative fair use defense may not apply because using the logo is not strictly necessary for describing the trademark owner or its products or services. Nevertheless, courts would probably find that use of a logo in the process of news reporting is not likely to confuse consumers. Without confusion, there is no trademark infringement. And, as noted above, there is a categorical exemption from dilution claims for news reporting. So, it looks like using logos for illustration and visual stimulation during news reporting is OK. The one possible weakness is that the logo is not necessarily relevant to the substance of the news reporting, so a court might view its use as outside the news reporting function. Still, confusion and dilution seem highly unlikely in this context.

Commentary and Criticism

Trademark law does not permit a trademark owner to use its trademark rights to silence commentary and criticism. As with news reporting, courts recognize the important First Amendment values at stake and usually deny efforts by trademark owners to encroach on legitimate commentary and criticism. There are several legal bases for this result: there is no risk of confusion between the commentator and the trademark owner, and nominative fair use may protect this use of the trademark owner's mark. Additionally, courts are likely to find that your use of a trademark in commentary or criticism is "not in connection with a good or service" and "noncommercial" (the argument is especially strong for the latter category). But note that some courts may find your use of a trademark for criticism and commentary to be commercial if you host advertising or link to commercial websites. In any event, to defeat a trademark dilution claim, you do not even need to show that your use is noncommercial. The federal dilution statute creates a categorical exemption for "criticizing . . . or commenting upon the famous mark owner or the goods or services of the famous mark owner." 15 U.S.C. § 1125(c)(3)(A)(ii).

The issue of logos comes up with commentary and criticism as well. As with news reporting, using a logo to illustrate or liven up criticism or commentary is probably OK from a trademark perspective. See above for details.

Domain Names

Using someone else's trademark in your domain name is a risky proposition because courts do not necessarily extend the same protections to domain names as they do to commentary, criticism, and news reporting. Early on in the development of Internet law, many cases held that websites could not use a company or organization's trademark in a confusingly similar domain name, even if the website accessible under that domain name criticized the trademark owner, and its content made clear that it was not sponsored by or affiliated with the trademark owner. The reasoning was that a critic has no free speech right to confuse Internet users into thinking that they are entering someone else's website in order to expose them to a critical message.

However, there is a new trend in the cases towards allowing "gripers" and other critics to use domain names that are nearly identical to the trademark owner's trademark, so long as the underlying website does not confuse Internet users into thinking it is affiliated with the trademark owner and it does not engage in commercial activity. For example, in Falwell v. Lamparello, 420 F.3d 309 (4th Cir. 2005), the Fourth Circuit Court of Appeals denied a trademark infringement claim based on the defendant's use of the domain name "fallwell.com" in connection with a website criticizing the social and religious views of the Reverend Jerry Falwell. The court held that it "must look not only to the allegedly infringing domain name, but also to the underlying content of the website" and concluded that, when viewed in this context, the defendant's use of the domain name created no likelihood of confusion. In TMI Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004), the Fifth Circuit Court of Appeals denied a trademark dilution claim based on the defendant's use of a developer's trademarked name in her gripe site's domain name. The court determined that the defendant's site was noncommercial because it was dedicated to critical consumer commentary and did not host advertising or links to commercial sites. The court did not treat the domain name as separate from the underlying website, and so it dismissed the entire dilution claim.

It is still not clear which view of the law will prevail. One way to help yourself avoid trademark liability is to include something in the domain name itself that makes it clear that you are criticizing or commenting on the trademark owner, such as a "sucks" designation. This brings the domain name back within the category of commentary and criticism and makes your First Amendment arguments more persuasive. For example, in Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003), the court held that the defendant's use of the domain name "taubmansucks.com" was "purely an exhibition of Free Speech, and [federal trademark law] is not invoked." Similarly, in Bally Total Fitness Holding Corporation v. Faber, 29 F. Supp.2d 1161 (C.D. Cal. 1998), the court held that the defendant's use of "ballysucks" in a sub-domain for a website engaging in critical commentary did not constitute trademark infringement or dilution.

Domain name disputes often involve cybersquatting claims under the Anticybersquatting Consumer Protection Act. For details, see the Cybersquatting section.

