©2019. Published in Landslide, Vol. 11, No. 5, May/June 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Here’s an easy one: a client e-mails you because she would like to use a hashtag to promote her company’s new winter apparel line. Then, she tells you the hashtag is #WinterIsComing. Is it permissible? The hashtag originates from the popular HBO Game of Thrones franchise and, although arguably not a prominent lead, is indisputably associated with the show. But what if the client is not using the hashtag as a source identifier for winter apparel? What about fair use?
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Generally, trademark fair use occurs when an accused infringer can show (1) it did not use the mark as a trademark; (2) the use is descriptive of its goods or services; and (3) it used the mark fairly and in good faith.1 In today’s fast-changing digital climate, the selection and fair use of a mark looks different. What if that same client’s mark is a #hashtag or is a keyword simply used to generate website visitors? And, a search can be problematic—searching for common law uses of a mark may generate hundreds or thousands of similar hashtags. What if the mark is, or was, a slogan that quickly turned viral on social media? The nature of social media, ability to share, and easy access to all forms of content quickly have blurred the line between fair use and infringement. In this article, we review recent cases interpreting use of trademarks in today’s climate, including #hashtags, domain names, and a viral video punchline.
In the #WinterIsComing example above, perhaps an argument could be made that the hashtag is merely descriptive of the apparel line as geared toward the winter season, although not as obvious. “A descriptive term ordinarily names a characteristic of a product or service” and is not used as a trademark.2 For example, in Midwest Medical v. SSM Health Care, the plaintiff owned a trademark for “Express Care of Mt. Vernon” for walk-in health services.3 The defendants, who were using the name “SSM Health Express Clinic” for walk-in health services, posited that the phrase “Express Clinic” was descriptive of the defendants’ services. On summary judgment, the court found it clear that the defendants’ use of “SSM Health” along with the phrase “Express Clinic” tipped in favor of fair use, as “Express Clinic” described a characteristic of the defendants’ product insofar as the clinic provides medical treatment in a quick and convenient setting, and not a source identifier.
When a Mark Bears Resemblance to a Fictional Business or Mark
Enter SpongeBob SquarePants, who collects his paycheck at the fictional restaurant The Krusty Krab. This same restaurant was the subject of the 2018 case Viacom v. IJR.4 Viacom, as creator of SpongeBob SquarePants, was common law owner of “The Krusty Krab” and sued IJR when it learned that IJR intended to use “The Krusty Krab” as the name of a restaurant chain in California and Texas. The district court granted summary judgment. In affirming summary judgment, the Fifth Circuit analyzed whether Viacom had ownership in a legally protectable mark, and whether IJR’s use of the mark created a likelihood of confusion as to the source, affiliation, or sponsorship.5 Indeed, how could a mark that is not “used in commerce” as a source identifier of a specific good or service be used as a basis for infringement? In addressing a threshold issue, the Fifth Circuit found that unregistered names for items within a television show, even those items not featured as a prominent lead, can form a basis for infringement. In reaching that finding, the court noted that “The Krusty Krab” appeared in 166 of 203 SpongeBob episodes, and stated that “The Krusty Krab’s central role in the multi-billion-dollar SpongeBob franchise [was] strong evidence that it is recognized in itself as an indication of origin.”6 The court also pointed to other protectable but fictional supporting elements, such as General Lee from Dukes of Hazard and Clark Kent’s employer the Daily Planet. Based on the Fifth Circuit’s holding, it seems likely that use of #WinterIsComing in connection with an apparel line may not be permissible.
