How Confusing! Resolving the Three-Way Circuit Split on the Nominative Fair Use Doctrine

Akron Law Review Volume 56 Issue 1 Article 5 2023 How Confusing! Resolving the Three-Way Circuit Split on the Nominative Fair Use Doctrine Eric W. Walker Follow this and additional works at: https://ideaexchange.uakron.edu/akronlawreview Part of the Law Commons Please take a moment to share how this work helps you through this survey. Your feedback will be important as we plan further development of our repository. Recommended Citation Walker, Eric W. (2023) "How Confusing! Resolving the Three-Way Circuit Split on the Nominative Fair Use Doctrine," Akron Law Review: Vol. 56: Iss. 1, Article 5. Available at: https://ideaexchange.uakron.edu/akronlawreview/vol56/iss1/5 This Article is brought to you for free and open access by Akron Law Journals at IdeaExchange@UAkron, the institutional repository of The University of Akron in Akron, Ohio, USA. It has been accepted for inclusion in Akron Law Review by an authorized administrator of IdeaExchange@UAkron. For more information, please contact , . Walker: Three-Way Circuit Split HOW CONFUSING! RESOLVING THE THREE-WAY CIRCUIT SPLIT ON THE NOMINATIVE FAIR USE DOCTRINE Eric W. Walker * I. II. III. IV. Introduction: Injecting Common Sense into Trademark Technicalities................................................................148 Background: History of the Doctrine..............................150 A. Ninth Circuit: New Kids on the Block and Playboy Enterprises..............................................................151 B. Third Circuit: Affirmative Defense and Bifurcation..154 C. Second Circuit: Expanding Confusion .....................155 D. The Supreme Court: A Loose Foundation ................156 E. Other Circuits: Avoidance and Uncertainty ..............157 Statement of the Issue....................................................159 Analysis: Resolving the Circuit Split..............................160 A. Why the Nominative Fair Use Doctrine is a Necessary Defense..................................................160 1. Why not use the First Amendment? ....................161 2. Nominative Fair Use is Necessary for Defendants who are Engaging in Comparative Advertising....................................163 3. Nominative Fair Use is Necessary for Defendants who Advertise that they are Repairing or Reselling Genuine Goods ...............163 4. Nominative Fair Use is Necessary for Defendants who Sell Complementary Goods.......165 B. Why Nominative Fair Use Should be an Affirmative Defense................................................166 * J.D. 2022, University of Akron School of Law. Thank you to Professor of Law Camilla Hrdy for her instruction in several intellectual property courses, and for her guidance throughout the writing of this note. Thank you to the numerous editors of the Akron Law Review who contributed to this note. And finally, thank you to my wife, Kaitlin, for her love and support throughout law school, and for enduring much legal prattle and epiphanies during the writing of this note. 147 Published by IdeaExchange@UAkron, 2023 1 Akron Law Review, Vol. 56 [2023], Iss. 1, Art. 5 148 V. AKRON LAW R EVIEW [56:147 1. Other Forms of Fair Use are Affirmative Defenses............................................................166 2. The Existing Precedent Suggests Nominative Fair Use Should be an Affirmative Defense ........167 3. Nominative Fair Use is not so Distinctive from Descriptive Fair Use to Justify a Different Analysis..............................................167 4. The Policy Behind Nominative Fair Use Indicates Nominative Fair Use Should be an Affirmative Defense..................................169 5. Treating Nominative Fair Use as Anything Other Than an Affirmative Defense is Problematic........................................................170 C. Why the Third Circuit’s Test is the Best...................171 1. Why the Second Circuit’s Test Misses the Mark .171 2. Choosing the Third or Ninth Circuit’s Test .........172 Conclusion ....................................................................176 I. INTRODUCTION: INJECTING COMMON SENSE INTO TRADEMARK TECHNICALITIES The ultimate test in determining if there is infringement in trademark law is whether there is a likelihood of confusion among the consumers. 1 If there is no likelihood of confusion, there is generally no infringement. 2 But what if a trademark defendant’s legal and reasonable use of another’s mark causes consumer confusion anyway? For example, should a defendant who has the legal right to repair Volkswagen-branded vehicles also be allowed to advertise that they perform such work? While the answer may seem obvious, this was the basis of the dispute in Volkswagenwerk Aktiengesellschaft v. Church. 3 In this case, the Ninth Circuit held that a California-based auto repair shop specializing in the repair of Volkswagens did not infringe Volkswagen’s trademarks. 4 This was primarily decided because the owner of the shop, appellee Church, advertised that he repaired Volkswagens, but “did not use Volkswagen’s 1. J. THOMAS MCC ARTHY, MCC ARTHY ON TRADEMARKS AND UNFAIR C OMPETITION § 23:1.50 (5th ed. 2017). 2. Id. at § 23:3 (noting that “[l]ikelihood of confusion is synonymous with ‘probable’ confusion”). 3. Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969). 4. See id. at 352. https://ideaexchange.uakron.edu/akronlawreview/vol56/iss1/5 2 Walker: Three-Way Circuit Split 2022] THREE-WAY C IRCUIT S PLIT 149 distinctive lettering style or color scheme, nor did he display the encircled ‘VW’ emblem.” 5 Church’s use of the term “Volkswagen” was a “‘nominative use’ because it ‘names’ the real owner of the mark.” 6 One can see why a trademark defendant in Church’s position should be granted a nominative fair use defense. This defense allows Church to make an overt reference to Volkswagen in advertising repair services to potential customers. If Church has the legal right to operate an auto-repair shop, he should also be allowed to advertise that service. The Ninth Circuit later noted: Church did not suggest to customers that he was part of the Volkswagen organization or that his repair shop was sponsored or authorized by VW; he merely used the words “Volkswagen” and “VW” to convey information about the types of cars he repaired. Therefore, his use of the Volkswagen trademark was not an infringing use. 7 In 1992, the Ninth Circuit was the first to acknowledge that such a defense should be available to some trademark defendants, so long as they meet a three-factor test showing that the defendant’s use was necessary, limited, and suggests no sponsorship. 8 Since then, only two other circuits have formally recognized the doctrine of nominative fair use—with only the Third Circuit acknowledging the doctrine as an affirmative defense. 9 While a Supreme Court decision would be an adequate solution to resolving the circuit split, the Supreme Court recently declined to review a relevant nomi (...truncated)