Trademarks and the First Amendment: Litigation Trends

The Supreme Court has recognized the conflict between trademark law’s important commercial and consumer protection functions, and the First Amendment protections for expressive works. Here, the author considers this conflict against the backdrop of a series of recent cases applying these doctrines.

Copyright law balances free speech principles in well-documented ways. In Harper & Row Publishers, Inc. v. Nation Enterprises, the Supreme Court recognized that “the Framers intended copyright itself to be the engine of free expression” and that by “establishing a marketable right to the use of one’s expression, copyright supplies the economic incentive to create and disseminate ideas.” 471 U.S. 539, 558 (1985).

The court also made clear, in Eldred v. Ashcroft, that “copyright law contains built-in First Amendment accommodations” by “distinguish[ing] between ideas and expression and mak[ing] only the latter eligible for copyright protection,” and adopting the “fair use” defense, which affords “latitude for scholarship and comment.” 537 U.S. 186, 219–20 (2003).

Likewise, in Zacchini v. Scripps-Howard Broadcasting Co., the Court acknowledged tension between publicity rights and the First Amendment, finding it significant that a performer did not seek to deprive the public “of the benefit of [his] performance”; rather, “he simply want[ed] to be paid for it.” 433 U.S. 562, 578 (1977). Subsequent courts and state legislatures created their own free speech guardrails.

For example, in Comedy III Productions v. Gary Saderup, Inc., the California Supreme Court adopted the Transformative Use test, which asks whether a work “contains significant transformative elements” and whether its value does not derive “primarily from the celebrity’s fame.” 106 Cal. Rptr. 2d 126, 142 (2001). Similarly, many state statutes include exceptions to narrow their scope, particularly with regard to expressive works, so as to avoid burdening speech. See Joshua L. Simmons & Miranda D. Means, Split Personality: Constructing a Coherent Right of Publicity Statute, Landslide, May/June 2018, at 41.

Even patent law might implicate free speech principles. In Intellectual Ventures I LLC v. Symantec Corp., Judge Haldane Mayer concluded that “patents constricting the essential channels of online communication run afoul of the First Amendment.” 838 F.3d 1307, 1322 (Fed. Cir. 2016) (Mayer, J. concurring). And, the Supreme Court acknowledged in Mazer v. Stein that, like copyrights, patents are granted to encourage “individual effort…to afford greater encouragement to the production of works of benefit to the public.” 347 U.S. 201, 219 (1954).

Balancing Trademark Use and Expressive Use

Given the First Amendment’s role in other areas of intellectual property jurisprudence, it is no surprise that trademark law also interacts with free speech principles. With their “ancient origins,” trademarks serve to “help consumers identify goods and services that they wish to purchase, as well as those they want to avoid.” Matal v. Tam, 137 S. Ct. 1744, 1751 (2017). In the Trade-Mark Cases, however, the Supreme Court held that trademarks are not akin to “inventions and discoveries in the arts and sciences, or with the writings of authors” as it found they are not the product of “sudden invention”—possibly a surprise to modern marketing professionals—but rather grow out of “use” and “priority of appropriation.” 100 U.S. 82, 93–94 (1879).

Given trademarks’ ubiquity, creators may incorporate them into their own expression, potentially leading to disputes. When trademarks are used “for the purpose of trade or to induce the sale of any goods or service,” they are used in “commercial speech,” which “receives a limited form of First Amendment protection.” San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 535 (1987). But several circuits have held that trademark law applies “to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (emphasis added). Between these extremes lie “expressive” uses of a trademark that are “promotional,” but not “purely commercial.” SFAA, 483 U.S. at 535.