When a Mark Is a #Hashtag or Keyword
When not otherwise registrable, the U.S. Patent and Trademark Office has been hesitant to approve #hashtag marks, taking the stance that the addition of the hash symbol (#) does nothing to enhance the mark. As a case in point, singer will.i.am’s mark #willpower was rejected by an examining attorney because of a likelihood of confusion with the earlier-registered mark “Willpower Wear Have the Will” for apparel goods. Will.i.am appealed to the Trademark Trial and Appeal Board (TTAB). The TTAB agreed with the examiner’s refusal and stated that “the hash symbol does not have source-indicating distinctiveness and at most simply appears as the social media tool to create a metadata tag.”7 Similarly, in January 2019, the TTAB affirmed an examining attorney’s rejection of the mark #magicnumber108 for apparel goods, finding evidence that suggested the proposed mark had been used extensively as a hashtag to identify the Chicago Cubs’ World Series win after a 108-year drought.8 The TTAB maintained that a hashtag does not serve any source-identifying function but “merely facilitate[s] categorization and searching within online social media.”9
In the fair use context, however, online keywords may be sufficient to warrant infringement. Keywords are those words used by search engines to capture websites when a person types the word into that search engine. Keywords are primarily used in a way where terms are purchased by advertisers so that their ads will appear in sponsored results in response to certain searches. In some instances, use of certain keywords may cross the line to trademark infringement—for example, using a business name of a competitor as a keyword, which in turn generates a search result showing your business website.10 However, at least one case made clear that if seemingly descriptive or generic enough, use of a keyword that may be similar to a competitor is still fair use. In Alzheimer’s Ass’n v. Alzheimer’s Foundation, the defendant used “Alzheimer’s Association” as one of the search engine keywords.11 The plaintiff owned the registered marks “Alzheimer’s Association,” “Walk to End Alzheimer’s,” and others. Both parties had a history of online marketing and keyword purchases. After conducting the analysis under Polaroid,12 the court found that the defendant’s use of keywords including “Alzheimer’s Association” was not infringing on the plaintiff’s marks.13
When the Mark Is Used in a Domain Name
In Toyota v. Tabari, the Ninth Circuit considered the application of the nominative fair use doctrine to Internet domain names.14 Unlike “classic fair use” where a court may find fair use despite proof of infringement, nominative fair use represents “a finding of no liability under [the Lanham Act’s] basic prohibition of infringing use.”15 In Tabari, the defendants—auto brokers—offered their service at “buy-a-lexus.com” and “buyorleaselexus.com.” Plaintiff Toyota, as exclusive distributor of Lexus vehicles in the United States, took issue with the defendants’ use of the circular L-symbol design mark and use of “Lexus” in domain names.16 The lower court found infringement and ordered the defendants to cease use of the domain name. On appeal, the Ninth Circuit noted that the district court applied the eight-factor likelihood of confusion test articulated in AMF v. Sleekcraft17 but reiterated that the Sleekcraft analysis does not apply where a defendant uses the mark to refer to the trademarked good itself.18 In this case, the Ninth Circuit applied the test outlined in Playboy v. Welles—namely, where a nominative fair use defense is raised, the court looks at whether (1) the product was “readily identifiable” without use of the mark; (2) the defendant used more of the mark than necessary; or (3) the defendant falsely suggested he was sponsored or endorsed by the trademark holder.19 In analyzing the factors, the court found that the defendants’ special sales of Lexus made the use of such mark in a reasonable way to communicate such to consumers. Further, the defendants did not use more of the Lexus mark than necessary. Finally, the defendants had revamped their website to include a disclaimer informing consumers that it was not owned by Toyota.20 The Ninth Circuit reversed and remanded in finding that nominative fair use applied, further stating that on remand Toyota must bear the burden of establishing that the defendants’ use of the Lexus mark was not nominative fair use, clarifying that “[a] finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement.”21
When a Mark Is the Punchline
Honey Badger Don’t Care—at least until his trademark is stolen. In Gordon v. Drape Creative, the plaintiff—the creator of the viral YouTube video “Honey Badger”—sued two greeting card companies for putting “Honey Badger Don’t Care” or “Honey Badger Don’t Give a S**t” on greeting cards as the punchline.22 The “Honey Badger” viral video, which quickly caught fire and resulted in phrases on the plaintiff’s goods in national retailers, was viewed millions of times. After generating widespread popularity, the plaintiff enjoyed the fruits of his labor through a number of mainstream media interviews and licensing deals. Simultaneously, the defendants began developing their own line of unlicensed honey badger greeting cards. The Central District of California granted summary judgment for the defendants. In so doing, the court held that the defendants’ cards were expressive works, applying the Rogers v. Grimaldi23 test to bar all of the plaintiff’s claims.24 On appeal, the Ninth Circuit initially agreed that the defendants met the initial burden that the greeting cards are expressive works protected by the First Amendment, but reversed summary judgment in holding that the plaintiff’s trademark infringement claims against the greeting-card makers were not barred under Grimaldi.25 The Ninth Circuit thereafter granted rehearing, and specifically found that a fact issue remained regarding using phrases on greeting cards and directed the lower court to consider the likelihood of confusion factors.26 Specifically, the court stated that there was a triable issue of fact as to whether the defendants “simply used [the plaintiff’s] mark with minimal artistic expression of their own, and used it in the same way that [the plaintiff] was using it—to identify the source of humorous greeting cards in which the bottom line is ‘Honey Badger don’t care.’”27 If Honey Badger has taught us anything, it’s that viral messages do not (yet) push the analysis toward fair use.
