FAIR USE OF TRADEMARKS
IVAN HOFFMAN, B.A., J.D.
In “Recording Artists’ Rights to Group Names”, I discussed a number of issues related to the rights of present and former members of rock and roll bands to use the name of the band or a variation thereof in their subsequent professional work. I strongly commend the reader to read the said article. This article discusses 2 federal cases, both out of the Ninth Circuit Court of Appeals (which covers the California territory…home of rock and roll and other good things), that add dimension to the said issues.
The Beach Boys Case
In Brother Records, Inc. vs. Jardine, the Beach Boy Alan Jardine was appealing a summary judgment of trademark infringement against him for the use of several variations on The Beach Boys band name. The plaintiff was a corporation set up by the band to administer its intellectual property rights including the trademark “The Beach Boys.” The corporation was owned equally by 4 shareholders including Jardine, each of whom was also a director. There were internal issues about whether some members wanted to tour with the band or not. As a result, the corporation discussed entering into non-exclusive licenses with each of the said members to allow said members the right to use the name “The Beach Boys” in their careers. The said licenses provided for protection of the trademark, requiring the licensees to preserve the style of the group and to choose from a list of approved booking agents and managers. It is essential that a trademark owner retain quality control in any licensing arrangement or risk losing rights to the mark. The reader should read “Naked Licensing of Trademarks.”
Jardine and the corporation negotiated the terms of a license but it was not clear whether or not such non-exclusive license was actually entered into since there was no writing signed by the parties. For a related set of issues in regard to rights of copyright, read “A Legal Nightmare: The Unwritten License.” In any event, Jardine then went on the road touring variously as “Beach Boys Family and Friends,” “Al Jardine of the Beach Boys and Family & Friends,” “The Beach Boys, Family and Friends” and other such variations. On occasions, the Jardine tour performed in venues close to the shows of another Beach Boy, Mike Love. There was evidence produced in the lower court of actual confusion on the part of the public and promoters as to what they believed they were getting when they attended or promoted a Jardine show.
The Court in this case discussed in detail issues related to fair use of trademarks under 2 subheads: the so-called “classic fair use” and the so-called “nominative fair use.” The Court decided not to decide which fair use defense applied but instead to discuss both defenses and that is what I will do.
Classic fair use occurs when a defendant uses a descriptive trademark of another party to describe the defendant’s own product. This is the defense set forth in the Lanham Act itself applicable as to marks that possess both a primary and secondary meaning and when the mark is used in its descriptive sense but not when the mark is used as a trademark. The Act provides for a defense of fair use when:
What this means in non-legal language is that a party is entitled to use a trademark in such as way as to describe the qualities that such a mark represents as long as the manner of use of the mark is not as a trademark but only in that descriptive sense.…the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, … of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; [emphasis added].
The Court concluded however, that Jardine was not entitled to this classic fair use defense since he was not using the mark to describe the qualities of a “beach boy” i.e. the primary, descriptive meaning, but instead to refer expressly to the secondary meaning, referring to the qualities of the particular band and thus to the trademark. The Court said:
The Court then discussed “nominative fair use.” Nominative fair use defense may arise in situations where a defendant uses a trademark of another party to describe the other party’s product. In other words, when a defendant uses the other party’s trademark in a trademark manner but claims, as a defense, that it is impossible to refer to the product or service without the use of the trademark. In such instances, the determination has to be whether or not the said use of the trademark will create a likelihood of confusion in the minds of the public and thus the defense is only available if such use does not create such confusion and where the mark is not being used to capitalize on the rights of the trademark owner. The Court cited numerous cases including those involving New Kids On The Block and Kareem Abdul-Jabbar. In these instances, the defendant used the trademark of the plaintiff to describe the plaintiff’s own product. Nominative fair use also can occur when the defendant uses the plaintiff’s mark to describe the title of the defendant, as in the Playboy vs. Welles case in which the defendant referred to herself on her web site as a former Playboy Playmate of the year. In this latter regard, read “Keywords, Meta Tags and Trademarks.” In the instance of The Beach Boys case, this would mean that Jardine’s use of the mark described the product of The Beach Boys i.e. their style of music.Here, as in Playboy and New Kids, Jardine does not use the trademark in any primary, descriptive sense. That is, Jardine does not use “The Beach Boys” trademark to denote its primary, descriptive meaning of “boys who frequent a stretch of sand beside the sea.” Instead, Jardine uses “The Beach Boys” trademark in its secondary, trademark sense, which denotes the music band--and its members--that popularized California surfing culture.
