The Supreme Court's decison by Justice Souter was issued today in the fair use dispute KP Permanent Mark-Up, Inc. v. Lasting Impression I, Inc.
Justice Souter writes:
The question here is whether a party raising the statutory affirmative defense of fair use to a claim of trademark infringement, 15 U. S. C. §1115(b)(4), has a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected. We hold it does not.
The Court nevertheless recognizes that confusion may still be relevant in accessing the fairness of the defendant's descriptive use:
While we thus recognize that mere risk of confusion will not rule out fair use, we think it would be improvident to go further in this case, for deciding anything more would take us beyond the Ninth Circuit’s consideration of the subject. It suffices to realize that our holding that fair use can occur along with some degree of confusion does not foreclose the relevance of the extent of any likely consumer confusion in assessing whether a defendant’s use is objectively fair.
COMMENT:
This final concession is important. The case should not be read to mean that the fair use defense is a blank check allowing all possible use of a descriptive mark by the defendant. Context apparently remains important. What is "fair use" in text might not be "fair use" in a prominent, attention-getting banner, and repeated use, beyond that necessary merely to describe, also might not be "fair." It will be, or at least should be, a question of fact based on the descriptive nature of the mark and the context in which it is used by the defendant.
The decision is attached.
By the way,
In reaching its decision, the Supreme Court cited two cases argued (and won) by our partner Bob Newbury at Pattishall, McAuliffe:
Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267 (2nd Cir. 1995), and
Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920 (10th Cir. 1986).
Attachments:
