If we pause a moment and reflect on the pervasiveness of trademarks and advertising in the world economy, we can begin to understand how – despite the lessons of history — trademark owners occasionally forget that simply trademarking a word or phrase does not remove it from the common lexicon. People can still use the word or phrase to describe the product without having to resort to tongue-twisting descriptive workarounds (e.g., they can say “he was driving a Ford Mustang” instead of “he was driving a car named after a horse manufactured by one of what used to be referred to as the Big 3”). This is as it should be, of course, since it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, reference or any other reason without using the trademark. How would the news – or even ordinary conversation – function if people were threatened by infringement lawsuits every time they referred to a person, company or product by using its trademark? Trademark law is not intended to turn life into a game of Charades.
Despite the fact that no one wants to live in a world where our language is so circumscribed that we are forbidden from actually calling things by their names, trademark owners keep insisting that they get paid every time their mark is used, even in situations where use of the mark is necessary to describe an event or product. Some of you may recall a number of years ago when the Boston Athletic Association (BAA) tried to prevent Channel 5 from broadcasting the Boston Marathon – which is of course run on public roads – on the grounds that speaking the words “Boston Marathon” aloud on national television would imply that the station had been licensed by the BAA to broadcast the marathon, and create confusion in the mind of the public over whether Channel 5 was in some way associated with the race. In summarily throwing out the case, the 1st Circuit explained the basic tenets of the “fair use” defense – if you are describing something (e.g., a race) you can call it by name even if the name happens to be trademarked.
[T]he record provides us with an excellent reason for thinking that Channel 5’s use of the words “Boston Marathon” would not confuse the typical Channel 5 viewer. That reason consists of the fact that those words do more than call attention to Channel 5’s program; they also describe the event that Channel 5 will broadcast. Common sense suggests (consistent with the record here) that a viewer who sees those words flash upon the screen will believe simply that Channel 5 will show, or is showing, or has shown, the marathon, not that Channel 5 has some special approval from the BAA to do so. In technical trademark jargon, the use of words for descriptive purposes is called a “fair use,” and the law usually permits it even if the words themselves also constitute a trademark. See 15 U.S.C. § 1115 (b)(4) (statutory fair use defense)
I am a commercial litigator and intellectual property lawyer in Orange County. Although my practice encompasses a wide variety of business disputes, I have a particular fondness for, and am prone to wax philosophical on, the subjects of copyright and trademark infringement in music, literature, art, and film.