73 Am. U. L. Rev. F. 181 (2024).

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Abstract

In their article, Raising the Threshold for Trademark Infringement to Protect Free Expression, Christine Haight Farley and Lisa Ramsey argue in favor of a speech-protective fair use test that would replace multiple tests applied by the U.S. Courts of Appeals when a defendant’s alleged infringement has either informational or expressive elements. This Response explains why this raised threshold test is unlikely to be adopted following the U.S. Supreme Court’s retrenchment of speech-protective thresholds in Jack Daniel’s Properties, Inc. v. VIP Productions, LLC. That prediction is bolstered by the Court’s likely holding in Vidal v. Elster. Readers persuaded that current defensive doctrines fail to sufficiently protect expressive and informational trademark uses will find the raised threshold test appealing. However, this Response concludes the proposed test is not constitutionally required. Moreover, applying the raised threshold test will lead courts in a surprisingly broad swath of cases to abandon or severely narrow important elements of current trademark doctrine, some of which are mandated by statute. Those threatened elements help courts correctly calibrate the commercial and expressive interests of trademark owners, alleged infringers, and the trademark-using public.

* Loula Fuller & Dan Myers Professor, Florida State University College of Law. J.D., University of Chicago, high honors, 2008. B.A. University of Utah, 1996. Thanks to Jacob Eisler, Christine Haight Farley, Lisa Ramsey, Mark Seidenfeld, Brian Slocum, Alex Tsesis, and participants at the 2022 and 2023 Trademark Scholars Roundtables and the Section Two Small Conference at the University of New Hampshire for formative conversations and insightful critiques.