Interpreting Fair Use
While courts have started to consider certain new online-based marks (think #hashtag), it will be years before we start to get a clear indication of how courts in all circuits will treat these marks within the fair use analysis. It seems clear so far that the courts continue to consider the same analysis regardless of the type of mark, specifically looking at an “inquiry into [the parties’] subjective purpose in using the [phrase].”28
For now, the business considerations remain consistent: avoid excessive use of others’ logos and trade dress, refer to a competitor’s product or service only as necessary, prominently display your own unique mark, and where possible research a right holder’s prior enforcement and policing history. Inclusion of words like “independent” may also help “negate any hint of sponsorship or endorsement . . . but that doesn’t mean such words are required.”29 Finally, disclaimers—while helpful as a deterrent—do not always tip the balance in favor of fair use. Keeping apprised of recent decisions on fair use surrounding digitally focused marks can ensure that we are all #winning.
1. Sorensen v. WD-40 Co., 792 F.3d 712, 722 (7th Cir. 2015).
2. Id. at 724 (granting summary judgment finding descriptive fair use).
3. Midwest Med. & Occupational Servs. SC v. SSM Health Care Corp., No. 3:17-cv-388, 2018 U.S. Dist. LEXIS 207945 (S.D. Ill. Dec. 10, 2018).
4. Viacom Int’l, Inc. v. IJR Capital Invs., L.L.C., 891 F.3d 178 (5th Cir. 2018).
5. Id. at 185.
6. Id. at 183, 188.
7. In re i.am.symbolic, llc, 127 U.S.P.Q.2d 1627 (T.T.A.B. 2018).
8. In re DePorter, 129 U.S.P.Q.2d 1298 (T.T.A.B. 2019).
9. Id. at 1303.
10. Fair Isaac Corp. v. Experian Info. Sols. Inc., 645 F. Supp. 2d 734, 760 (D. Minn. 2009) (finding purchase of Internet search keywords containing a trademark in order to generate advertising from searches constituted “use in commerce” sufficient to maintain infringement action under Lanham Act).
11. Alzheimer’s Disease & Related Disorders Ass’n v. Alzheimer’s Foundation of Am., Inc., 307 F. Supp. 3d 260 (S.D.N.Y. 2018).
12. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
13. But see Edible Arrangements, LLC v. Provide Commerce, Inc., No. 3:14-cv-00250, 2016 U.S. Dist. LEXIS 99291 (D. Conn. July 29, 2016) (holding that a reasonable juror could find that the defendants’ use of “edible arrangements” instead of other terms like “chocolate strawberries” or “gift box” was designed to misdirect consumer traffic).
14. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010).
15. Id. at 1183 n.11.
16. Id. at 1175.
17. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
18. Toyota, 610 F.3d at 1175.
19. Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002).
20. Toyota, 610 F.3d at 1181.
21. Id. at 1182; see also id. at 1178 (“The importance ascribed to trademark.com in fact suggests that far less confusion will result when a domain making nominative use of a trademark includes characters in addition to those making up the mark.” (citing Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146–47 (9th Cir. 2002))).
22. Gordon v. Drape Creative, Inc., No. 15-cv-04905, 2016 U.S. Dist. LEXIS 148378 (C.D. Cal. Oct. 26, 2016).
23. 875 F.2d 994 (2d Cir. 1989).
24. Gordon, 2016 U.S. Dist. LEXIS 148378.
25. Gordon v. Drape Creative, Inc., 897 F.3d 1184 (9th Cir. 2018).
26. Gordon v. Drape Creative, Inc., 909 F.3d 257, 271 (9th Cir. 2018).
28. Packman v. Chi. Tribune Co., 267 F.3d 628, 642 (7th Cir. 2001).
29. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1177 (9th Cir. 2010).