Recognizing First Amendment concerns, courts adopted different approaches to balance trademark’s commercial and consumer protection functions with free speech principles:

• One approach is descriptive fair use, which applies where “a term is used descriptively, not as a mark, fairly, and in good faith.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 124 (2004). For example, pumpkin-spice-scented potpourri called “pumpkin pie” might qualify. In such circumstances, even where there is “some possibility of consumer confusion,” the mark nevertheless may be used because trademark law is not intended to “deprive” speakers of the “ordinary utility of descriptive words.” at 121–22. This so-called “right to describe,” id., as Judge Leval noted in Car-Freshner Corp. v. S. C. Johnson & Son, Inc., “protects the right of society at large” to use marks descriptively. 70 F.3d 267, 269 (2d Cir. 1995).
• Another approach is nominative fair use, which applies where (a) the trademark owner’s product or service is “not readily identifiable without use of the trademark,” (b) “only so much of the mark or marks” are “used as is reasonably necessary to identify” the trademark owner’s product or service, and (c) the user does “nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002). Thus, an advertiser might be permitted to compare its products to a competitor’s by name. The principle is animated by “serious First Amendment concerns” that can be caused by interference “with truthful communication between buyers and sellers in the marketplace.” Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1176 (9th Cir. 2010).
• A third approach is the Rogers v. Grimaldi doctrine. It holds that an “artistic work’s use of a trademark that otherwise would” be an infringement is “not actionable unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.” ESS Entm’t 2000 v. Rock Star Videos, 547 F.3d 1095, 1099 (9th Cir. 2008). It is intended to “weigh the public interest in free expression against the public interest in avoiding consumer confusion.” Univ. of Ala. Board of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012).
• Finally, courts have approached trademark parodies in different ways. Such parodies juxtapose “the irreverent representation of the trademark with the idealized image created by the mark’s owner,” L.L. Bean, Inc. v. Drake Pubs., Inc., 811 F.2d 26, 34 (1st Cir. 1987), conveying “two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.” People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001). Some courts have held that “a successful parody only influences the way in which the” likelihood of confusion factors are applied. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 261 (4th Cir. 2007). Others recognize parodies as “works of artistic expression” to which the Rogers v. Grimaldi doctrine applies. Cliffs Notes, Inc. v. Bantam Doubleday Dell Pub. Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989).

These doctrines all point to a foundational agreement that trademark law must accommodate First Amendment interests. But conflicts arise in trying to draw the line. In the 1980s, Rogers was a dispute over Federico Fellini’s film “Ginger and Fred,” which “tells the story of two fictional Italian cabaret performers” who “imitated Rogers and Astaire.” 875 F.2d at 996–97. Although the film could have avoided using Fred Astaire and Ginger Rogers as its subject matter, or selected a different title, the Second Circuit held that the reference to Ms. Rogers in its title was protected by the First Amendment. Id. at 996.

Two decades later, in ESS, the Ninth Circuit extended the doctrine to “the use of a trademark in the body of the work,” in that case a location in a fictional, virtual world called the “Pig Pen.” 547 F.3d at 1099. The plaintiff claimed that it infringed its Play Pen mark, but the Ninth Circuit disagreed, finding the use was protected by the First Amendment. Id. at 1101.

Today, considerable attention is focused on disputes over whether the First Amendment protects merchandise in the same way that it protects films, video games, and other expressive works. See, e.g., VIP Prod. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1172 (9th Cir. 2020) (dog toy protected); Gordon v. Drape Creative, Inc., 909 F.3d 257, 268 (9th Cir. 2018) (greeting card expressive but fact issue as to misleadingness); Univ of Ala., 683 F.3d at 1279 (paintings, prints, and calendars protected).

Although sometimes opposing, trademarks and free expression have a necessary relationship. Given the proliferation of both, there is no question that we will continue to see the evolution of First Amendment principles, hopefully leading to clearer, if not bright-line, rules. With any luck, the tug-of-war between trademark owners and creators of expressive works will find a balance that promotes free speech, while protecting consumers and brand owners.

Joshua Simmons is a partner at Kirkland & Ellis, representing clients in appellate and trial court litigation involving all forms of intellectual property.