72 Am. U. L. Rev. 1225 (2023).

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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.

* Professor, American University Washington College of Law.

** Professor, University of San Diego School of Law. We appreciate the helpful comments we received on this paper from Ted Davis, Dean Eyler, Ilanah Fhima, Camilla Hrdy, Sir Robin Jacob, Sabine Jacques, Lori Krafte, Stacey Lantagne, Mark Lemley, Paul Levy, Mark McKenna, Bill Patterson, Chris Sprigman, Genevieve Wilkinson, Roger Williams; the participants at the Trademark Scholarship Symposium of the International Trademark Association, the Joint Trademark Committees Quarterly Meeting of the American Intellectual Property Law Association, and theIntellectual Property Speaker Series at the University of New Hampshire School of Law; and the students in the Intellectual Property Law Speaker Series and Trademark Law classes at the University of San Diego School of Law. Thanks also to Jaclyn Bell, Lauren Cahill, Aasees Kaur, and Emily Shingle for their excellent research assistance and to the members of the American University Law Review for their editorial assistance.