Gripe Sites and Fan Sites

The two sections immediately above outline most of the legal issues related to running a gripe site. Your use of a trademark owner's trademark in commentary and criticism on the website itself is largely protected because there is little likelihood of confusion, because use of the trademark may be nominative fair use, and because there is a statutory exemption from dilution claims for "criticizing . . . or commenting upon the famous mark owner or the goods or services of the famous mark owner." You can help your case by including a prominent disclaimer on your website, making clear that your site is not "official" and providing a link to the trademark owner's site. Such disclaimers are not foolproof, but they go a long way towards reducing consumer confusion. Use of the trademark owner's mark in a domain name is more risky, but you may reduce this risk by including some critical remark like "sucks" in the domain itself. This may make it harder for you to gain the attention of Internet users trying to find the trademark owner's official website, but this may be the price you have to pay for more security from a trademark claim. In addition, if you refrain from hosting advertising and linking to commercial websites, including the websites of companies that compete with the trademark owner, your case is even better. Gripe site cases often involve cybersquatting claims, so you will want to look at the Cybersquatting section of this guide for additional information.

The legal issues surrounding fan sites are more uncertain. In some cases, you may be able to characterize the content of your fan site as "news reporting," if what you are doing is following the activities or new products and services of the trademark owner. In that case, all the protections for news reporting discussed above would apply. Also, you may have a case that your fan site's use of the trademark owner's trademark is a nominative fair use, so long as the appearance of your site does not create confusion about whether or not you are sponsored by or affiliated with the trademark owner. Again, a prominent disclaimer making clear that your site is not "official" and providing a link to the trademark owner's site may help your case, but is not necessarily foolproof. When registering a domain name, you may want to include some term that makes clear that you are running a fan site, such as a "fans," or you may want to avoid the trademark altogether. See the Cybersquatting section for additional details on domain names. As always, if you refrain from hosting advertisements and linking to commercial websites, you have a better chance of defending against a trademark lawsuit.

Fan sites often raise other legal issues, such as copyright infringement and right of publicity claims. For additional information, consult the copyright section and our forthcoming section on rights of publicity and misappropriation.

Parody

Courts generally recognize that parody is entitled to First Amendment protection in a trademark infringement lawsuit, and the federal dilution statute expressly exempts parody from dilution claims. See 15 U.S.C. § 1125(c)(3)(A)(ii). In addition, a number of courts have held that parodies are "noncommercial" uses exempted by the federal dilution statute. However, simply labeling your work "parody" will not be enough to defeat an otherwise legitimate claim of trademark infringement or dilution. The courts take a relatively narrow view of what qualifies as a "successful" parody. A parody must walk the fine line between evoking the original (i.e., the trademark) and making clear that it is not the original (i.e., it is something new commenting on or criticizing the trademark owner). Moreover, the parody must be aimed at the trademark owner or its goods or services, not at an unrelated third party or issue. In the final analysis, if your parody confuses consumers, and they believe that the trademark owner is the source or sponsor of the parody, then you may be liable for infringement or dilution.

Putting your parody in a commercial context -- like using it in an advertisement or fake advertisement, or selling merchandise like coffee mugs or t-shirts emblazoned with the parody -- may make it harder for you to defend against a trademark lawsuit. But this is not necessarily the case. For example, in MasterCard International Inc. v. Nader 2000 Primary Committee, Inc., 2004 WL 434404 (S.D.N.Y. Mar. 8, 2004), the court upheld Ralph Nader's use of MasterCard trademarks in a parody political advertisement, finding that there was no likelihood of confusion and that his use of the marks were political speech and thus "noncommercial." In another case, Mattel Inc. v. MCA Records, 296 F.2d 894, 906-07 (9th Cir. 2002), the Ninth Circuit Court of Appeals held that the band Aqua's use of Mattel's "Barbie" trademark in the parodic song "Barbie Girl" was protected by the First Amendment and "noncommercial," even though the band sold the song for money. The court found that Aqua's parody successfully lampooned the Barbie image and commented humorously on the cultural values the doll represents, and therefore was protected by the First Amendment. Finally, in Smith v. Wal-Mart, 537 F. Supp.2d 1302 (N.D. Ga. 2008), the defendant created a series of parodies using Wal-Mart's logos and slogans, in which he likened the retail giant to Al-Qaeda and the Nazis. He not only posted these parodies on his websites, but sold CafePress t-shirts and other merchandise containing the designs. The court held that the defendant's designs were successful parodies of Wal-Mart's trademarks, that there was no likelihood of confusion between his websites or goods and Wal-Mart's, and that his use of the trademark was "noncommercial," even though he sold the designs to the public on t-shirts and other merchandise.

 

Last updated on April 30th, 2008

   
 
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