The Court cited to the New Kids case and set forth 3 requirements when such nominative fair use might be available to a defendant. The Court said:
The Court ruled that Jardine satisfied the first 2 requirements but could not avail himself of this fair use defense either since he failed to qualify under the standards in “third” above. The various marketing and promotional materials used by Jardine to promote the concerts he gave “display ‘The Beach Boys’ more prominently and boldly than ‘Family and Friends,’ suggesting sponsorship by the Beach Boys….” The Court found other instances in the evidence to suggest that Jardine implied such sponsorship and referred to the evidence of actual confusion. The Court distinguished this situation from that in the Steppenwolf case, discussed below.First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark owner.
The Court affirmed the judgment of the trial court against Jardine on a number of other claims but it is beyond the scope of this article to deal with those issues since I want to stay focused on fair use issues.
The Steppenwolf Case
In Kassbaum vs. Steppenwolf Productions, Inc. et. al, the plaintiff Kassbaum was a member of the late-60’s band “Steppenwolf.” You all know, of “Born To Be Wild” fame. The issue was whether under the contracts between the parties or under the Lanham Act, the trademark owner could prevent Kassbaum “from referring to himself in promotional materials for a new band as ‘formerly of Steppenwolf,’ an ‘original member of Steppenwolf,’ or an ‘original founding member of Steppenwolf.”
The parties, all members of the said band, had a written partnership agreement amongst themselves in which all parties had an equal right of ownership in the assets of the partnership, in this instance the band. After a series of internal disputes, there were a series of agreements dealing with the rights of Kassbaum and others to use the name “Steppenwolf.” The last such agreement expressly acknowledged that Steppenwolf Productions, Inc. (and other parties) owned the sole and exclusive rights to the name “Steppenwolf” and that Kassbaum and others relinquished any rights to use the said name.
Kassbaum and others toured as “The Lone Wolf” and later as “World Classic Rockers” and in the marketing and promotion, Kassbaum referred to himself as indicated above.
The Court discussed the above written agreement and decided that it would not preclude Kassbaum from using the name “Steppenwolf” to refer to factual information from his past. The Court said:For example, one advertisement identifies Kassbaum as “NICK ST. NICHOLAS former member of Steppenwolf.” Kassbaum also promoted himself as being a “Former Original Member of Steppenwolf,” “Original Founding Member of Steppenwolf,” and “Formerly of Steppenwolf.”
The Court then discussed the Lanham Act claims and in doing so, referred to both the New Kids and Playboy cases discussed above, among other cases [this case was decided before The Beach Boys case]. The reader should clearly understand that these type cases are very fact-specific and evidence driven. The Court concluded that the manner of use of the trade name “Steppenwolf” by Kassbaum did not create a likelihood of confusion and was in fact a fair use of the said name. The Court cited a number of facts, which facts make this case significantly different than The Beach Boys case above.Under these circumstances, it is clear that the contract’s broad language “for any purposes whatsoever,” and “all other uses of the name ‘STEPPENWOLF’ in the entertainment industry” refers to use of the trade name Steppenwolf, and not to the simple use of the name to provide accurate historical information that would not lead reasonable people to think Kassbaum’s new band was Steppenwolf. The terms of the contract do not bar Kassbaum from referring to his former membership in Steppenwolf in the entertainment industry or otherwise.
As with the Playboy case above, Kassbaum was free to refer to the historical fact of his relationship with Steppenwolf. The Court stated: First, we believe the phrases “Formerly of,” “Original Member of “ and “Original Founding Member of,” immediately preceding the name “Steppenwolf “ in the promotional materials for World Classic Rockers greatly reduce the likelihood of confusion about the source of the band’s music.
 Additionally, the context of the historical references to Kassbaum’s affiliation with Steppenwolf in World Classic Rockers’ promotional materials further reduces any likelihood of confusion between these two bands. In all promotional materials presented to the district court, references to World Classic Rockers are more prominent than are references to Steppenwolf.
Finally, we wholeheartedly agree with Justice Holmes’s statement about the limits of trademark protection in Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924): “When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo.”
These cases reveal another very important theme in all of my articles…the theme being that, given that no one can know, in advance, what intellectual property rights are going to be important, or when, the mantra for today’s world should be “Own Everything!” If you are a creator of intellectual property, you should not be giving away your rights without a well-negotiated and thoroughly drafted agreement protecting your said rights and the right to receive income from the use and exploitation of those rights (the 2 issues are very different). If you are an acquirer of intellectual property rights, you cannot own any exclusive rights in the creativity of independent contractor creators unless you have a valid, thorough agreement transferring some or all of those rights to others.
Since no one can know the future, all parties should wake up each day and believe, and operate on that belief, that that which they are creating or acquiring that day is going to be a huge success, both immediately and for the long term. And with that belief in place, the parties should then negotiate their agreements and protect their legal rights based on that belief. Copyrights last for many, many decades and trademarks can go on even longer. Owning rights is today’s means of production and the source of wealth.
Read “What Business Are You In?”, “Set To Fail,” “Private Laws” and “The Need for Vision.”
© 2003 Ivan Hoffman. All Rights Reserved.