22. Permissible Uses
Learning Objectives: Unit 22
Upon completion of this unit, you should be able to:
- Explain the “classic” fair use defense.
- Explain nominative use.
- Explain the policy issues at the intersection of the First Amendment and trademark rights.
- Explain different approaches to resolving these tensions and the consequences of those approaches.
“Classic” or “descriptive” fair use is a statutorily-established defense to trademark infringement. We will explore this defense in the context of Zatarains v. Oak Grove Smokehouse (5th Cir. 1983).
In addition to descriptive fair use, other uses of trademarks are sometimes described as “fair” or “permissible” uses, notwithstanding the outcome of a likelihood of confusion analysis. Nominative use—the use of a mark to refer to the actual mark owner rather than the user, as in comparative advertising—is one such form. We will discuss in class different approaches that courts have taken to nominative use.
A more difficult question involves the intersection between First Amendment free speech principles and trademark rights. We will examine this issue through the lens of two Circuits: the the 8th Circuit decision of Anheuser-Busch, Inc. v. Balducci Publications (8th Cir. 1994) and the 9th Circuit decision of Mattel v. MCA Records (9th Cir. 2002).
