US Trademark Law

and

the First Amendment

Presented by

James A. Thomas

The views and perspectives expressed in this presentation are solely my own and do not necessarily

reflect the position or view of Merck & Co., Inc.

Disclaimer

“Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the Government for a redress of grievances”

The First Amendment

The use of trademarks in connection with goods and services is a form of speech. ‐ Friedman v. Rogers

The right to free speech is not limited to individuals, but extends to corporations and businesses. ‐ Citizens United v. FEC

Whose Right to Free Speech?

In the case of political speech, trademark rights will generally give way to the First Amendment. ‐ Dardenne v. MoveOn.org

When Does the First Amendment Overlap with Trademark Law?

In the case of political speech, trademark rights will generally give way to the First Amendment. ‐ Dardenne v. MoveOn.org

…although there are limits to this: First Amendment protection did not apply where a mark is merely being used to associate a political candidate with a popular consumer brand. ‐ Hershey Co. v. Friends of Steve Hershey

Political Speech

In the area of artistic expression, the enforcement of trademark rights can also inhibit free expression protected by the First Amendment. ‐ Silverman v. CBS Inc

When Does the First Amendment Overlap with Trademark Law?

Parody and satire are examples of artistic expression protected by the First Amendment.

Works of artistic expression that are entitled to “substantial” freedom, both as entertainment and as social and/or literary criticism.

Trademark protection not totally lost, however, simply because the work is a work of artistic expression.

Examples of Artistic Uses

Accordingly, one must “weigh the public interest in free expression against the public interest in avoiding consumer confusion” – the Rogers test.

‐ Rogers v. Grimaldi; see also Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc.

Balance of Interests

“Commercial” v. “Noncommercial” test. L.L. Bean, Inc. v. Drake Pubs., Inc.

Approach taken under federal dilution law, which excludes from dilution claims “any noncommercial use of a mark”. 15 USC §1125(c)(3)(C)

But this test has been criticized by other courts in the context of trademark cases. ‐ See, e.g., United We Stand America, Inc. v. United We Stand,

America New York, Inc.

Other Tests

The better test appears to be the balancing test between the public interest in avoiding consumer confusion versus the public interest in free expression. ‐ See, e.g., The Radiance Foundation, Inc. v. NAACP

Normally, this balance will not support application of the Lanham Act unless: The use “has no artistic relevance to the underlying work

whatsoever,” or If it has artistic relevance, the use “explicitly misleads as

to the source or the content of the work.” ‐ Rogers v. Grimaldi; See also, Fortres Grand Corp. v. Warner

Bros. Entertainment Inc. (N.D. Ind.)

The Rogers Test

Use of fictional trademark in movie has been held to be artistic expression protected by the First Amendment. Fortres Grand Corp. v. Warner Bros. Entertainment Inc. Batman movie: The Dark Knight Rises Included handful of references to a fictional software program called

“clean slate” Plaintiff sold a real software program called “Clean Slate” Court found use was artistic expression and applied the Rogers balancing

test to find the use of “clean slate” protected by the First Amendment. Appeals court affirmed based on traditional confusion analysis and did

not reach the District Court’s ruling on First Amendment grounds.

“Fictional” Marks in Artistic Works

Use of night club sign in video game ‐ E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc.

Use of “Barbie” in a song called “Barbie Girl” ‐ Mattel, Inc. v. MCA Records, Inc.

Use of university sports uniforms in paintings, prints, and calendars

‐ University of Alabama Bd. Of Trustees v. New Life Art, Inc.

Other Examples of Uses in Artistic Works

The use of non-competing well-known trade dress in a beer commercial held to be a protected parody.

‐ Eveready Battery Co., Inc. v. Adolph Coors Co.

Actor Leslie Nielson appears in commercial dressed with bunny ears and bunny tail playing a drum with a background voice stating “Coors Light, the official beer of the nineties, is the fastest growing light beer in America. It keeps growing and growing and growing…[voice fades out]”.

Limited analysis of whether the commercial was artistic expression.

Court nevertheless concluded the use of the Eveready elements was protected parody.

The “Fuzzy” Line of “Artistic” works

Use of a mark to identify goods or services of a business is a form of “commercial speech”

Commercial speech is entitled to protection under the First Amendment

The First Amendment, however, will tolerate restrictions on false, deceptive and misleading commercial speech

‐ Friedman v. Rogers

Trademark Law as Regulation of “Commercial” Speech

False, deceptive and misleading commercial speech may be regulated and even banned.

