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Few issues in trademark and advertising law can compete in importance with this: whether a competitor can use another’s trademark in advertising its products or services. With the battle for consumer attention growing increasingly aggressive as the number of products and services proliferate, and the means for advertising and promoting them expanding at an even more alarming rate, the importance of brands and their recognition by consumers � and the surrounding legal issues � have never been more significant. At the center of the controversy is what is referred to as the trademark doctrine of “fair use.” This phrase, borrowed from the copyright law, refers to the defense that the use of certain words or phrases in a nonexploitative manner is protected against a charge of trademark infringement. The rationale for the defense is that certain words and phrases are, in their primary sense, “descriptive” of some aspect of the product or service at issue, and therefore must remain available for competitive use, the thought being that such words may be necessary for competitors to accurately describe their own products and services. Thus, if one competitor is able to build trademark rights in a descriptive term (and this can be done, as discussed below), another, using the term in a nontrademark, merely descriptive manner, may have a complete defense to a charge of infringement. Like all legal doctrines, trademark “fair use” has experienced its judicial twists and turns. Since trademark law finds its roots in unfair competition law, the collective of judicial opinions as to what is or is not equitable in a specific case has led to a fairly tortured, not easily predictable, but always interesting body of law. The ‘Boston Legal’ case A very recent and fascinating example of “fair use” is the decision of U.S. District Judge George B. Daniels in Arnold v. ABC Inc. and The Walt Disney Co., No. 06 Civ. 1747, 2007 WL 210330 (S.D.N.Y., Jan. 29, 2007). Plaintiff Carolyn Janet Arnold owns a federally registered trademark of the phrase “What’s Your Problem?” for a “reality based television show providing real solutions to real problems.” This mark was used by Arnold as the title for a television series described as a “comical show in which a host interviews real people and solves their problems,” which airs on a New York public access channel. The problem for Arnold began when she discovered that ABC had launched a promotional campaign for the Boston Legal show featuring a fake call-in ad for the show’s fictional law firm. The ad is composed of the title phrase “What’s Your Problem?,” under which appears the phone number 1-877-Sue-2-Win. This ad appeared on buses, phone booths and billboards in New York and Los Angeles and on the mock Web site for the fictional firm. When called, one hears a vocal exchange between the firm’s receptionist and the lecherous name partner of the “firm,” Denny Craig. Arnold claimed that ABC’s use of “What’s Your Problem?” was an infringement of her registered trademark under federal law. She also asserted claims under federal (15 U.S.C. 1125(a)) and state unfair competition law. The defendants (collectively, “ABC”) raised the defense of fair use and moved to dismiss the complaint. The court’s analysis In holding for ABC, the court noted that Arnold’s burden on the infringement claim was to prove that ABC’s “use of her mark is likely to cause consumer confusion as to the mark’s source.” Id. at *2. Rather than continue with the usual “likelihood of confusion” analysis, however, the court went right to the fair use defense. The court cited the federal statutory version of the “fair use” defense, 15 U.S.C. 1115(b)(4), namely that fair use exists “if the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party.” But then the court ran squarely into a challenging problem: The phrase “What’s Your Problem?” is not descriptive of anything having to do with the Boston Legal show. Thus, the statutory definition of “fair use” was unavailable. Backed into this analytic corner, the court stated, without citing any precedent, that while the phrase “ostensibly does not describe a characteristic of the Defendants’ show,” “in the context in which it is used in the advertisements and on the website . . . the phrase is generically descriptive to the potential viewing public that Defendants’ product is a show about fictional lawyers in a fictional law firm offering legal services.” Obviously troubled by this analytic leap, it added that “if any confusion with plaintiff’s show might result ‘that is the risk plaintiff accepted when [she] decided to identify [her show] with a mark that uses a well-known descriptive phrase.’ ” Id. (quoting KP Permanent Make-Up Inc. v. Lasting Impression I Inc., 543 U.S. 111, 122 (2004)). Turning back to the remaining statutory elements of fair use, the court determined that ABC was not using the “What’s Your Problem?” line as a trademark to identify the source of the show, but instead was using the “famous and recognizable” network name, ABC, for that purpose, and that ABC had not acted in bad faith. This decision is a prime example of the difficulties that courts face in attempting to harmonize trademark law principles and precedent with their sense of what is equitably fair and unfair. On the one hand, the court clearly believed that consumers were not likely to believe that network hit Boston Legal on ABC and “What’s Your Problem?” on public access television came from the same source. On the other hand, none of the law with which the judge was presented provided clear and unambiguous guidance. The result, at least on its face, appears to be “good enough” to serve as a rationale for the decision dismissing the suit, but on further inspection may not quite hold up. Trademark fundamentals Trademark law in its essence is fairly straightforward and is based on a simple principle: One who has created a name or symbol on which consumers can faithfully rely in making purchasing decisions should be rewarded for one’s efforts, and those who would poach on this trust by using a similar name or symbol that would confuse consumers into purchasing the poacher’s products should be punished. See Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942). Prior to the enactment of the current federal Trademark Act (known as the Lanham Act), only so-called “technical” trademarks could be registered and enforced; “descriptive” terms were not considered “technical” trademarks. The draftsmen of the Lanham Act noted that under the common law, terms that in their primary sense described some aspect of the product or services � an ingredient, quality or geographic origin, for example � nonetheless could acquire a second meaning, namely, that of a distinctive name or symbol that in fact identified and distinguished one’s products or services from that of another and thus was performing a trademark function. Such descriptive terms that achieve this “secondary meaning,” or in the parlance of the Lanham Act, have “acquired distinctiveness,” can be registered and enforced. Nonetheless, the draftsmen and the judiciary have ensured in the name of free and fair competition that such “descriptive” terms can be used by those that need to use them in their primary sense, to describe their products. Purely descriptive use The balance struck between permitting this “fair use” of descriptive terms and protecting those that achieve trademark status is the requirement that, to be fairly used, descriptive terms must be used in a nontrademark, purely descriptive manner, in good faith. There are, of course, always exceptions, such as in certain so-called “expressive use” cases in which the First Amendment is said to take precedence over some trademark confusion. A leading example is Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), in which the use of the title Ginger and Fred for a film about a fictional Italian dance team given this nickname by their public in tribute to Ginger Rogers and Fred Astaire, was held to be a fair use even if some members of the public believed that Ginger Rogers, the plaintiff, had endorsed the film. One doctrine that is clear, however, is that while descriptive terms may achieve trademark status, so-called “generic” terms cannot. A generic term is the name of a thing � “apple” for apples, for example. A generic term is in the public domain and if used in connection with the thing it names, can never be registered or protected as a trademark. A term that is generic for one thing, however, may be a perfectly good trademark for another. “Apple” is generic when used to identify apples, but is a very strong trademark when used to identify computers or a record label. Thus, a generic term is not and cannot be, by definition, a descriptive term for purposes of trademark analysis. There certainly are analytic contradictions in the cases as to whether a particular term is or is not descriptive, one court, for example, holding “Holiday Inn” to be descriptive and another not. The same is true as to generic terms, one court holding “Light Beer” to be generic and another holding it to be a descriptive term that had acquired distinctiveness. Despite these inconsistent holdings, the doctrine that generic and descriptive terms are very different is not subject to debate. The Boston Legal court’s ultimate conclusion that the phrase “What’s Your Problem?” is “generically descriptive” does not follow this distinction. In fact, as the court took pains to note, the phrase is not descriptive of anything having to do with the Boston Legal series. It also, of course, is not generic of a television series; the generic for a television series is a “television series,” not a “What’s Your Problem?” How, then, could the court have been led down this path? It is a fairly common problem sourced in the confusion that has grown up around trademark jargon and doctrine. The court identified correctly that the manner in which ABC was using “What’s Your Problem?” was not a clear trademark use. It also apparently believed that its use in this manner was not likely to result in consumer confusion; this has to be surmised because the court did not undertake the standard likelihood-of-confusion analysis the courts have adopted for this purpose, starting with the 2d Circuit in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961). The analytic struggle here was that the court relied for its fair use analysis on a section of the Lanham Act that does not embody the full breadth of what has become the trademark fair use doctrine. Thus, in trying to fit the square facts before it into the circular analytic framework, the court found itself in a conundrum. The language of � 1115(b)(4) is useful in that it sets out specific elements for analyzing a fair use defense, but it is not the only correct statement of that defense. Indeed, another kind of fair use is known as “nominative fair use” in which one fairly uses the plaintiff’s mark in identifying the plaintiff’s products, usually in a comparative advertisement or in some other informational manner protected by the First Amendment. See, e.g., Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002). That kind of fair use, of course, does not conform with � 1115(b)(4). The same result a different way One way to have avoided this analytic quagmire would have been to treat this case not as fair use, but under the traditional infringement standard. Using this traditional approach, the court could have come out with the same result without having to employ a strained rationale that included the “generically descriptive” finding. Under a straightforward infringement analysis, the court could have found that ABC’s use of the phrase “What’s Your Problem?” is not a competing trademark use, but is merely a nondistinctive advertising slogan uniquely identified with a specific fictional law firm in a specific network fictional television series; the nature of the parties’ television programs, one reality and the other fictional, were not similar; the programs are accessed in different channels of trade, one public access and the other a commercial network; and the plaintiff’s registered mark in the context of her show is a descriptive term which was not sufficiently “strong” to prevent ABC’s fairly humorous, nontrademark use of this phrase. At the end of the day, one can argue that Boston Legal is not a fair use case, but is a traditional case of a noninfringing use. Had the case been approached from this angle, we would have one less analytically troubled fair use decision. Steven M. Weinberg is a partner at Los Angeles’ Greenberg Glusker Fields Claman & Machtinger, where he practices transactional and litigation intellectual property, entertainment, advertising and technology law. He is a former adjunct professor of trademark law at Brooklyn Law School and editor in chief of The Trademark Reporter.

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