Truthful, non-misleading commercial speech about lawful activity may be regulated/restricted if: the restriction serves a substantial government interest

the restriction directly advances the government interest, and

the restriction is no more extensive than necessary to serve that interest. ‐ Central Hudson Gas & Electric Corp. v Public Service Comm’n

of NY

Regulation of Commercial Speech

FDA regulation of use of trademarks on pharmaceutical products

Courts will scrutinize governmental regulation of truthful commercial speech involving lawful commercial activity

Must be supported by a substantial interest to be achieved by the restrictions on commercial speech

First Amendment and Pharmaceutical Trademarks

FDA regulation of use of trademarks on pharmaceutical products

The limitation must be in proportion to that interest and carefully designed to achieve the governmental goal without excessive restrictions

‐ See, e.g., Central Hudson Gas & Elec. Corp. v. Public Serv. Comm’n of N.Y.; Greater New Orleans Broadcasting Assn., Inc. v U.S.

First Amendment and Pharmaceutical Trademarks

Full discussion of comparative advertising is beyond the scope of this presentation

Comparative advertising is largely a balance between consumer protection and free competition, but First Amendment concerns can arise in this context as well.

FTC Policy Regarding Comparative Advertising (emphasis added): “Comparative advertising, when truthful and non-deceptive, is a

source of important information to consumers and assists them in making rational purchase decisions. Comparative advertising encourages product improvement and innovation, and can lead to lower prices in the marketplace. For these reasons, the Commission will continue to scrutinize carefully restraints upon its use.”

First Amendment and Comparative Advertising

Is a refusal to register a trademark subject to First Amendment analysis?

Currently no, because

refusal does not prohibit the use of the mark

refusal does not prohibit conduct or suppress expression

‐ In re McGinley

What about trademark applications?

For example, the USPTO can cancel registrations involving the name of a football team on the grounds that the name is disparaging without application of any First Amendment interests. Amanda Blackhorse et al. v. Pro-Football, Inc.

But is there a counter-argument?

Pro-Football, Inc. thinks so. On appeal it has raised several constitutional challenges, including violation of its First Amendment rights.

What about trademark applications?

Citizens United v. FEC, 130 S.Ct. 876 (2010)

Dardenne v. MoveOn.org, 110 USPQ2d 2048 (M.D. La. 2014)

Hershey Co. v. Friends of Steve Hershey, --- F.Supp.2d ---, 2014 WL 3571691 (D.Md. 2014).

Silverman v. CBS Inc., 870 F.2d 40 (2d Cir.), cert. denied, 492 U.S. 907 (1989)

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 866 F.2d 490 (D.C. Cir. 1989)

L.L. Bean, Inc. v. Drake Pubs., Inc., 811 F.2d 26 (1st Cir.), cert. denied, 483 U.S. 1013 (1987)

United We Stand America, Inc. v. United We Stand, America New York, Inc., 128 F.3d 86 (2nd Cir. 1997) , cert. denied, 523 U.S. 1076 (1998)

The Radiance Foundation, Inc. v. NAACP, --- F. Supp. ---, 2014 WL 2601747 (E.D.Va. 2014)

Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir 1989)

Fortres Grand Corp. v. Warner Bros. Entertainment Inc., 947 F.Supp.2d 922 (N.D.Ind. 2013) aff’d 763 F.3d 696 (7th Cir. 2014)

Friedman v. Rogers, 440 U.S. 1 (1979)

Central Hudson Gas & Electric Corp. v Public Service Comm’n of NY, 447 U.S. 557 (1980)

In re McGinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981)

Amanda Blackhorse et al. v. Pro-Football, Inc. USPTO Cancellation No. 92046185, June 18, 2014

Greater New Orleans Broadcasting Assn., Inc. v United States, 527 U.S. 173 (1999)

E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008)

Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003)

University of Alabama Bd. Of Trustees v. New Life Art, Inc. 683 F.3d 1266 (11th Cir. 2012)

Eveready Battery Co., Inc. v. Adolph Coors Co., 765 F.Supp. 440 (N.D.Ill.1991)

Cases